Lucasfilm Ltd. and Lucasfilm Entertainment Company Ltd.v.LoveforPeace Productions

Trademark Trial and Appeal Board

Aug 23, 2013

No. 91198236 (T.T.A.B. Aug. 23, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 23, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Lucasfilm Ltd.
and
Lucasfilm Entertainment Company Ltd.
v.
LoveforPeace Productions
_____
Opposition No. 91198236
_____

Rosemary S. Tarlton of Morrison & Foerster LLP for Lucasfilm Ltd. and Lucasfilm
Entertainment Company Ltd.

LoveforPeace Productions, pro se through Danielle Edmonson.
_____

Before Bergsman, Kuczma, and Masiello, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:

LoveforPeace Productions (“applicant”) filed an application to register the
mark JEDI NEMESIS in standard character form for services identified as follows:
Entertainment in the nature of live performances by a
performer or group; Entertainment services in the nature
of live musical performances; Entertainment, namely, live
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performances by a musical band, in International Class
41.1
Lucasfilm Ltd. and Lucasfilm Entertainment Company Ltd.2 (collectively,
“opposers”) have opposed registration of applicant’s mark, alleging that they are
owners of various previously used and registered marks that consist of or
incorporate the designation JEDI (collectively, the “JEDI Marks”). They oppose
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
applicant’s mark, when applied to applicant’s services, so resembles each of the
JEDI Marks as to be likely to cause confusion, mistake or deception; and under
Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c), on the ground that use of
applicant’s mark is likely to dilute the distinctive quality of opposers’ famous JEDI
Marks.
Opposers alleged that they own U.S. registrations of the following JEDI
Marks for use in connection with the goods and services3 set forth below:
Registrations owned by Lucasfilm Ltd.:
3368034 JEDI TRAINING
ACADEMY “Entertainment services, namely, live theatrical
performances and interactive live performances”
(Class 41); “Clothing, namely, T-shirts and caps”
(Class 25); and goods in Classes 18 and 21.4

1 Application Serial No. 77838861, filed on October 1, 2009 under Trademark Act § 1(a), 15
U.S.C. § 1051(a), with a claim of first use as of November 15, 1984 and first use in
commerce as of November 15, 2008.
2 The notice of opposition alleges that Lucasfilm Entertainment Company Ltd. is a wholly
owned subsidiary of Lucasfilm Ltd.
3 For the sake of brevity, the goods and services identified in the registrations are here
paraphrased, except where set forth in quotes.
4 Issued January 15, 2008.
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2823661 JEDI “Entertainment services, namely, providing
audiovisual entertainment in the field of science
fiction via a global computer network or other
electronic computer networks”; providing news and
information (Class 41).5

3794988 JEDI Books, printed matter, paper goods (Class 16);
clothing (Class 25).6

Registrations owned by Lucasfilm Entertainment Company Ltd.:
2858244 JEDI Electronic games; recorded music (Class 9).7

2595365 JEDI Action figures; role-playing toys (Class 28).8

2478579 JEDI POWER
BATTLES Electronic games (Class 9).9

2235263 JEDI KNIGHT “Computer game software” (Class 9).10

1134730 JEDI KNIGHT “Toy action figures” (Class 28).11

Applicant denied the salient allegations of the notice of opposition. Opposers
have filed a brief on the case. Applicant has not filed a brief.
I. The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122, 37 C.F.R. § 2.122, the application file for the opposed mark. By a stipulation
filed June 8, 2012, the parties agreed that testimony could be introduced by sworn

5 Issued March 16, 2004; affidavits under §§ 8 and 15 filed.
6 Issued May 25, 2010.
7 Issued June 29, 2004; affidavits under §§ 8 and 15 filed.
8 Issued July 16, 2002; affidavits under §§ 8 and 15 filed.
9 Issued August 14, 2001; renewed.
10 Issued March 23, 1999; renewed.
11 Issued May 6, 1980; renewed.
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declaration in lieu of live deposition, and that exhibits that would ordinarily be
introduced as exhibits to a live deposition could be introduced as attachments to
testimonial declarations.12 Applicant made an untimely submission of a small
amount of evidence. On opposers’ motion, it was stricken as untimely.13 (The
evidence proffered by applicant consisted of a single page marked “Exhibit 13,”
which was largely duplicative of applicant’s response to opposers’ Interrogatory
No. 3. That interrogatory response has been made of record by opposers.)
The record also includes the following testimony and evidence of opposers:
1. Declaration of Paul Southern, Vice President, Licensing & Consumer
Products Marketing of Lucas Licensing, a division of Lucasfilm
Entertainment Company Ltd., with attached exhibits (“Southern dec.”).

