IP Law Daily, TRADEMARK—TTAB: Opposition by owner of The Lord of the Rings marks sustained against FRO-DOUGH mark, (Apr 16, 2025)

By Patricia K. Ruiz, J.D.

The TTAB found the FRODO mark enjoys a high level of public recognition, such that this factor weighs in favor of a finding of likelihood of confusion.

The Trademark Trial and Appeals Board (TTAB) sustained the objection of the owner of merchandising rights for all trademarks, products, and services derived from or related to The Lord of the Rings trilogy on the ground of likelihood of confusion. The TTAB’s decision rested largely on the success of the trilogy’s novels and films (Saul Zaentz Co. v. Fro-Dough, LLC, No. 91249222 (T.T.A.B. Apr. 15, 2025)).

Opposition to registration. Middle-Earth Enterprises, LLC, (MEE) is the successor-in-interest to The Saul Zaentz Company (collectively, Opposer) and the owner of the exclusive merchandising rights for all trademarks, products, and services derived from or related to J.R.R. Tolkien’s novels The Fellowship of the Ring, The Two Towers, and The Return of the King (TheLord of the Rings, collectively). The Lord of the Rings, together with its prequel, The Hobbit, (Tolkien Works, collectively) have been extremely commercially successful, with more than 150 million copies of The Lord of the Rings novels sold worldwide since their first publication in the 1950s.

Fro-Dough, LLC, (Applicant) seeks registration on the Principal Register of the mark FRO-DOUGH for “Self-serve frozen yogurt shop services,” in International Class 35 and “Doughnut shops in the nature of a restaurant,” in International Class 43. Opposer alleges that: (1) it owns various trademarks derived from the names of fictitious characters, places, and things described in the Tolkien Works, including the marks FRODO and FRODO-formative marks for various goods and services, including FRODO’S PIZZA (PIZZA disclaimed) for “restaurant services”; (2) Opposer is the prior user of the FRODO and FRODO-formative marks; and (3) Applicant’s use of the FRO-DOUGH mark is likely to cause confusion with Opposer’s previously used and registered FRODO and FRODO-formative marks under §2(d) of the Trademark Act. Opposer also alleged that Applicant did not have and has never had the requisite bona fide intent to use its FRO-DOUGH mark, rendering the application void ab initio under §1(b) of the Trademark Act. Finally, Opposer alleged that use by Applicant of its mark is likely to dilute Opposer’s FRODO and FRODO-formative marks under §43(c) of the Trademark Act.

Likelihood of confusion. The TTAB found that Applicant’s mark is likely to cause confusion under §2(d) of the Trademark Act and sustained the opposition. The TTAB did not feed to reach Opposer’s other pleaded claims. To prevail on a §2(d) claim, Opposer must establish priority and likelihood of confusion. Because Opposer’s registration is of record and there is no pending counterclaim to cancel it, priority is not an issue with respect to the mark and the services covering it. Turning to likelihood of confusion, the TTAB explained that two key considerations are the similarities between the marks and the similarities between the goods and services. Opposer’s evidence and arguments focus heavily on the issue of commercial strength, while the Applicant focuses on the dissimilarity of the marks, contending Opposer’s fame is irrelevant to the comparison of the marks themselves.

DuPont factors. As to the similarity or dissimilarity and nature of the parties’ services, Opposer’s registration identifies “restaurant services,” whereas the application identifies “Doughnut shops in the nature of a restaurant” and “Self-serve frozen yogurt shop services.” The TTAB found that the Opposer’s identification is broad enough to encompass both of Applicant’s more narrowly identified services. Because neither party’s identification contains any limitations on trade channels or classes of consumers, the TTAB presumed that the legally identical services travel in the same channels of trade to the same classes of consumers.

As to the strength or weakness of Opposer’s mark, the TTAB looked to the nature of the mark itself and its commercial strength based on its recognition in the marketplace. The record shows the term FRODO is a coined term, created by J.R.R. Tolkien and that it has no meaning other than that ascribed to it as the name of the character in The Lord of the Rings trilogy and is arbitrary when considered for restaurant services. Thus, the TTAB found the mark to be conceptually strong for restaurant services.

As to commercial strength, the TTAB looked to the wide popularity of the Lord of the Rings books and movies, as well as the popularity of Frodo Baggins, including the licensing of the character to third parties. The TTAB found the FRODO mark enjoys a high level of public recognition, such that this factor weighs in favor of a finding of likelihood of confusion. The TTAB further determined that the marks are very similar, given the commercial success of The Lord of the Rings novels and movies, all of which feature Frodo Baggins, there is likely to be a significant number of consumers who understand Applicant’s mark to be a ply on the name of Opposer’s character, in which case, the marks will have the same connotation and commercial impressions. The TTAB found the remaining DuPont factors to be neutral.

The Case is Opposition No. 91249222.

Judge: Heasley, D.

Attorneys: Whitney E. Peterson (Middle-Earth Enterprises, LLC) for Saul Zaentz Co. and Middle-Earth Enterprises, LLC. Todd Wengrovsky (Law Offices of Todd Wengrovsky PLLC) for Fro-Dough, LLC.

Companies: Saul Zaentz Co.; Middle-Earth Enterprises, LLC; Fro-Dough, LLC

Cases: Trademark USPTO GCNNews