Accio Legal Problems! On July 28, 2020, Warner Bros. Entertainment Inc. (“WB”), a worldwide name in the filmmaking business, filed a Petition for Cancellation with the USPTO’s Trademark Trial and Appeal Board (“TTAB”) against Paradido Inc. for their registration of the mark “Accio.” Paradido received full registration of their mark (Reg. No. 6,102,758) a few weeks prior; listing some of the goods and services as “electronic devices used to locate lost objects using radio frequency”, “computer software for geolocation”, and “computer hardware and software systems for asset tracking management”, among others.
WB owns the licensing and distribution rights of the widely known Harry Potter movie franchise, which first made its way on to the silver screen in 2001. Over the years, due to the franchise’s insurmountable popularity, WB has taken affirmative steps to protect their intellectual property rights to elements of the stories. One element in particular includes spells such as “Accio” – known as the “summoning charm” to retrieve lost or far away objects.
In this Petition, WB claims that the grounds for cancellation of Paradido’s “Accio” mark stems from the Trademark Act in sections 14(1) and 2(d), relating specifically to priority and likelihood of confusion. There are several officially registered trademarks using “Accio” by WB, including a mark (Reg. No. 5,851,547) with services under the same International Class (009) as Paradido’s mark. It should be mentioned, however, that none of the listed services under this particular mark or even other WB “Accio” marks share the exact services as Paradido’s registered mark.
Throughout the Petition by WB, they insist that terms like “Accio” and other well-known symbols, names, characters, and elements contain a “broad reach and deep emotional impact” and consumers undisputedly correlate them to the Harry Potter franchise. WB goes on to say that their “Accio” marks have developed secondary meaning and significance within the minds of the public, meaning that Paradido’s mark would inevitably lead to confusion, mistake, and/or false beliefs that the mark is somehow associated and/or authorized by WB when it is not. WB also states that they were the first to use the mark “Accio” in commerce, referencing all the way back to September 2016, in order to establish priority.
Considering that Paradido’s mark successfully made its way through the application process without complication before this, it’s difficult to say whether or not WB will be successful. TTAB currently displays the status of Paradido’s “Accio” mark as “Cancellation Pending” due to the Petition. Paradido has until early September to respond. Magic just might be on their side.
Author, Shelby Shilatz-Lewis, is going into her third year at Florida State University College of Law with an interest in intellectual property and entertainment law. She is currently a legal intern with Lee Law, PLLC.