'Empire' vs. 'Boardwalk Empire': Fox Gets HBO's Consent in Writing

As Fox seeks to register a trademark, both companies agree to take necessary steps to minimize any confusion.
Chuck Hodes/FOX

Imagine the shock for Twentieth Century Fox when an examiner at the U.S. Trademark Office last March refused registration on "Empire," the title of its hit show about a feuding hip-hop family.

The reason given was that it was "confusingly similar" to HBO's "Boardwalk Empire." The examiner shrugged off Fox's argument that "Empire" had been diluted with regards to television shows and there was no good reason why it should not be afforded a broad scope of protection.

Fox is pushing the Trademark Office to reconsider, and so on Monday, it presented new evidence why it should be afforded the rights that come with having trademark registration on the Lee Daniels-created show starring Terrence Howard.

Specifically, Fox presented a consent agreement between it and HBO. The document was signed by both entertainment giants on August 14.

HBO won't let its series about prohibition era gangsters get in the way of Fox's "Empire." The pay-TV network has agreed to let Fox register and use the mark for "pre-recorded DVDs," "downloadable television shows" and "entertainment services in the nature of a television series."

Further, both companies state in the agreement they "believe there is no likelihood of confusion caused by the contemporaneous use and registration of the HBO mark BOARDWALK EMPIRE for HBO's goods and services and TCFFC's use and registration of the EMPIRE mark for TCFFC's goods and services. Although the parties believe that confusion is unlikely between their respective goods and services, they will nevertheless cooperate to take steps necessary to minimize the likelihood of customer confusion arising in the future should the need arise."

Whether or not that convinces the trademark examiner will be determined later.

Notably, less than three weeks after Fox was initially refused registration on "Empire," the Rupert Murdoch company filed a lawsuit against a record label doing business as Empire Distribution, which has worked with hip-hop stars like Kendrick Lamar, Snoop Dogg and Sage the Gemini. The lawsuit was a preemptive action against a company accusing Fox of infringing and tarnishing a trademark. The defendant then filed counterclaims and is seeking an injunction on the title of the Fox drama. The case is still pending. (There have been other lawsuits filed recently over Empire too, but those haven't met THR standards for coverage.)