2. Notices of reliance upon the following documents:

(a) Title and status copies of opposers’ pleaded U.S. registrations.

(b) Electronically generated copies of printed publications discussing
opposers’ films and electronic games.

(c) Applicant’s responses to opposers’ interrogatories and requests for
production of documents and things.

(d) Dictionary definitions of the word “nemesis.”

(e) Third-party website featuring an interview with the artist known as
Jedi Nemesis.

(f) Copies of numerous third-party U.S. trademark and service mark
registrations.

12 The stipulation was approved by Board order of June 15, 2012.
13 Board order of February 4, 2013.
Opposition No. 91198236

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II. Standing
Opposers have properly made of record numerous pleaded registrations of
their JEDI Marks and have demonstrated their use of various marks that consist of
or include the designation JEDI. Opposers have thereby shown that they are not
mere intermeddlers and have established their standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed.
Cir. 1999); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
III. Priority
In view of opposers’ ownership of valid and subsisting registrations of their
JEDI Marks, priority is not in issue with respect to the goods and services identified
in those registrations. King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
IV. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion, as set forth in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods and services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, the
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parties have also submitted arguments and evidence relating to the fame of
opposers’ marks, the parties’ trade channels, classes of customers, the variety of
goods on which opposers’ marks are used, the circumstances of applicant’s adoption
of its involved mark, conditions of sale, and use of similar marks in the
marketplace.
A. The fame of opposers’ marks.
In this proceeding, opposers maintain that their JEDI Marks are famous.
Fame, if it exists, plays a dominant role in the likelihood of confusion analysis
because famous marks enjoy a broad scope of protection. A famous mark has
extensive public recognition and renown. Bose Corp. v. QSC Audio Products Inc.,
293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton,
214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v.
Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Because of the extreme deference that we accord a famous mark in terms of the
wide latitude of legal protection it receives, and the dominant role fame plays in the
likelihood of confusion analysis, it is the duty of the party asserting that its mark is
famous to clearly prove it. Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82
USPQ2d 1901, 1904 (TTAB 2007).
Opposer Lucasfilm Ltd. is the exclusive owner of all rights in the series of six
motion pictures issued under the title Star Wars. The full title of one of the Star
Wars films is Star Wars: Episode VI – Return of the Jedi. Southern dec. ¶ 4. In the
Star Wars films, the designation “Jedi” is used to denote a particular type of
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warrior. In the “battle between good and evil” that is “one of the predominant
themes” of the Star Wars films, the Jedi warriors are the heroes, being aligned with
the concept of “good.” Id. ¶ 5.
Opposers’ demonstration of fame rests primarily on evidence of the success of
the Star Wars films. Opposers’ witness, Mr. Southern, stated that “The Star Wars
Motion Pictures are among the most successful and popular motion pictures and
entertainment properties of all time….” Id. ¶ 4. He points to the published “All
Time Domestic Box Office Results” of Box Office Mojo, which he describes as a
“reliable source,” to demonstrate that the Star Wars films are high on the list of
“highest-domestic-grossing films of all time,” each with gross domestic earnings
expressed in nine figures. Id. ¶¶ 8-9 and Exhibit 8. However, these figures are
inadmissible hearsay, despite Mr. Southern’s endorsement of them. More
impressive is his statement from his own knowledge of the dollar value of “sales of
licensed products associated with the Star Wars Motion Pictures” in the five years
preceding trial and in 2011. Id. ¶ 13. These figures, made of record confidentially,
are extraordinary. However, they relate not to goods and services offered under the
JEDI Marks, but to all Stars Wars sales. It is impossible for the Board to determine
what portion of these dollar figures is attributable to JEDI branded goods and
services. Accordingly, these figures relate only obliquely to the questions before us.
The record may indicate that the Star Wars series of films are famous films; and
even that STAR WARS is famous as a trademark for goods and services. There is
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no doubt that The Return of the Jedi is an extremely well known film;14 and it is
highly likely that the “Jedi” characters in the Star Wars films are famous fictional
figures. These points are all distinct from the question of whether JEDI and the
other JEDI Marks are famous as trademarks.
While fame for dilution is an “either/or proposition” -- it either exists or does
not -- fame for likelihood of confusion purposes is a matter of degree along a
continuum. Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1720 (Fed. Cir. 2012) citing Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1374-75 (Fed. Cir. 2005). The
evidence relating to the success of the Star Wars franchise is insufficient to
persuade us that the JEDI Marks enjoy the highest level of renown as trademarks.
However, other evidence of record demonstrates that the designation JEDI, as a
mark and as a component of marks, is indeed commercially very strong. In
particular, we note evidence showing that opposers have very vigorously marketed
a wide range of goods and services under a plethora of marks that include the
designation JEDI. See Southern dec., Exhibits 19-25 (live performances); Exhibits
26-51 and 53 (action figures); Exhibits 59-60 (collectibles); Exhibits 61-65 and 71
(games and online games); Exhibits 66-81 (books); Exhibits 82-88 (apparel and
accessories); and Exhibits 91 and 93 (internship programs). For example, there is
evidence that opposers have used the following marks for series of books:
JEDI APPRENTICE LAST OF THE JEDI
JEDI QUEST FATE OF THE JEDI

