The second season of HBO’s “Westworld” premieres April 22nd. The first season followed the employees and robots that create an immersive “western” experience for wealthy guests. HBO does not own any trademarks for the series. Scottsdale, an Arizona city famous for being a destination for the wealthy, owns the only registered WESTWORLD trademark.
City of Scottsdale’s WestWorld:
Currently, the City of Scottsdale has only one live, registered trademark for WESTWORLD (U.S. Reg.. 3226400). The registration has been renewed and the next maintenance documents are not due until 2027. The mark fits into:
- International Class 41 for rental of stadium facilities and animal exhibitions, and
- International Class 43 for providing facilities for exhibitions, arena services, namely, providing facilities for equestrian exhibitions and providing banquet social function facilities for special occasions.
In 2005, the City of Scottsdale let their second registration for WESTWORLD abandon. U.S. Reg. No. 2172383 was in International Classes 35, 39, 41, and 42 for providing business meeting facilities, parking, entertainment services (including sets for film production), restaurant services, and campground facilities. At the turn of the century, Scottsdale was becoming more suburban. The Loop 101 Pima freeway was completed, Rawhide was in the process of moving to the Gila River Reservation, and Vegas-style nightlife was developing in Old Town. Scottsdale’s Westworld changed from a western destination as the city has changed. Even Rawhide, a western theme park built in the 1970s, is more popular as a destination for EDM festivals than cowboy reenactments. Today, the Westworld facilities are used for events like the annual Barrett Jackson Car Auction and Scottsdale Polo Championship.
Warner Brothers Applications:
On March 16, 2018, Warner Brothers Entertainment, Inc, filed 9 applications for WESTWORLD. Even though Metro-Goldwyn Mayer produced the the movie Westworld (1973), sequel Futureworld (1976), and television series, Beyond Westworld (1980), Warner Brothers has distributed the DVDs since the 2000s. While HBO is a distributor of the 2016 television series, Warner Brothers is the producer and owner of the show’s core intellectual property.
MGM could not have filed for a WESTWORLD trademark based on the 1973 movie. Under the Lanham Act, a title of a single work cannot be trademarked (15 U.S.C. §1051-1052). For instance, in Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156 (Fed. Cir. 2002) the title Crossword Companion was found to be descriptive of a book full of crosswords and did not function as a trademark. The mark must be a source indicator and the Court found consumers would not recognize “crossword companion” as identifying that specific book, just identifying a book about crosswords. Harry Potter is trademarked because it is a series of books, while Hamilton An American Musical is trademarked because it has acquired distinctiveness. A physical book and the audiobook version do not qualify as a series because the content does not significantly change. Television series are not subject to this rejection because it is presumed each episode will have different content.
Even after the sequel and short-lived television show, MGM did not file for a trademark. This is probably because of financial constraints and little merchandising. Today, many movies and shows take advantage of merchandising deals for clothes, toys, and home goods – even if the movies are only for adults. It is surprising that Warner Brothers did not file when the show first premiered in 2016, especially because HBO sells a lot of “Game of Thrones” merchandise – ranging from salt shakers to Europe trips. Warner Brothers probably filed for the trademarks 2 years after the premiere because WestWorld was not expected to be as popular as it has so was probably not expected to have as many merchandising opportunities as Game of Thrones (Variety).
All of the WESTWORLD marks filed by WB were filed on March 16, 2018. The applications are intent-to-use, so the products are not currently being sold across state lines. The marks are for over 144 different goods.
The trademark’s description of goods includes expected goods like video games, posters, and electronic books. Warner Brothers has filed for alcoholic beverages, except for beer. Beer festivals and wine tastings are held at Scottsdale’s Westworld, but it is doubtful a court would find branded wine to be confusing with a beer festival. Many television shows, like Downton Abbey, Saturday Night Live, and Game of Thrones license their trademarks for use by wineries. Another common merchandise deal besides alcohol for television shows are slot machines. Many casinos have turned to slot machines that have tie-ins with television shows, even though this increases the overhead as they have to lease the machines or at least pay a royalty (LA Times). Warner Brothers already has licensed with Aristocrat Technologies for WestWorld slot machines even though they do not own a trademark registration for the mark (Video).
