Star Wars toys ‐ designs and trademarks

Since 1977, hundreds of millions of Star Wars toys have been sold. But, why is it that, with the longest‐term design registration lasting just 25 years (i.e. expiring in 2002), Hasbro (Star Wars’ licensee) continues to retained its monopoly over Star Wars toys?

LucasFilm (the owner of Star Wars) did something tricksy and characteristically futuristic for its time: They set off on an intellectual property relay race ‐ passing the batten from designs to trademarks. Whereas, designs live between 10 and 25 years, trademarks can last forever. And, if you play a good game of tag, your rights may never die.

This is how they did it … without ever filing a toy‐related patent:

LucasFilm trademark registered the name STAR WARS and design registered Star Wars:

• figurines;
• vehicles; and
• weapons (all in class 21).

The trademark registration secured a monopoly over use of the mark STAR WARS for toys, while the designs registrations prevented others from making toys that looked "substantially similar" to the registered designs. And, who would be happy with an E3PO in their Christmas stocking?

Kenner, the original maker of Star Wars toys, even designed its own "supplementary" toys (that never featured in the Star Wars films) and registered designs for them. After mixing these Kenner toys in with the authentic Star Wars range of toys, they have generally become accepted as original Star Wars merchandise.

Next, LucasFilm filed trademarks for each of the characters' names to ensure that no‐one else could adopt "confusingly similar" names.

After a short time, each character became recognisable and, after 10 years, they enjoyed a massive reputation ‐ a reputation large enough to make each character sufficiently distinctive to became trademark registrable. So, LucasFilm filed trademarks for each character's 3D shape (in class 28). Once registered, the trademarks prevented others from making a toy that was "confusingly similar" to the trademarked registered character shapes. Effectively, LucasFilm substituted design protection with "broader" trademark protection.

With trademark registrations secured and renewable for periods of 10 years in perpetuity, it is likely that LucasFilm will continue receiving royalties even when your great grandchild breaks his piggy bank to buy his very own Darth Vader figurine. Now, that’s a proper business!