14 See Southern dec. ¶ 10 and Exhibits 10, 11 and 17.
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JEDI KNIGHT NEW JEDI ORDER
YOUNG JEDI KNIGHTS DAWN OF THE JEDI
JUNIOR JEDI KNIGHTS JEDI vs SITH
TALES OF THE JEDI15

Opposers’ action figures and other toys have been marketed under the following
marks:
JEDI
JEDI SHOWDOWN
JEDI FORCE
JEDI KNIGHT
POWER OF THE JEDI
RETURN OF THE JEDI
REVENGE OF THE JEDI16

Opposers have marketed collectible figurines under the marks JEDI MASTER;
JEDI MENTOR; and ORDER OF THE JEDI.17 They have marketed games under
the marks JEDI KNIGHT; JEDI OUTCAST; JEDI MATH; JEDI ARENA; and
JEDI’S HONOR.18 Opposers have offered a filmmaking internship under the mark
JEDI ACADEMY.19
The existence in the marketplace of such a large number of marks, all
controlled by opposers and associated with them through the public’s familiarity
with the Star Wars films, increases the market strength of the designation JEDI
and marks that include JEDI as source indicators for opposers’ goods and services.
Accordingly, we find that the JEDI Marks enjoy a high level of public recognition,

15 Southern dec., Exhibits 71 and 71A-71C. The evidence shows that these designations are
used properly as series trademarks and not merely as titles of individual works.
16 Id., Exhibits 26 through 55.
17 Id., Exhibits 59-60.
18 Id., Exhibits 61-64 and 71.
19 Id., Exhibits 91, 93.
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such that the du Pont factor of fame weighs in favor of a finding of likelihood of
confusion.
B. The parties’ goods and services.
We turn next to consider the similarity or dissimilarity of the goods and
services of the parties. Applicant seeks registration of its mark for the following
services:
Entertainment in the nature of live performances by a
performer or group; Entertainment services in the nature
of live musical performances; Entertainment, namely, live
performances by a musical band.
The evidence suggests that JEDI NEMESIS is the stage name of a hip-hop
musical artist.20 However, applicant’s recitation of services is not limited to musical
performances or hip-hop performances; nor does it indicate that the mark would be
used to designate a particular individual performer. As the recitation of services
appearing in the application defines the scope of the registration that applicant
seeks, we must consider the full scope of the identified services, which encompass
all “live performances by a performer or group,” rather than any more limited range
of services indicated by the evidence. Octocom Syst. Inc. v. Houston Computers
Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Similarly, in
considering the scope of the cited registrations, we look to the registrations
themselves, and not to extrinsic evidence about opposers’ actual goods and services.
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-

