California Intellectual Property Blog


The Hobbit: An Unexpected Journey into Trademark Infringement

Smeagol - Lord of the Rings Trademark Infringement

You would be hard-pressed to find someone who doesn’t immediately recognize the intellectual property from The Lord of the Rings film series. Based on the writings of J.R.R. Tolkien, these movies created one of the most successful franchises in history. A trademark application for the word “Smeagol,” however, may take the battle for Middle Earth to the courtroom.

Notice of Opposition Filed for ‘Smeagol’

On April 27, The Saul Zaentz Company filed a Notice of Opposition against Hu Congyan regarding an application for the trademark “Smeagol.” Prior to his death, Paul Zaentz maintained ownership over merchandising, film and stage rights to both The Hobbit and The Lord of the Rings. The company he founded now owns his intellectual property.

Hu Congyan filed a trademark application in September 2020. If approved, Congyan would garner rights over the term “Smeagol” when used on various forms of apparel. As any fan of the Middle Earth series knows, however, Smeagol is an iconic character from the book and film franchise.

Of course, use of a trademark by one company doesn’t necessarily restrict others from using a similar term. Could “Smeagol” be used by both companies independently? Considering the continued popularity of the series, this outcome seems unlikely.

Likelihood of Confusion with ‘The Lord of the Rings’

While two separate companies can at times use the same trademarks, there are circumstances when this would lead to infringement issues. The major issue is whether a likelihood of confusion would exist through another company’s use of a trademarked property. This is exactly what The Saul Zaentz Company asserts will happen if Congyan’s request is granted.

The Notice of Opposition states that the trademarks are identical and…

“so related to the goods and services sold under opposer’s mark that the public is likely to be confused, to be deceived and to assume erroneously that applicant’s services are those of opposer.” 

Of course, a likelihood of confusion often only exists when companies offer similar products or services. In the filing at the Trademark Trial and Appeal Board (TTAB), The Saul Zaentz Company lists a variety of their apparel products that feature the term “Smeagol.” They assert that common law trademark rights exist because of their continued use of the character’s name.

Even if the two companies didn’t offer similar products, though, it’s likely that the owners of the popular film franchise would still have a strong case. As stated in the opposition notice, “likelihood of confusion is enhanced by the extraordinary fame of opposer’s mark.” It will be difficult for the applicant to prove their use of ‘Smeagol’ would not result in trademark dilution.

What Comes Next?

Assuming both parties stick to the timeline laid out by the Trademark Trial and Appeal Board, Hu Congyan has until June 6 to file an answer to the opposition notice. If this deadline is missed, the TTAB will find in favor of The Saul Zaentz Company. If Hu Congyan chooses to fight this battle, though, the current trial schedule could carry the case into November 2022.

This is hardly the first time the intellectual property of Middle Earth has led to legal battles. A billion dollar franchise certainly has plenty of resources to fight this fight, but considering the nearly instantaneous recognition of “Smeagol” by the public, this case may go no further than the opposition. We’ll just have to wait to see if an answer is filed and what the TTAB decides.

In the end, there may be only one Smeagol to rule them all.


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