405 MARKET STREET wonnion « ronasri tar SAN FRANCISCO pier CALIFORNIA 91105-2682 eee MORRISON | FOERSTER TELEPHONE: 415.5470 xe FACSIMILE $15:2687522 Www Noro.coM BEING, snawohat, Nowe kon Seplember 201 Writer's Direct Contact 415.268.6810 RTarlton@mofo.com Via Overnight Delivery Mr. Mare BE, Hankin Hankin Patent Law, APC 11414 Thurston Circle Los Angeles, CA 90049-2435 Re: U.S. Trademark Application Serial No. 85/064,487 for ADDROID Dear Mr. Hankin: Morrison & Foerster LLP represents Lucasfilm Ltd. and Lucasfilm Entertainment Company Lid, (collectively, “Lucasfilm”) in connection with various intellectual property matters. We are writing to you as counsel of record for Matt Cooper with respect to the above-referenced trademark application. As you are no doubt aware, Lucasfilm is the exclusive owner of all rights in and to the major motion pictures Star Wars: Episode IV - A New Hope; Star Wars: Episode V - The Empire Strikes Back; Star Wars: Episode VI- Return of the Jedi; Star Wars: Episode I - The Phantom Menace; Star Wars: Episode I - Atack of the Clones; and Star Wars: Episode Ill - Revenge of the Sith (“Star Wars Motion Pictures”), all of which are successful and recognizable films. With these films, Lucasfilm has created an entire imaginary universe complete with many fantastical creatures and characters. One of the more distinctive and important group of characters is the Droids. Given the novel nature of the term DROID and the central role that these characters play in the Lucasfilm universe, you should not find it surprising to learn that Lucasfilm has used various DROID marks extensively in connection with a wide range of goods and services for over thirty years. Moreover, Lucasfilm owns numerous trademark registrations and applications in the United States and around the world for a variety of DROID and DROID-based marks, including USS. Registration Nos. 2,553,167; 2,436,756; 2,643,277; 2,513,110; and 2,684,002 for DROID; U.S. Registration Nos. 1,362,141 and 2,556,269 for DROIDS; U.S. Registration No, 2,428,899 for PIT DROIDS; US Registration No. 2,488,140 for BATTLE DROID; US Registration No. 2,540,863 for DESTROYER DROID; U.S. Application Serial Nos. 77/580,336 and 77/845,682 for DROID; U.S. Application Serial No, 77/681,885 for IDROIDS; and U.S. Application Serial No, 77/741,729 for IDROIDSMANIA (collectively, s£-2890034MORRISON | FOERSTER Mare E. Hankin September 3, 2010 Page Two the “DROID Marks”). U.S. Registration Nos. 2,553,167 and 2,428,899 and U.S. Application Serial Nos. 77/580,336, 77/845,682, 77/681,885, and 77/741,729 all cover computer software. Through widespread use and promotion, Lucasfilm has developed substantial goodwill and recognition for the DROID Marks, which have attained the status of famous marks entitled to the highest degree of protection under federal and state anti-dilution laws. Lucasfilm recently became aware that Mr. Cooper has filed an application with the U.S. Patent & Trademark Office to register the mark ADDROID for online advertisement services, including the placing of advertisements on websites through use of computer software. Not surprisingly, Lucasfilm is concerned about your client’s request to register this mark, as it wholly incorporates our client’s famous DROID mark. Mr. Cooper's use and registration of this ADDROID mark will likely lead to consumer confusion in light of its similarity to, as well as the fame of, Lucasfilm’s DROID Marks. Given Lucasfilm’s use of its DROID Marks on software and other computer-related goods and services, Mr. Cooper's use of the ADDROID mark on related products will cause consumers to believe that your client’s services are licensed, sponsored, or authorized by Lucasfilm and/or associated with the Star Wars Motion Pictures. Moreover, your client’s use of ADDROID will dilute our client’s famous DROID Marks, resulting in their loss of fame and distinctiveness. Lucasfilm therefore objects to Mr. Cooper’s use and registration of the ADDROID mark on the grounds that this mark infringes and dilutes Lucasfilm’s famous DROID Marks. Accordingly, we must insist that Mr. Cooper immediately and permanently (i) abandon U.S. Application Serial No. 85/064,487 for ADDROID, (ii) cease all use and anticipated use of the ADDROID mark, (iii) cease all use and anticipated use of the company name “Addroid” and transition to a company name that does not include the term DROID, (iv) cease all use of the domain name , and (v) refrain from using any mark or domain name in the future that incorporates the term DROID. Although we prefer to resolve this matter amicably, if we do not receive a timely favorable response to this letter, we will have no alternative but to advise our client to take all necessary and appropriate steps to protect its rights, We look forward to receiving written confirmation that your client will comply with these demands within ten (10) days of the date of this letter. sf-2890034MORRISON | FOERSTER Mare E. Hankin September 3, 2010 Page Three This letter is not intended to be a recitation of all of the facts pertaining to this matter or all of Lucasfilm’s possible claims. Accordingly, nothing in this letter should be construed as a waiver of any rights by Lucasfilm, all of which are expressly reserved. ce: Lucasfilm Ltd. Lucasfilm Entertainment Company Ltd. sf-2890034