20 “Information: Miami Music Festival,” submitted with applicant’s response of June 29,
2010. See also “Jedi Nemesis Interview,” submitted under a notice of reliance of opposers.
Opposition No. 91198236

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Mart, Inc., 119 USPQ 139 (CCPA 1958). Among opposers’ pleaded registrations, we
note that opposer Lucasfilm Ltd. owns a registration of JEDI TRAINING
ACADEMY for:
Entertainment services, namely, live theatrical
performances and interactive live performances;21
and a registration of JEDI for:
Entertainment services, namely, providing audiovisual
entertainment in the field of science fiction via a global
computer network or other electronic computer
networks.22
We will consider these two registrations first because they cover services that, when
considered vis-à-vis applicant’s mark and identified services, are most likely to
support a finding of likelihood of confusion. See, e.g., In re Max Capital Group Ltd.,
93 USPQ2d 1243, 1245 (TTAB 2010).
The service of “live performances by a performer or group,” identified in the
application, is sufficiently broad to include within its scope opposers’ “live theatrical
performances” and “interactive live performances.” Accordingly, applicant’s services
are legally identical to opposers’ services under the mark JEDI TRAINING
ACADEMY. Even though the evidence indicates that opposers’ services under this
mark are in the nature of a children’s entertainment,23 as noted above we must give
regard to the full scope of services covered by the language of the registration. See
Trademark Act § 7(c), which confers on the owner of a registration nationwide

21 Reg. No. 3368034.
22 Reg. No. 2823661.
23 Southern dec., Exhibits 19 and 20.
Opposition No. 91198236

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priority of use of its mark “on or in connection with the goods or services specified in
the certificate” (15 U.S.C. § 1057(c)) and Section 7(b), whereby the registration is
prima facie evidence of the registrant’s “exclusive right to use the registered mark
in commerce on or in connection with the goods or services specified in the
certificate” (15 U.S.C. § 1057(b)).
Opposers’ online “audiovisual entertainment in the field of science fiction” is
clearly not identical to applicant’s “live performances by a performer or group.”
However, we do see some degree of commercial relationship, inasmuch as
applicant’s live entertainment is defined broadly enough to encompass the genre of
science fiction; accordingly, opposers’ services could include an online transmission
of the types of performance provided live by applicant. In any event, we see only a
moderate degree of relatedness between these services of the parties.
As applicant’s services are in part identical to certain services of opposers,
the du Pont factor relating to the similarity or dissimilarity of the goods and
services favors a finding of likelihood of confusion; and we need not compare
applicant’s services to the goods identified in opposers’ other pleaded registrations,
which appear to be substantially less similar to applicant’s services than are
opposers’ services.
C. Channels of Trade; Customers.
Because the parties’ live entertainment services at issue are in part identical,
we must presume that the channels of trade and classes of customers are the same.
See American Lebanese Syrian Associated Charities Inc. v. Child Health Research
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Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994). See also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012). Clearly the universe of customers for the
parties’ services is very broad and includes all members of the general public having
an interest in entertainment by live performers. There is no evidence to suggest
any special degree of sophistication among purchasers of the parties’ services.
Accordingly, the du Pont factors relating to channels of trade and classes of
customers favor a finding of likelihood of confusion.
D. The Similarity or Dissimilarity of the Marks.
We next consider the similarity or dissimilarity of the parties’ marks in terms
of appearance, sound, meaning, and overall commercial impression. We will first
focus on opposers’ mark JEDI TRAINING ACADEMY, as that mark is registered
for services identical to those of applicant. When identical services are at issue, we
bear in mind that the degree of similarity of the marks that is necessary to find a
likelihood of confusion is not as great as where the services are disparate. Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992). We must base our determination on a consideration of the
marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985). See also Franklin Mint Corp. V. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 23, 234 (CCPA 1981). However, an analysis of individual aspects
of the marks is a permissible part of our determination. Price Candy Company v.
Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955).
Opposition No. 91198236

