‘Krusty Krab'-Like Brands Win Trademark Protection if Well Known

The Daily Planet. Stay-Puft Marshmallows. The Krusty Krab.

Most consumers might recognize these brands, yet they don’t exist in the real world. They’re fictional brands that exist only in movies or television shows. But they raise questions about whether trademark rights exist in these fictional brands and, if so, who owns the rights in the real-world.

A series of court rulings shed light on when a fictional brand can accrue trademark rights and if using a fictional brand in the real world creates actionable confusion.

Fiction in Court

Several federal courts have found that trademark rights can exist in fictional brands and that third-party use of a fictional brand in the real world can be infringement.

In Lucasfilm Ltd. LLC v. Ren Ventures Ltd., the US District Court for the Northern District of California considered whether use of “Sabacc” for a fictional card game created trademark rights. Lucasfilm invented the Sabacc name for Star Wars, with Han Solo winning his starship, the Millenium Falcon, in a Sabacc game. Another company sought to use the name for an app-based card game.

The Sabacc name has appeared in Star Wars novels and merchandising, including card games. The court recognized Lucasfilm’s trademark rights in the word in 2018, explaining that as “a result of the long and extensive use of the Sabacc mark by Lucasfilm and its licensees, the public recognizes it as uniquely associated with Lucasfilm and the Star Wars franchise.” The case was later settled before a decision on infringement.

In D.C. Comics, Inc. v. Powers, the Southern District of New York held back in 1978 that DC Comics owned rights in “The Daily Planet” name and that the defendant’s use of The Daily Planet for a real-world newspaper created a likelihood of confusion. The ruling emphasized that the defendant clearly intended to trade off the goodwill from the name’s connection to the Superman universe—citing DC Comics’ half-century use of the term as the newspaper where Superman’s alter ego, Clark Kent, worked.

Similarly, in Viacom Int’l v. IJR Cap. Invs., the US Court of Appeals for the Fifth Circuit recognized trademark rights in the name “Krusty Krab,” because it was heavily used and played a key role as the restaurant in the “SpongeBob SquarePants” television series.

The court determined that use of “Krusty Krab” for a real-world restaurant created a likelihood of confusion, relying on the marks being identical, the services being identical in both the real and fictional world, and a consumer survey showing 35% of respondents thought the restaurant was connected to the show.

However, real-world use of fictional brands isn’t always infringement.

In Paramount Pictures Corp. v. Romulan Invasions, the owner of the Star Trek franchise opposed a trademark application for “The Romulans” covering live musical entertainment. Although the US Patent and Trademark Office’s Trademark Trial and Appeal Board agreed that the name “Romulan” was widely known, it construed Paramount’s rights narrowly. As “live music entertainment” services weren’t commercially related to the only goods on which Paramount had used the name, the board found no likelihood of confusion.

Notably, the board accepted the applicant’s claim that it didn’t intend to copy Star Trek but instead created the term “Romulan” from a combination of the words “Roman” and “Romulus,” the founder of Rome, as a social commentary on the modern political climate.

Real Infringement

When can the owner of a fictional brand enforce their rights against real-world uses? While there is no express test, a few principles emerge from rulings on fictional brands.

First, the fictional brand needs to be well-known. The decision in Paramount Pictures Corp. finding no infringement was in part because the board believed defendants weren’t aware of the use of “Romulans” in Star Trek.

Conversely, the courts in DC Comics and Viacom found it implausible that their defendants didn’t know of The Daily Planet or the Krusty Krab, and that influenced their decisions finding infringement. The Viacom court also depended on the high number of survey respondents believing there to be a connection between the real-life restaurant and the show.

Second, the real-world use should connect with the same type of goods and services as the use in the fictional world. The uses that were found infringing—Sabacc for a card game, Krusty Krab for a restaurant, and The Daily Planet for a newspaper—are all identical to the fictional uses in Star Wars, SpongeBob, and Superman. In contrast, Star Trek never used The Romulans for a band name or in connection with music.

And finally, there should be evidence the real-world user intended to trade off the goodwill of the fictional brand. Put another way, the real-world user intended consumers to understand the brand as a reference to the fictional brand. In DC Comics, the real-world “Daily Planet” newspaper used Superman references and puns, showing awareness of the mark and the use of the Superman world to attract consumers.

But when is it permissible to create a brand that is inspired by a fictional movie or story? One commonly used strategy is to pick a name that nods to the fictional brand without being confusingly similar to it.

For example, there are several coffee shops inspired by Central Perk in the TV show “Friends.” These real-world coffee shops avoid using the identical Central Perk mark and instead just hint at references—such as Litchfield Perk or The Orange Couch Coffee House. Similarly, there are Star Wars themed bars with names such as Scum & Villainy Cantina in Los Angeles and Harry Potter themed bars with names such as Wizards & Wands in San Francisco.

Even though these coffee shops and bars are clear references to fictional universes, they don’t appear to use any trademark or brand name used within that universe and appear to have (so far) avoided infringement claims.

Looking Ahead

Fictional brands in fictional worlds can create trademark rights in the real world. And just like real world brands, those rights can be infringed.

Whether there is infringement depends largely on if the fictional brand is well known and how close the real-world use is to the fictional one. It’s something that the owners of fictional works, real-world companies, and their attorneys (even if they don’t work at Pearson Specter) should keep in mind.

This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law, Bloomberg Tax, and Bloomberg Government, or its owners.

Author Information

Jennifer Van Kirk and Aaron Johnson are intellectual property partners at Womble Bond Dickinson.

Chris A. Underwood is an associate at Womble Bond Dickinson.

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