Middle Earth Enterprises Attempts To Block Wine Importer From Using The Word 'Hobbit'
from the stop-wining dept
We've seen all kinds of strange trademark actions revolving around the works of Tolkien, including threats against holiday campsites and pubs. The dual threat of dumb in these disputes always ends up being both the protectionist aims against businesses that don't operate anywhere near the literary or theatrical realms in which Tolkien's works normally operate and the sketchy history of the term "hobbit" itself, with it being rather clear that Tolkien both didn't invent the word itself and actually based his hobbit characters on previous fictional works. This of course hasn't precluded anyone with any kind of ownership stake in rights associated with Tolkien from sending out threats to anyone and everyone that in any way uses the term.
Which brings us to Middle-Earth Enterprises, owner of some of the rights to Tolkien's works and owned by film producer Paul Zaentz, and its apparent opposition to a trademark application by a wine importer, because why the hell not?
A tall wife and her short husband are locked in a legal battle over whether they are allowed to have the word 'Hobbit' in the title of their wine business. Stuart and Elise Whittaker set up Giraffe and Hobbit, which imports wine from small vineyards in Provence, France, in the summer of 2014 to poke fun at the difference in their heights. But American company Middle-earth Enterprises, which owns the copyright to the word 'Hobbit', is trying to block the couple's attempt to register the company as a trademark.This is nearly the definition of when a term either becomes generic in nature or too broad to deserve wide trademark protection. In naming their company, the Whittakers weren't thinking about Tolkien. Hobbit meant "short person" to them, not "race of people from the The Lord of the Rings universe." When coupled with the fact that theirs is a wine business, having nothing to do with the film or literature industries, the opposition from Middle-Earth Enteprises leads us to a common mantra: this is not what trademark is for.
Mr Whittaker said: "We applied for the trademark with the Intellectual Property Office, we decided on the name already, it had nothing to do with the Hobbit film or Lord of the Rings. It is a reference to the fact my wife is quite tall and I'm not so tall."
Par for the course, the opposition was carried out in the most irritating manner possible.
A couple of months after attempting to register their trademark, Giraffe and Hobbit, the couple were sent a Notice of Threatened Opposition from American firm The Saul Zaentz Company.The diminutive Whittaker goes on to note, correctly, that Tolkien admitted that he didn't come up with the term. This matters less in trademark terms than copyright, but is still an indication that the term is not unique or source-identifying. Meanwhile, it stretches credulity to think that Middle-Earth Enterprises could somehow show that there would be confusion at stake here. But, hey, just another day in the world of trademark bullying by someone associated with Tolkien.
The 36-year-old added: "We got the Notice of Threatened Opposition the day before it was going to go through and a registered trademark."
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Filed Under: hobbit, tolkien, trademark, wine
Companies: giraffe and hobbit, middle earth enterprises
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They're turning into hobbitual liars.
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What? You didn't even question or challenge this?
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"This is nearly the definition of when a term either becomes generic in nature or too broad to deserve wide trademark protection. In naming their company, the Whittakers weren't thinking about Tolkien. Hobbit meant "short person" to them, not "race of people from the The Lord of the Rings universe."
To the extent you're saying that their subjective view of what the word means is what's important with respect to genericism, that's wrong (I don't think that's what you're saying, but maybe that's what this other guy is talking about). If a person's subjective understanding of a term, or their intention in using it, was the key with respect to genericism, that would be problematic. The question is whether the term has actually become generic in common usage. I think it would be pretty hard to make the case that "hobbit" is so widely used as a name for short people that it has become a word that is generic for "short people."
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I think it would be pretty easy, since -- at least in my region of the world -- that's how it's been used for most of my life. "Hobbit" is not precisely generic for short people, but it is a common pejorative term for short people.
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Saruman would be offered a cushy job in Minas Tirith, and the lawyers for Rohan would sue the fellowship for patent infringement on their concept of 'travelling around' + (instead of computer they put horse at the end)
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A quick search of the UK trademark database shows about 40 active marks with "HOBBIT". Besides the contested marks, Zaentz own all but two, one for legal services from 2007 and one owned by a German company for plants dating to 1997.
USA is similar, with 50+ marks, all but one owned by Zaentz, and that one has been refused based on the Zaentz marks, as likely to confuse.
Further, the HOBBIT registrations in both countries cover a very wide range of goods and services, including alcoholic beverages, various food products, and "services for providing food and drink; bar services; cafes; restaurants".
The HOBBIT trademark is clearly ownable and protectable and used on a range of products and services by the same owner, and the owner has a long and successful history of enforcing their trademarks. The wine folks are going to have a very tough fight, and it's pretty clear they will not prevail.
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38 marks in the UK and 49 in the US and I cannot think of one use, outside of the movies which I have not seen and will not see, oh, and of course the books from Tolkien.
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Superb question. The US requires proof of use to gain and maintain a registration, unless the basis of the app was a registration from another country, which still requires proof of continued use after five years. The evidence submitted as proof of use is available on the USPTO website.
The US record shows evidence of use for HOBBIT on food products and bar and restaurant services (looks like a place in Ocean City Maryland called The Hobbit). I suspect that these registrations arise as part of settlements made after someone started using the name w/o license and Middle Earth challenged them, and then parties came to an agreement, but that's a guess.
The UK does not require proof of use for registration or renewal, but trademarks can be cancelled after three years of continuous non-use, which is a rule in many countries, including the USA.
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Hi Drawoc, it's the little man here again! In response to this and your other comments the facts are thus: yes clearly ownable and protectable (ONLY IN CLASSES USED)) but UK and EU trademark law stipulates five NOT three years concerning proof of use, the EU are also very aware of such marks "cluttering up" EU trademark law by registering unused marks thus highly invalidatable. :) www.ipo.gov.uk - great place to start
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He may be a short man..
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Is the term really generic?
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This is not accurate, so far as I know, and in the article itself Whittaker only vaguely says "it was used before"… I am not familiar with any prior use of the word "hobbit" than in the works of Tolkien. Can you cite a source for this claim?
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https://en.wikipedia.org/wiki/Hobbit#Appearance
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And those "previous works" mentioned in the wikipedia seem rather a weak claim, the word was hardly in common usage, seems more like offhand usage maybe once or twice.
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