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JEDI TRAINING ACADEMY and JEDI NEMESIS are clearly not identical.
It is equally obvious that each of the marks has, as its initial element, the
designation JEDI. Opposers maintain that JEDI is a coined term invented by
them.24 Coined terms that are not composed of other known words have no literal
meaning, at least at the time they are invented. However, opposers have
demonstrated a widespread public association between the designation JEDI and
certain characters in the Star Wars films who are a class of warriors. See discussion
above at Part IV(A). This is not to say that JEDI literally means a class of warriors.
Rather, opposers have, through their creative efforts, successfully formed in the
minds of the public an association between the invented term JEDI and certain
characters in the Star Wars films. Third-party discussions of opposers’ services
under the JEDI TRAINING ACADEMY mark appear to acknowledge that JEDI
signifies a class of warriors:
Do you have what it takes to become a Jedi Knight? The
Jedi masters at the Jedi Training Academy will help
you find out!
…
The Jedi Training Academy is a 30-minute session that
takes place at the Tomorrowland Terrace. The Jedi
Master and his assistants select 25-30 kids from the
audience to participate in a light saber training
exercise….25

Its a chance for kids to learn to channel ‘The Force’. You
have a Jedi Master who will train the young recruits
(padewans) who then have a chance to fight either Darth
Vader or Darth Maul.26

24 Opposers’ brief at 1, 25.
25 Excerpt from , Southern dec., Exhibit 22 (emphasis in original).
26 “Vacationing Disney World, Orlando,” Southern dec., Exhibit 21.
Opposition No. 91198236

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If you’ve ever been to the Star Wars attractions at
Disneyland or Walt Disney World, you know that they
pick some kids to join the “Jedi Academy” and participate
in some theatrics onstage….
…
They bring up a girl trainee…. Of course, the girl, being a
good Jedi trainee, will refuse Vader’s offer. Right?
Well….27

We note with interest applicant’s suggestion that the term JEDI was not
original to opposers, but was derived from the Japanese term jidai-geki.28
Applicant appears to suggest that, on the spectrum of distinctiveness enunciated in
Abercrombie & Fitch Company v. Hunting World, Incorporated, 537 F.2d 4, 189
USPQ 759, 764 (2d Cir. 1976), JEDI is not a “fanciful” term, but rather a
“suggestive” one and, accordingly, of reduced distinctiveness. However, the
evidence submitted by applicant is unclear as to the actual meaning of jidai-geki,
which may signify a tradition of film-making or possibly a genre of film. Nothing in
the evidence indicates that this Japanese term denotes either a class of warriors or
anything else that relates to opposers’ goods and services or the way in which they
use JEDI as a mark. Neither does the evidence show that a substantial segment of
the U.S. population is familiar with the term jidai-geki. Moreover, jidai-geki is, on
its face, substantially different from the term JEDI. Accordingly, this evidence of
applicant does not persuade us to view JEDI as a something other than a fanciful
term having strong distinctive potential as a trademark.

27 “Video: Little Girl Jedi Trainee at Disneyland Chooses the Dark Side,” Southern dec.,
Exhibit 24.
28 D. Trull, “The Jidai-Geki Knights,” submitted with applicant’s response of June 29, 2010.
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Considering opposers’ mark JEDI TRAINING ACADEMY in its entirety in
light of the above discussion of the impression created among the public by JEDI,
we find that most customers would interpret the mark as a reference to a school for
instruction in the skills of a particular fictional type of warrior.
We must also consider applicant’s mark JEDI NEMESIS in its entirety. The
commercial impression created by the term JEDI in opposers’ mark appears to
carry over to public perceptions of applicant’s mark. A journalist who interviewed
applicant’s principal performer (whose stage name is Jedi Nemesis) appears to have
recognized the association between JEDI and the Star Wars characters:
It’s not that Jedi’s a “Star Wars” geek (he is)…. The Jedi
stand for positive beliefs….29
We note applicant’s contention that the designation JEDI in its mark derives
from the Djedi River and the ancient Egyptian magician Djedi “who was said to
have been consulted by the Pharaoh Kufu for the building of the Pyramids….”30
The term “Djedi” is, of course, different from the designation JEDI; moreover, there
is no evidence to indicate that any appreciable number of relevant customers would
know of the Djedi River or the magician Djedi. Comparing the widespread
popularity of the Jedi characters in the Stars Wars films against the relatively
arcane provenance of the name Djedi, we think it more likely that JEDI, as used in
applicant’s mark, would be understood to refer to the type of fictional warrior

