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TV writers in the US are responsible for producing scripts for some of TV’s best acclaimed programs; including in recent times, content for streaming services like Netflix, Stan and Amazon Prime. Think Orange Is The New Black, After Life, Dear White People and The Marvelous Mrs. Maisel. The list goes on.

Given the massive viewer base programs like these attract (and in some cases, a cult-like following), production companies unsurprisingly attempt to capitalise on a show’s success by registering the TV show’s title as a trade mark; allowing for the sale of show-related merchandise and paraphernalia.

A new TV show called Space Force recently launched on Netflix, is an interesting case in point. Starring household names like Steve Carrell, John Malkovich and Lisa Kudrow, Netflix swiftly moved to obtain trade mark protection for the words SPACE FORCE around the world; including in the United States, Europe, Mexico and Australia.

Netflix registered SPACE FORCE in the United States on January 19 2019 in class 41 for entertainment services - in the nature of an ongoing dramatic television series and for online retail for a range of merchandise products in class 35. 

In the same month, Netflix also registered SPACE FORCE in Australia in class 41 for entertainment services in the nature of a comedic drama television series and has a pending trade mark application for SPACE FORCE in classes 16, 25, 28 in relation to posters, greeting cards, clothing, toys and action figures (amongst other merchandise goods).

Following these registrations, in December 2019 President Donald Trump launched a new addition to the United States Armed Forces (USAF); the new department known in full as The United States Space Force (USSF), or simply ‘Space Force’. 

Unfortunately for Trump and the USAF, prior to the announcement of Space Force Netflix had already secured trade mark rights in the United States for SPACE FORCE in relation to goods and services in classes 35 and 41. 

Like Australia, the Trade Mark Office in the US usually grants trade marks based on a “first to use” system, meaning that the first person or trader to use the trade mark in relation to the goods and/or services is usually the rightful owner of the trade mark.

On this basis, Netflix’s existing trade mark registration effectively blocks the United States Armed Forces from obtaining protection for SPACE FORCE in relation to classes 35 and 41. While the USAF’sSpace Force is more likely to be interested in launching actual rockets as opposed to a dramatic television series (thereby removing the likelihood of a conflict over the registered name), the registration may cause issues for the Armed Forces in retailing branded goods - given the trade mark protection Netflix has for in class 35 relating to online-retail services. This serves as a pertinent reminder for those seeking to file new trade marks; act quickly to secure your trade mark of choice!

Obtaining trade mark protection in Australia has become increasingly competitive, and if you (or your client) have a trade mark in mind, we recommend immediate action (like Netflix) to secure rights for that name or logo as soon as possible. Another party’s earlier-filed trade mark application could create a major hindrance even if they operate in a different space (pun intended).

If you would like assistance vetting potential trade marks and/or filing a new trade mark in Australia or abroad, please get in touch with a member of our Trade Mark team in Melbourne, Sydney, Brisbane or Perth.

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