According to The Hollywood Reporter, the newly founded military brand – the U.S. Space Force – is losing a trade mark battle with streaming giant Netflix for its new comedy show of the same name.
Netflix has reportedly already secured the trade mark rights to “Space Force” in Europe, Australia, Mexico and elsewhere.
Like Australia, the U.S. Patent and Trademark Office relies on a “first-to-use” system when assigning rights to a particular trade mark. Netflix has been submitting trade mark applications for “Space Force” across the globe since the beginning of 2019. On the other hand, the Air Force filed a trade mark application on the basis of “intent to use” in March 2019, and the Space Force did not become an actual organisation until December 2019. If it comes down to a legal battle, this means Netflix may be able to easily demonstrate it was actually using the Space Force branding first.
While most consumers understand the difference between the military branch and the TV series, they might not be able to when it comes to who is selling merchandise related to the show, such as a line of Space Force t-shirts or mugs. Even if Netflix lost the trade mark battle, it would still have a First Amendment right to continue Space Force merchandise on the grounds of satire and parody as forms of free speech.
The key lesson is first to use, not first to register.
Trade mark registration can protect your brand from others who want to ride on the coattails of your success. However, it is critically important to undertake adequate searches from the outset of developing the brand. Searches can include general search engine searches, social media searches, and the Trade Marks Register.
In late 2019, Apple Inc. released a TV show on Apple+ TV by the name of “The Morning Show” (which, interestingly, also stars Steve Carrell). While the “The Morning Show” is available to watch in over 100 countries and regions around the world, it goes by a different name in Australia: “Morning Wars”. Why? Because in Australia, there is already a popular Chanel 7 TV program, “The Morning Show”, which premiered in mid-2007. Apple clearly did its due diligence prior to the release of the show.
Like Apple, you should ensure that a mark does not infringe another mark, whether registered or not.
Contact us for assistance in registering your trade mark.