29 “Jedi Nemesis Interview,” at , submitted under a notice
of reliance of opposers.
30 Applicant’s response to Interrogatory No. 3, made of record under a notice of reliance of
opposers.
Opposition No. 91198236

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associated with the Star Wars films, as illustrated by the observation quoted above
from “Jedi Nemesis Interview.”
The word NEMESIS has been shown to mean “a formidable and usually
victorious rival or opponent”;31 and “a persistent tormentor; a long-standing rival,
an arch-enemy.”32 Applicant’s mark as a whole therefore appears to refer to the
arch-enemy or formidable rival of a particular type of warrior. This overall
impression is supported by the perceptions expressed in “Jedi Nemesis Interview”:
The Jedi stand for positive beliefs while a nemesis is
against said beliefs. It’s a classic relationship between
positive and negative entities.33
Accordingly, the overall impressions created by the two marks at issue, a school for
warriors on the one hand and the enemy of those warriors on the other, are
substantially diverse. Yet the fact that both marks include the designation JEDI,
which is a coined term that is strongly associated with the films of opposers and
would have no meaning but for its association with those films, creates a very
strong element of similarity between the marks.
Opposers urge the Board to consider that the addition of the term NEMESIS
to applicant’s mark does not distinguish the commercial impression of that mark
from opposers’ mark and, in fact, intensifies the similarity of commercial

31 WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY, UNABRIDGED, Merriam-Webster,
2002, (15 May 2012), submitted under a notice
of reliance of opposers.
32 OXFORD ENGLISH DICTIONARY (Third ed.) at , accessed 15 May
2012, submitted under a notice of reliance of opposers.
33 “Jedi Nemesis Interview,” at , submitted under a notice
of reliance of opposers.
Opposition No. 91198236

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impression. Opposers point out that the Star Wars films are movies about the
“battle between good and evil”34 and that certain characters in the films are
appropriately considered to be “nemeses” of the Jedi warriors depicted therein.
Opposers point to several instances in which third parties used the word “nemesis”
in discussing opposers’ films and electronic games:
Luke Skywalker… seeks a final confrontation with his
nemesis.35
…the final confrontation between Luke Skywalker… and
his nemesis-father, Darth Vader…36
[Lucas] did know where his central characters – young
Luke Skywalker, his Jedi mentor Obi-Wan Kenobi and
their nemesis from the Dark Side, the evil Darth Vader –
came from, and what brought them to the fateful conflict
that concluded the original trilogy in 1983’s “Return of the
Jedi.”37
Think Star Wars spinoff. Players take on the persona of
Kyle Katarn, a young mercenary sent to infiltrate the
Empire…. [H]e must keep seven Dark Jedi led by his
ultimate nemesis, Jerec, from unlocking the powers of a
hidden Jedi burial ground.38

34 Southern dec. ¶ 5.
35 Netflix description of Star Wars: Episode VI: Return of the Jedi: Original Theatrical
Version, Southern dec., Exhibit 1.
36 Amazon.com description of Star Wars, Episode VI: Return of the Jedi (Widescreen
Edition), Southern dec., Exhibit 2.
37 “THE CHOSEN ONES 100 INTERVIEWS IN 3 DAYS IS THE PRICE THEY PAY,”
Detroit Free Press, May 10, 1999, p. 1E, Southern dec., Exhibit 6.
38 “STAR WARS JEDI KNIGHT: DARK FORCES II,” The Miami Herald, October 18, 1997,
p. 2G, Southern dec. Exhibit 5.
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Opposers also point to two discussions of crossword puzzles, in which a proposed
answer to the clue “Jedi nemesis” is “SITH.”39 (The “Sith lords” are apparently the
adversaries of the Jedi in the Star Wars films. (Opposers’ brief at 1.) The character
Darth Vader is apparently known as “the Dark Lord of the Sith.” (Southern dec.
¶ 5.) One of the Star Wars films is entitled Star Wars: Episode III – Revenge of the
Sith. (Id. ¶4.))
Although the word NEMESIS is different from any word that appears in any
of opposers’ pleaded marks, we find that it fails to dispel the association with
opposers that is created by the word JEDI. As we have discussed, the public
associates JEDI with the fictional warriors who engage in battle with their enemies
in the Star Wars films. NEMESIS, which is a synonym of “enemy,” is part of the
standard vocabulary of battle, especially the highly dramatic vocabulary that is
typical of fantasy fiction that portrays epic battles “between good and evil.” As a
result, even though a “Jedi school” and a “Jedi enemy” may seem to be on opposite
sides of the battle, in commercial impression the marks JEDI TRAINING
ACADEMY and JEDI NEMESIS are very much consonant with each other, as they
both seem to emanate from the same world of fantasy fiction. For the foregoing
reasons, we find that the marks are substantially similar in overall commercial