Warner Brothers has also filed for some weird goods under the WESTWORLD mark like:
- Bathtub toys
- Telephone pagers
- Meat tenderizers
- Online marketplaces for sellers and buyers of goods
Interestingly, the trademarks filed by Warner Brothers do not include any goods related to theme parks or exhibitions. This may be because they are trying to stay clear of Scottsdale’s mark. At New York Comic Con, HBO hosted a cocktail party where people were employed to act as robots. At South by Southwest, HBO created a temporary western town populated by people pretending to be robots. Warner Brothers has applied for “marketing, advertising and promotion services” which probably includes these theme park experiences because they really are just publicity stunts.
In August 4, 1995, Westworld Lighting, LLC (California) applied for the design mark WESTWORLD LIGHTING in International Class 11 for lamps and electric lighting fixtures. U.S. Reg. No. 74716121 was opposed by Westwood Lighting, Inc. (Ohio). The Ohio lighting company won on default at the Trademark Trial and Appeals Board because Westworld Lighting did not submit an answer to the court (No. 91102363).
In October 28, 2005, Virginia Living Histories, Inc. (Missouri) applied for the mark WEST WORLD in International Class 41 for amusement parks. U.S. Serial No. 78742379 was abandoned on July 12, 2007, because the owner never responded to an office action rejecting the application for likelihood of confusion. The Examining Attorney did not cite the Scottsdale mark, but instead U.S. Reg. No. 3143467. WILD WEST WORLD has since abandoned, but it was a mark for amusement parks owned by Restoration Farms, LLC (Kansas). The theme park in Park City, Kansas was opened May 5, 2007 and closed July 9th that same year due to bankruptcy.
RoboMoo Technology Co., Ltd. applied for the mark WESTWORLD in International Class 9 for virtual reality technology, including augmented reality shooting game on March 1, 2018 (U.S. Serial No. 87815652). They have also filed in International Class 10 for artificial eyes, jaws, limbs and sex toys (U.S. Serial No. 87637317). Based on RoboMoo’s submitted specimen it appears they are selling sex dolls instead of VR technology. See specimens below.
It is possible that WB filed for WESTWORLD trademarks in response to RoboMoo’s application. Warner Brothers already makes a WestWorld mobile game and is likely to make a VR game in the future so does not want someone else to register in the gaming industry. Also, Time Warner probably is not ready to get in the sex doll business even though they own HBO Late Night.
The City of Scottsdale has owned a trademark for WESTWORLD for decades and the exhibition facilities still host horse shows, if a little more posh than when the city first filed for the trademarks. Their trademark is not likely to be confusing with Warner Brother’s applications because they have filed in different classes for different goods. Also, Warner Brothers show has probably acquired distinctiveness since it is HBO’s most popular show after Game of Thrones. However, an examining attorney has not been assigned to the applications so it will be interesting to see if the City brings an opposition to the studio’s applications.
Some predictions for future WestWorld merchandise can be based on Warner Brothers’ applications, such as wine and books. Luckily, Warner Brothers has not filed for robots or theme park, so we can sleep well that HBO is not actually developing a “Westworld” based on the show beyond publicity stunts with actors. However, it is worrying that Warner Brothers has filed to trademark WESTWORLD for soymilk. Not sure I want to be reminded of killer robots when I eat my cereal.
Kate Montgomery is a 3L at Arizona State University’s Sandra Day O’Connor College of Law. Kate previously attended the University of Arizona where she earned her undergraduate degree in Spanish and Philosophy, Politics, Economics, and Law (PPEL). When Kate is not studying or working, she enjoys trivia nights, making costumes, and visiting with friends and family.