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.

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.”

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.

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 36-year-old added: “We got the Notice of Threatened Opposition the day before it was going to go through and a registered trademark.”

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.

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Companies: giraffe and hobbit, middle earth enterprises

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Comments on “Middle Earth Enterprises Attempts To Block Wine Importer From Using The Word 'Hobbit'”

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29 Comments
Dark Helmet (profile) says:

Re: Re: comment

Hi there, champ. I wrote the article. I’d be more than interested in hearing where I factually got something wrong with respect to trademark law. While I do write about trademark law roughly all the damn time, it wouldn’t surprise me if I had made some error. What DID surprise me is that you thought that leaving this vague and specifics-free comment was in any way helpful, interesting, or useful.

Steerpike (profile) says:

Re: Re: Re: comment

Only thing I can spot is this:

“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.”

John Fenderson (profile) says:

Re: Re: Re:2 comment

“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.””

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.

Stuart Whittaker (user link) says:

re

Nice article, thank you for the coverage, it is interesting how a film company can monopolize a word in all trademark classes, and feel it is exempt from invalidation of some of it’s classes due to non-use. That said this particular film company is notorious in terms of bad press and litigation. Is it also worth mentioning on an unrelated note that both the Tolkien estate and Peter Jackson weren’t particularly enamoured with the Hobbit films? Probably not , but there you have it – a word technically in question as to original creator, rights acquired by SZC and made into films of that name, that the Tolkien estate, film director and much of the public believe detract from the authors works and attempting to block a small company, in classes it is unlikely to ever use. Mind you one would imagine that they have to try make some money somewhere, reportedly they told the Tolkien estate the films made no profit, and the financial weight they throw into their litigation is not free! They would have you believe the word is like “apple” or “pepsi” but neither apple or pepsi own classes for films or for that matter wine in their trademarks. Hobbits are vertically challenged people,folklore, units of welsh measurement and yes characters in Tolkiens brilliant books and SZC’s rather disappointing second set of films. Apples are, well apples. Any support is much appreciated.

DOlz (profile) says:

It was a sad day when the orcs took over the Shire. The green and happy place where the hobbits™ had lived for uncounted generations, was despoiled by the orcs. The orcs cared only for removing anything they thought be of value. They then destroyed anything they didn’t want, least someone else might benefit from it. They left the Shire a barren and ruined land where no one would willingly venture.

Anonymous Coward says:

Re: Re:

The modern version would be the Orcs suing the shire for infringing on their ‘corporate sovereignty’ by not lying down and agreeing to be murdered to guarentee the Orcs right to future profits.

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)

Drawoc Suomynona (profile) says:

The origin of the word is interesting, and debatable. Usage in England may be different, but to say that the word is generic seems a stretch.

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.

Anonymous Anonymous Coward says:

Re: Re:

Interesting. Can you name any of the products or services that use the name Hobbit? Don’t trademark owners actually have to use those names commercially to retain the mark?

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.

Drawoc Suomynona (profile) says:

Re: Re: Actual Use on products

“Can you name any of the products or services that use the name Hobbit? Don’t trademark owners actually have to use those names commercially to retain the mark?”

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.

Stuart Whittaker (user link) says:

Re: Re: Re: Actual Use on products

“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.”

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. 🙂 http://www.ipo.gov.uk – great place to start

Demon John (profile) says:

>The diminutive Whittaker goes on to note, correctly, that Tolkien admitted that he didn’t come up with the term.

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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