39 Crossword Giant at ; and L.A. Crossword Confidential at
, Southern dec., Exhibit 3. While we accept these web pages
for what they show on their face regarding the perceptions of the writers, we do not accept
them as evidence that the clue “Jedi nemesis” was included in a crossword puzzle published
in the Los Angeles Times, as opposers contend. (Opposers’ brief at 11.) The webpage
evidence is inadmissible hearsay as to that alleged fact.
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impression, such that this du Pont factor favors a finding of a likelihood of
confusion.
E. Alleged “bad faith” adoption of applicant’s mark.
Opposers contend that applicant adopted its mark in bad faith, arguing that
“it is simply not plausible for Applicant to claim that it adopted the JEDI NEMESIS
Mark without any knowledge of Opposers’ JEDI Marks.”40 Opposers point to an
advertisement of applicant, which makes use of the phrase “RETURN OF THE
REAL.” (The phrase in the ad could also be read as “RETURN OF THE REAL
JEDI NEMESIS.” The layout of the ad creates some ambiguity.)41 Opposers argue
that this advertisement deliberately plays upon the title of opposers’ film Return of
the Jedi.42
We see no persuasive evidence of bad faith on the part of applicant.
Considering that applicant’s mark is, in fact, not identical to any mark pleaded by
opposers, and considering that applicant’s field of hip-hop entertainment is, in
actuality, different from the services for which opposers are known, applicant could
have validly believed that its mark, as applied to its actual services, would not be
likely to create confusion.43 Conflicts in the world of commerce are usually not a
“battle between good and evil,” but merely a matter of disagreement between

40 Opposers’ brief at 33.
41 Substitute specimen of use submitted with applicant’s response of June 29, 2010.
42 Opposers’ brief at 33.
43 The question of whether applicant may use its mark in its specific field of business is not
before us. Nor is the question of whether an artist may fairly make reference to a cultural
phenomenon such as a series of popular films. The Board is limited to considering whether,
on the present record, applicant is entitled to a registration of its mark.
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businesspersons honestly plying their trade. Nothing in the record before us
suggests that either party has joined forces with the powers of evil.
F. Other du Pont factors.
Opposers offer very brief arguments with respect to two additional du Pont
Factors. First, opposers argue that there are no limitations in applicant’s
application or in opposers’ registrations as to the costs of the parties’ goods and
services or as to the conditions under which they are sold.44 However, neither is
there any evidence of record as to these points. Accordingly, the du Pont factor of
“conditions” of marketing is neutral.
Opposers also argue that applicant has not introduced any evidence of third-
party use of marks identical to or similar to opposers’ JEDI Marks.45 Considering
the complete absence of any trial testimony or evidence on applicant’s part, we are
not inclined to draw any conclusions from the absence of such evidence, and we
treat this factor as neutral.
G. Balancing the factors.
Having considered all of the evidence and arguments of record and all
relevant du Pont factors, including those not specifically discussed herein, we find
that applicant’s mark so closely resembles opposers’ earlier used and registered
mark JEDI TRAINING ACADEMY as to be likely, if used in connection with the
services identified in the application, to cause confusion, mistake or deception as to
the source of applicant’s services.

44 Opposers’ brief at 31.
45 Id.
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Inasmuch as we have found that applicant’s mark must be refused
registration, we need not reach opposers’ claim of dilution.
Decision: The opposition is sustained as to the claim under Trademark Act
§ 2(d) and registration of the applicant’s mark is refused.