Authored By Stephen Di Nunzio, Esq. & Samantha Pendley
Dr. Carl Sagan, a founder of Druyan-Sagan Associates Inc. (“DSA”), was a world renown cosmologist, astrophysicist, and astronomer. DSA has been marketing, licensing, and selling works by the late Dr. Carl Sagan for the past forty (40) years. DSA began protecting Dr. Carl Sagan’s intellectual property through Trademarks with the United States Patent and Trademark Office (“USPTO”) as far back as 2016. His current Trademarks include COSMOS STUDIOS®, CARL SAGAN®, and SAGAN®. SaganWorks, Inc. (“SaganWorks”) is a software company founded in 2017 that develops interactive virtual experiences. SaganWorks filed for a Trademark at the USPTO in October 2019 for SAGANWORKS™. SaganWorks states that SAGAN is an acronym for “Spatially Accessible, Gallery of Archived Knowledge”.
During the prosecution of the SAGANWORKS Trademark Application, the assigned USPTO’s Examining Attorney did not issue any Refusals that claimed a Likelihood of Confusion with previously registered Trademarks. However, when an Application enters its official thirty (30) day Publication Period, third parties are entitled to file Opposition Proceedings if they believe that they will be harmed by the registration of the Mark. DSA’s intellectual property counsel filed a Notice of Opposition against SAGANWORKS in April 2021. DSA alleged a Likelihood of Confusion, Trademark Dilution, and Misrepresentation of Source. The pleadings continued for fourteen months, but were ultimately suspended in July 2022 due to the Lawsuit filed by DSA in the Eastern District of Michigan on June 28, 2022.
DSA further alleged Trademark Infringement, Trademark Dilution and Violation of Michigan’s Consumer Protection Act. SaganWorks filed a Motion to Dismiss the Trademark Dilution Count, arguing that the SAGAN Marks were not famous enough to allow a claim of Trademark Dilution.
A Mark is considered famous when it is “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” The Court determined that DSA’s evidence going as far back as 1977 and outside of the United States to at least sixty (60) different countries was sufficient to survive the Motion to Dismiss. The Court ultimately denied SaganWorks’ Motion to Dismiss and SaganWorks must file a full Answer to DSA’s Complaint.
It seems the CARL SAGAN® and SAGAN® Trademarks are striving to be a shooting star joining the ranks of other famous marks, such as Nike, Pepsi, Audi, and Victoria’s Secret, which were able to use their fame to establish brand dominance in the United States. While it is historically difficult to achieve fame in a trademark context, a scientist of Dr. Sagan’s caliber may just land among the stars.