Declaratory Judgment Suit Over ROHAN Trademark

By Ralph A. Dengler and Luis J. Diaz, Gibbons

D'Artagnan Trademarks LLC, ("DT") recently sued the Saul Zaentz Company ("SZ") in the District of New Jersey regarding the trademark ROHAN. In December 2011, DT filed a trademark application for ROHAN in connection with the sale of poultry, namely, duck. The PTO approved the application and SZ opposed its registration when it published for opposition in late March. SZ alleged that it has exclusive rights to certain trademarks (the "Marks") derived from the trilogy of books known as "The Lord of the Rings," by J.R.R. Tolkien. Readers might recall that in the books, "Rohan" is a fictional realm within the fantasy world of the stories. SZ alleges it owns federal trademark registrations for ROHAN, RIDERS OF ROHAN and ROHAN NUTRITION, relating to animal feed and feed supplements for horses, plastic figurines for use with table top hobby battle games, and website services about computer games. SZ has a number of licensees using these marks.

Trademark registrant DT is the affiliate of luxury foods purveyor D'Artagnan. DT sought the mark for poultry, claiming the name ROHAN is a variation on the word "Rouen," a city in the Normandy region of France, and Roeun duck, a kind of duck inhabiting that region. Rohan also was the name of a royal family living near Rouen centuries ago.

The complaint seeks declaratory judgment that DT does not infringe the Marks, and that DT's use of the mark ROHAN in connection with the sale of poultry does not constitute false designation of origin or unfair competition. DT's complaint alleges that SZ's opposition sets forth that DT's mark is likely to confuse consumers into believing that the DT ducks are sold by SZ, or that DT is affiliated with SZ. In early September, presumably following a discussion between the parties about a possible license to the name, SZ's counsel sent an email response indicating that SZ was not interested in doing so, and requesting that TD "cease use" of the ROHAN trademark.

The next move is SZ's, and may include a motion to dismiss the declaratory judgment action under Rule 12 of the Federal Rules of Civil Procedure. Specifically, SZ could assert that the Court lacks jurisdiction because there is no actual case or controversy, i.e., neither the opposition to the trademark application nor the cease and desist letter constitutes a justiciable action that vests the Court with Article III jurisdiction. As practitioners know, however, doing so would require a fact intensive inquiry. Regardless of the outcome, DT's decision to file suit in District Court highlights the importance of considering how an aggressive applicant might respond to an opposition to registration filed with the PTO, including the possibility that the applicant will resort to litigation.



Dengler R 121x160pxRalph A. Dengler, Counsel
Gibbons P.C., One Gateway Center, Newark, NJ 07102-5310
T: 973-596-4825, F: 973-639-6381
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Diaz-L. 121x160pxLuis J. Diaz, Director
Gibbons P.C., One Gateway Center, Newark, NJ 07102-5310
T: 973-596-4771, F: 973-639-6368
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