District court declines to dismiss trademark infringement and unfair competition claims related to defendants’ mobile game “Sabacc – The High Stakes Card Game,” finding Lucasfilm adequately pled its use of the Sabacc mark in commerce prior to defendants’ trademark registration date.

Lucasfilm Ltd. LLC, the production company best known for creating the Star Wars franchise, sued Ren Ventures Ltd. and Sabacc Creative Industries Ltd. claiming that defendants’ mobile game app, “Sabacc – The High Stakes Card Game,” infringes on plaintiffs’ Sabacc mark and other trademarks owned by plaintiffs. At the hearing on the motion to dismiss, defendants explained that they only sought to dismiss claims that specifically pertain to the Sabacc mark, and did not challenge claims based on plaintiffs’ other trademarks.

The Sabacc card game was included in a 1980 novelization of “Star Wars V: The Empire Strikes Back,” and has become part of the Star Wars lore, notably because the character Han Solo won his spaceship, the Millennium Falcon, by beating another character in a game of Sabacc.

Defendants promote and distribute “Sabacc – The High Stakes Card Game” through Apple’s App Store, on a page that references well-known events, places and phrases from the Star Wars canon, such as “From a Cantina far, far away to your mobile device,” “Become a Cloud City legend,” and “Go bust? Don’t worry, we won’t take your ship!” The mobile app also imitates the appearance and rules of the Sabacc game as it appears in plaintiffs’ works. The U.S. Patent and Trademark Office granted defendants a federal registration for the Sabacc mark in August 2016 based on their representation that they have ownership rights in the mark.

Plaintiffs argue that the mobile game intentionally capitalizes on the good will of the Sabacc mark and the Star Warsfranchise, and also seek to cancel defendants’ trademark registration for the mark. In defending against defendants’ motion to dismiss, plaintiffs must adequately allege that they used the Sabacc mark in commerce prior to the date of defendants’ first use — also a prerequisite for plaintiffs’ cancellation claim — and that their use in commerce was continuous from the date of first use.

Defendants first argued that fictional goods, like the Sabacc game “do not exist and thus cannot be placed in commerce,” and therefore the name of the good is “not a source identifier for a product that can be distinguished in commerce.” The court rejected this argument, reasoning that plaintiffs do not claim ownership of the mark as a source identifier, but that the mark “functions as a mark for Lucasfilm and the Star Wars franchise, which are real entities that exist in commerce.”

Defendants also argued that fictional elements of expressive works cannot function as trademarks when those elements symbolize plaintiff or its product to the public. The court rejected this argument as well, citing a number of cases that extended trademark protection to fictional elements, such as “the fictional restaurant ‘The Krusty Krab’ from the ‘SpongeBob Square Pants’ television series.” In so holding, the court reasoned that Sabacc “has appeared in Star Warsnovels, games, television episodes, and a visual dictionary,” and “as a consequence signifies Lucasfilm and the Star Wars franchise in the minds of the consuming public.”

Defendants also challenged plaintiffs’ continuous use of the mark, arguing that there were “gaps in time between the various uses of the ‘Sabacc’ mark.” The court held that the determination of whether the use of a mark is continuing was a question of fact, and reasoned that marks may be in continuous use if the associated products remain popular and continue “to circulate in commerce years after their unveiling.”