Will the US Government lose trademark battle for Space Force to Netflix?

by: Kim Capiau

Is the US Government really going to lose a trademark battle for “Space Force” to Netflix? We don’t think so, and this is why…

The essence of trademark protection is to solidify brand recognition and reduce potential confusion among consumers. In practice, however, things are not always so clear cut and some otherwise identical or similar marks will be able to co-exist.  “Space Force” is one of these examples where both the US governement and Netflix want to use the same brand and where trademark ownership and use needed to be explained. Here’s what we know so far about the “Space Force” trademark battle and how we suspect it will play out.

 

So, why would the US Government be losing the “Space Force” trademark to Netflix?


Beginning in June 2020, it was all over the news that the US Air force was going to lose its trademark for “Space Force” to the Netflix show “Space Force” that started airing in May 2020. The US space military service with the name “Space Force” was established in December 2019 before the show starting airing.

In March 2019, before the US Space Force was officially created, the US Air force filed a trademark application in the US for a variety of clothing (hoodies, etc.) it was planning to sell under the “Space Force” brand. Nearly a year later in May 2020, it expanded the application significantly by adding a variety of items like sculptures, trophies, airplanes, greeting cards, key chains, watches, books, backpacks, beer mugs, blankets, golf clubs, cigarette lighters, military education and training, and promoting public awareness.

Meanwhile, in January 2019, Netflix filed their own trademark applications for “Space Force”  for all kinds of promotional material (greeting cards, pens, clothing, toys, and games) in Europe, Canada, Australia, and Mexico, but NOT in the US.

Both the US Air Force and Netflix were planning to use “Space Force” for an overlapping list of goods but had applied to register the mark in different jurisdictions. So, how does this play out?

It is possible to get a trademark registration if there are no other pre-existing confusingly similar trademarks used on goods and services in the same field. Nobody would really confuse the Netflix show with a US military service, however, as pointed out by the media, people could potentially be confused when it comes to the goods both parties included in their trademark applications: Are you buying a “Space Force” hoodie from the US Government’s Space Force or a “Space Force” hoodie from Netflix?

When it comes to trademarks, the US is a “first-to-use” country. This means that the person who uses a trademark first will have priority to register the mark for those items. So, even though the US Air Force filed its trademark application for “Space Force” first in the US, it could still lose the trademark to Netflix if Netflix could demonstrate that it started selling “Space Force” clothing (or other items covered by the government’s application) before the US Air Force. This thought had the media in a frenzy that there was potential that the US Air Force will lose the trademark for “Space Force” to Netflix!

 

But will the US Government really lose “Space Force” to Netflix?


We believe that it is very unlikely.  The US Air Force will likely not lose its trademark to Netflix’s show “Space Force”, or any other trademark application for “Space Force,” that was filed in the US (more on this below).

Would Netflix win a court battle for “Space Force”?

Recall that Netflix applied in several jurisdictions however it did not apply for registration in the US. Netflix therefore could not sue the US Government for trademark infringement. Any action brought by Netflix would have to be based on unfair competition under § 1125(a) of the TM Act. This would require Netflix to show that, through its use of the mark, it has built a reputation in the mark such that its use by the US Government would be likely to cause confusion.

Netflix could take another approach and oppose the US Air Force’s application for “Space Force”. Netflix could contest on the basis that they had earlier use of the mark in the US and that the use of the mark for the items covered by the US Air Force’s application would be likely to cause confusion. This approach would be highly questionable as it’s very unlikely that Netflix would have started using the trademark “Space Force” in the US before the US Air Force; Why would Netflix start selling clothing and other promotional items back in 2019, before the show started airing in May 2020?

It would be very challenging for Netflix to make an unfair competition claim against the US Government for using “Space Force” given President Trump first announced the idea of a “Space Force” in June 2018, long before the Netflix show was launched. This may be why Netflix did not file a US trademark application for “Space Force” in the first place?!

Under these circumstances, it seems unlikely that Netflix would be able to prove that the public would be confused into thinking that the US Government’s use of “Space Force” was somehow connected with the Netflix show. If anything, one might expect that viewers of the Netflix series would assume that the show was somehow authorized by the US Government.

What is happening with US Air Forces’ Space Force trademark applications?

According to US trademark law, the registration of a trademark that “consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols” is prohibited.  Based on this, the United States Patent and Trademark Office (“USPTO”) has already objected to four third party applications to register “Space Force” that were filed before the US Air force’s application because consumers would presume a connection with the US Government’s “Space Force”. The USPTO argued that by the time these applications were filed, it had already been widely publicized (since June 2018) that “Space Force” was to be the name of the new US space military service, so when someone else uses “Space Force” for their goods/services a consumer might falsely assume an association with the US Government “Space Force”.

Therefore, there is a good chance that the US Air Force will be able to register their “Space Force” trademarks.

 

What will happen with Netflix’s “Space Force” if the US government registers it?


If the US Air Force secures the US trademark registration, Netflix may still be able to continue using or even register a trademark “Space Force” under the parody exception in US trademark law. The theory behind this exception is that there is no likelihood of confusion between the two marks because a parody will not be taken seriously by consumers.

What may become a problem, however, is merchandise. For example, should Netflix wish to sell “Space Force” clothing, the US government may want to stifle those sales.

 

Conclusion


Given what we know about trademark law and current situation, it seems unlikely the US Government will lose a trademark battle to Netflix. Although the US Government may have to endure the use of “Space Force” as the name of the Netflix series, they shouldn’t have to endure a trademark dispute since there should be no confusion among consumers between the two marks. In fact, a spokesperson for the US Air Force has already stated that they did not find any problems with the fictional “Space Force” Netflix program.

 

Better Trademark Protection.


There are many layers and considerations to trademark law. This “Space Force” illustration is only one small example. If there is a trademark that is causing confusion for your organization, reach out and we can answer your questions (we know how complex it can get). We’ve helped organizations like yours develop trademark strategies that protect well-earned brand equity and lay foundations for future growth and use.

Contact Stratford IP

 

About Stratford Intellectual Property

Stratford Intellectual Property has been helping companies build, protect, and get the full value out of their intellectual assets since 2009. Our passion is innovation. When you call on us to design and execute your IP strategy or to manage your IP portfolio, you get access to a unique blend of IP and business expertise. We work with companies looking to create, cultivate, or commercialize on their innovative culture. We can help you improve the way you develop, protect, and monetize your entire IP portfolio – from patents, trade secrets, trademarks, design patents, and domain names.

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