Wednesday, September 6, 2017
Last week news broke that Hasbro, manufacturer of the Transformers toys, sued DC Comics for trademark infringement. The trademark at issue: Bumblebee. Both companies created a character and released a toy bearing the name Bumblebee. For Hasbro, it’s a car that transforms into a robot; for DC, it’s a character who created a suit granting her super strength and durability, and the ability to fly, shrink, and use sonic disruptors.
In its complaint, Hasbro states it has used the Bumblebee trademark in connection with toys since as early as October 3, 1983. This also is the date it gave when registering its Bumblebee trademark with the U.S. Patent and Trademark Office in 2015. DC’s Bumblebee character, however, was first introduced in 1978 in Teen Titans #48 (or Teen Titans #45 in 1976, when her non-Bumblebee character, Karen Beecher, was introduced). However, it does not appear DC ever created a Bumblebee toy until recently. In its complaint, Hasbro alleges DC began using the “spurious” Bumblebee trademark in connection with its Superhero Girls line of toys, which it launched in 2015.
|Did I finally purchase the Bumblebee doll my |
daughter wanted after this lawsuit was filed? Yes, yes I did.
When discussing this case, it’s important to keep in mind the differences between copyright law and trademark law. Copyright law protects the way an idea is expressed through art, writing, film, music, etc. Trademark law protects the identifying marks of providers of goods and services. Additionally, trademark registrations are broken down in to multiple categories, and it is possible for two similarly-named trademarks to co-exist at the same time if they are in separate and unrelated categories. While the two characters can exist simultaneously with the same name under copyright law, provided they are not copies of each other, it can become a problem when the character names are both used in relation to the same category, in this case toys.
Given Hasbro has been manufacturing Bumblebee toys since 1983, it’s surprising they never attempted to register a trademark for the name until 2005. In reviewing the online trademark records, Hasbro was prevented from registering the trademark at that time because another company was attempting to register a trademark using Bumblebee in the same toys category and a few others. Even though the other company’s trademark ultimately did not register, Hasbro did not attempt to register the Bumblebee name again until 2015. This time it was successful, and the trademark was officially registered in December.
Since these characters have co-existed for decades, what has prompted this lawsuit now? A few things jump out. First, Hasbro finally registered and received a federal trademark registration for Bumblebee in the toys category in 2015. With a federal trademark registration secured, it has stronger trademark rights that it can enforce, along with a requirement to do so. Second, DC did not manufacture a Bumblebee toy until 2015. The two companies never had a competing toy on the market bearing the same name until recently. Third, a new film starring Bumblebee is coming out next year, which is probably why Hasbro registered the trademark since they’ll be manufacturing tie-in toys, and fourth, DC’s Superhero Girl toys are manufactured by Mattel. When you’re a large company like Hasbro, it’s unlikely you’d initiate a lawsuit solely to stick it to a competitor, but it doesn’t hurt.
I’m a little surprised this actually ended up in court. Most likely Hasbro filed the lawsuit to put pressure on DC during negotiations – to let them know Hasbro means business. In trademark infringement lawsuits, the test is likelihood of confusion. It’s hard to believe a likelihood of confusion could be found between these two very different toys, but the way the system is set up favors Hasbro because they have a registered trademark. Ultimately, I imagine this case will settle before trial with DC making some minor tweaks to the packaging of their Bumblebee figures, such as a slight renaming like calling it DC Comics’ Bumblebee.