AEW Star Facing Issues With “The Four Horsemen” Trademark
Arn Anderson has faced a roadblock attempting to file a trademark for the name “The Four Horsemen”, the legendary wrestling stable which formed over 30 years ago.
Last September, Anderson filed a a trademark application for the name under the entertainment services classification for professional wrestling and sports entertainment personalities.
On 2/25, the United States Patent and Trademark Office issued a review of the filing, refusing the the trademark due to “likelihood of confusion”.
The USPTO attached several documents, including the registration of the name by a musical act, as well as the name being used in WCW/WWE. The trademark office also shows WWE using the name in commerce, namely a compilation CD that includes a version of the group’s theme music.
The attached Internet evidence, consisting of screenshots of online marketplaces and news articles, the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use/the goods and/or services are similar or complementary in terms of purpose or function. In the instant matter, the attached evidence shows that music and musical services is an integral part of professional wrestling entertainment services. As shown in the attached evidence, namely albums of music featured in WWE/WCW shows and news articles, from theme songs to entrance music and the occasional wrestling personality releasing solo musical albums under the company’s auspices and label, musical performances have long been a valuable component of the total showmanship package that is the professional wrestling industry. Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes.
Specifically, the specimens do not show applicant using the mark in commerce because the specimens provided demonstrate third parties using the mark wording in conjunction with their services. The first specimen component is a promotional image belonging to and circulated by World Champion Wrestling, Inc., aka WCW, to advertise a group of athletes, including applicant, in their employ at the time the image was created. The second specimen component screenshots from the website belonging to WWE, Inc., aka World Wrestling Entertainment, formerly known as the WWF or World Wrestling Federation. The third specimen component is a magazine cover for the December 1988 issue of Pro Wrestling Illustrated magazine using the mark wording to presumably feature an article within the issue. In each instance, it is a third party using the mark wording in connection with their services and not applicant using the mark in connection with the services identified in the application.
On 8/25, Anderson responded to the USPTO via his attorney Michael E. Dockins, stating their is no confusion between his trademark and third parties using the name.
HeelByNature.com has obtained trademark documents, including Anderson’s response to the USPTO.
The applicant respectfully submits that a comprehensive analysis based upon the multifactor test commonly applied, leads to the conclusion that there will be no likelihood of confusion in the minds of the relevant public between the applicant’s mark and the Cited Mark.
In the case of the music band using the trademark, Dockins believes their is no relation between him using the name in professional wrestling and the band using it for live music.
The Examining Attorney states that the goods and/or services in this case are highly related. The Cited Mark is registered for live music by a band. Applicant has applied to register its mark for professional wrestling and professional wrestling related services.
Applicant’s services are professional wrestling. Registrant’s business is driven by advertising to fans of live music and of the band. Applicant’s business is driven by advertising to fans of professional wrestling.
He also believes consumers won’t confuse the live music band with the professional wrestling group, and their is a number of other trademarks used by both musicians and professional wrestlers.
The music cited and sold by wrestling companies is made and sold by the wrestling company itself and not the wrestlers. Furthermore, the music sold is directly related to the wrestlers and fandom of the particular performers. That is, there is no independent, stand-alone music being produced by the company; The music is inextricably tied to and associated with the wrestling performer. The wrestlers themselves are not making or selling their theme music. It is widely known and often criticized that professional wrestlers are independent contractors. They are not and have never been employees. The music cited by the Examining Attorney is, in essence, associated with and a trademark of the wrestler. Without the performers and their brands, there is no music. The inverse is not true. The wrestling performer still exists without the music, and fans can and would still consume the wrestling services. Without the wrestlers, there is no market nor any sales of any music with whom the music being sold is affiliated. In this way, applicant’s services are not even remotely similar to or overlapping with the services of the Cited Mark
The foregoing notwithstanding, a consumer seeking professional wrestling entertainment does not accidentally go see a live band, nor does a fan seeking music entertainment accidentally watch professional wrestling. There are numerous registrations on the register of musicians co-existing with wrestlers
Individuals making decisions as to how to spend not only their time being entertained but also their money are not confused between music and bands and professional wrestlers and would not be likely to be confused between the Cited Mark and applicant’s mark and the source of the services.
In relation to the use of The Four Horsemen in wrestling, Dockins argued Anderson is the creator of the name and the founder of the group. He also stated the The Four Horsemen have never worked for WWE, and the name was first used in 1985 when Anderson was a performer for Jim Crockett Promotions. The name was later used for NWA and WCW.
WWE using the name in commerce is due to the fact they own copyright to performances from NWA/WCW, but have no claim over The Four Horsemen.
Applicant believes that the Examining Attorney is under an incorrect understanding of professional wrestling. From its inception and up to current day wrestling, including the 1980s when use of the instant mark began, professional wrestlers are and have been independent contractors. Accordingly, absent an agreement otherwise, use of stage names and trademarks by professional wrestlers inured to the benefit of the professional wrestler. In the instant case, there is no such agreement and thus use of the trademark and any goodwill associated therewith inured and continues to inure to the benefit of Mr. Lunde, the creator of the mark and founder of the THE FOUR HORSEMEN wrestling group.
In support of the rejection, the Examining Attorney notes that specimens were provided from WWE and Pro Wrestling Illustrated. As Mr. Lunde and use of the mark was used under license (implied or otherwise) by Mr. Lunde on such television or in such magazines is not surprising and is exactly how all owners of trademarks and of services use their marks. Being featured in a magazine or on a news story or on a commercial on a particular network does not grant ownership rights of a service mark to the owner of such platforms. This is true of plumbers, lawyers, hospitals, and wrestlers alike. In fact, Mr. Lunde and the THE FOUR HORSEMEN faction of wrestlers have never appeared for WWE and never worked for the WWE. The mark was first used in 1985 when applicant was a contracted performer for Jim Crockett Promotions. The mark was later used by applicant as a contracted performer for the NWA and WCW promotions, always with the use by and for the benefit of applicant. That WWE owns the footage of the performances, a copyright concern, is of no matter or relevance here. Similarly, that a magazine was permitted by applicant to use the trademark to promote his services and his brand is commonplace in wrestling and in business in general.
In view of the foregoing, applicant is hopeful that the Examining Attorney has a better understanding of wrestling and wrestlers and that Mr. Lunde has at all times been the owner of the THE FOUR HORESEMEN mark and that it was never assigned to or owned by WWE or any other organization. Accordingly, the specimens are and should be accepted as filed.
We will continue to follow this case, and provide updates when the USPTO provides feedback on Anderson’s response.
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