What do magician Richard Bloch, a highly (pun intended) rated medicinal marijuana dispensary and the world famous home to the Academy of Magical Arts have in common? They each use the phrase “Magic Castle” in their names.
Mr. Bloch recently sought federal registration for the trademark “Magic Castle at Sea” to identify his particular brand of magic shows designed for cruise ships.
Magic Castle Solutions describes itself as a “North Hollywood Marijuana Dispensary” where customers can order a variety of different strains of the drug pursuant to their physician’s prescription.
“The Magic Castle” private club is also in Hollywood, California but likely does not sell any strain of marijuana with or without prior approval of one’s physician. Rather, the club is a place to enjoy the performance and teaching of the art of magic.
We support our magic habit by our day job as an intellectual property attorney and so the confluence of these three trademarks was the kind of thing about which we become giddy. We feel spiritually uplifted now that we have admitted we become giddy by such things and feel our relationship with you, the reader, has become more meaningful by our sharing.
Or maybe it’s the airplane glue we have been using to perform “Smoke from Fingertips” all night long.
But trademark law is fun with or without fumes of glue.
The purpose of a trademark is to identify the source of goods or services. That’s it.
Anyone can make bread, but a consumer looking for the taste and quality of Wonder Bread will look for loaves bearing that trademark first used in 1921. Consumers are confident Wonder Bread brand of will be the same when purchased in Los Angeles, California; Mystic Hollow, Michigan or DeFuniak Springs, Florida. Consumer confidence in the trademark is supported by civil and criminal laws to protect against counterfeiters; like rogue bakers selling bread with the Wonder Bread trademark.
Consumers interested in magic as a performing art have similarly associated the trademark MAGIC CASTLE with certain qualities. The castle offers visitors a chance to see magic performed from at least three different disciplines (close-up, parlor and stage) after enjoying a fine dinner and taking in the grand collection of magic memorabilia.
A consumer looking for a place to stay in the neighborhood of The Magic Castle may happen upon The Magic Castle Hotel. It shares a parking lot with the clubhouse and bears the same name. It is likely the weary traveler would assume the hotel and the Academy are related. And, as it turns out, the Academy owns registrations for both the castle and hotel. Sure, hotels are not traditionally associated with the performance of spectacular magic by excellent magicians, but by using the identical trademark, the hotel benefits from the castle’s fame.
(See, USPTO Registration No. 3419853 MAGIC CASTLE for “Hotel services.” The hotel’s submission to the USPTO included examples (specimens) from a brochure showing the association between the Magic Castle and the Magic Castle Hotel. (See, Magic Castle Hotel logo, text and image of castle, and map showing proximity of the Magic Castle to the Magic Castle Hotel).
The federal trademark registrations protect the Academy’s rights in the trademark MAGIC CASTLE and the use of the trademark establishes a definite link between the Academy and the goods or services bearing it.
That leads us to the question, is the Academy selling marijuana through a store called Magic Castle Services?
A consumer driving along Laurel Canyon in North Hollywood could be confused by the marijuana store using the Academy’s trademark. Is the weed outlet a non-magic related venture similar to the Magic Castle Hotel? Could the dispensary’s use tarnish or dilute the Academy’s trademark? These seem to be fair questions to ask. After all, the dispensary is just 9 miles due north of the castle; depending on traffic, less than 15 minutes up the Hollywood Freeway (101).
We are taking a wild guess here but perhaps the marijuana dealers use the business name Magic Castle Services to take advantage of the Academy’s good will. The store does not look like a castle and despite what looks like a stage area, it is not set up for magic performances.
The Academy and its lawyers have probably considered the marijuana seller’s infringement and perhaps they are in the process of asking, politely, that the company change the name. We leave that to the Academy’s intellectual property lawyers to decide.
We are more interested in magician Richard Bloch’s trademark application for MAGIC CASTLE AT SEA. Mr. Bloch is a fantastic inventor, performer and has a great reputation as a lawyer. You may recall his role as arbitrator between Terrell Owens and the Philadelphia Eagles in 2005. (He sided with the team and upheld their suspension / deactivation of the controversial wide receiver).
Mr. Bloch filed an application to register MAGIC CASTLE AT SEA for “conducting entertainment exhibitions in the nature of magic shows on cruise ships.” He filed in International Class No. 41 – reserved for trademarks designating “education and entertainment; providing of training; entertainment; sporting and cultural activities.”
(The USPTO uses the Nice Classification system to categorize the types of goods and services involved. The word “Nice” indicates the city in France from which the designation system originated and not the system’s friendliness. For instance, clothing such as tee shirts would be in Class 25; video games are found in Class 9; and bongs or hash pipes would be under Class 34).
The Academy owns a registration for Magic Castle in Class 41 claiming use as early as 1967. The Academy describes the services covered as “entertainment services in the nature of live magic performances.” Mr. Bloch filed his application in 2012 claiming his first use was in April of this year to describe magic shows on cruise ships. You may recall the Inside Magic article on Mr. Bloch’s Magic Castle at Sea event on Crystal Cruises or the press release from Crystal. We assumed at the time Mr. Bloch was using the trademark under license from the Academy. There were even some posts on the Genii forum to support this assumption.
However, if our assumption that Mr. Bloch’s use was licensed, we do not understand why Mr. Bloch would apply for a trademark registration.
Customarily, a trademark license will prohibit the licensee from registering the mark. That just makes sense. Why pay for a license if you can own the registration outright? And why license your trademark to someone who wants to gain ownership rights through federal registration?
So, we are confused but still giddy about this mystery. Is there some sort of informal license under which Mr. Bloch and the cruise line are using the Academy’s trademark? If so, why would Mr. Bloch seek to register the trademark? Perhaps the registration application was a mistake and Mr. Bloch does not intend to appeal the USPTO’s refusal to issue a registration.
The issue may be moot. The Trademark Examiner rejected Mr. Bloch’s application because it of its similarity to the Academy’s trademark for the same services.
The examiner said adding the words AT SEA to the existing trademark MAGIC CASTLE did not prevent confusion with the Academy’s trademark. “The meaning of the marks remains the same because applicant’s additional wording merely describes a different location of registrant’s MAGIC CASTLE.”
Mr. Bloch has six months from the end of August to counter the examiner’s findings and conclusions. It could be that Mr. Bloch and the Academy intended to enter into a consent agreement permitting him to apply for Magic Castle at Sea but the examiner could still reject the application.
The examiner is required to consider whether consumers would be confused by the similarity, not the owners of the marks. Consequently, even though the Academy and Mr. Bloch agree there is no likelihood of confusion, the examiner may still find it exists. We will keep our now airplane glued eye on this case and report back with developments.
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