Tuesday, September 27, 2022

Trademarking a She-Hulk

             It’s a rare occasion when a MCU movie or TV show covers something that I feel like commenting on here, but a recent She-Hulk episode covered an interesting area of trademark law, and I think it warrants a bit of my commentary, particularly since I have encountered this situation before.

            In episode 5, “Mean, Green, and Straight Poured in to These Jeans”, Jen Walters, aka She-Hulk, finds herself in a trademark lawsuit. Her nemesis, Titania, has obtained a trademark for the name SheHulk and is using it to promote a line of beauty products. Titania has sued Walters to prevent her continued use of the She-Hulk name. Eventually, Walters is able to prevail in the lawsuit because she had embraced the She-Hulk name, and was identified by it, before the trademark lawsuit.

            Overall, the story reached the correct outcome, but I still have a few quibbles. Assuming this is a federal trademark, it didn’t feel like enough time had passed for Titania to have obtained a trademark registration, or even an approved application that would be enforceable. I’m willing to let that pass because I have no idea how much time has passed in continuity from the emergence of She-Hulk to the events in the current episode. Additionally, it is far more likely this would have been resolved at the trademark office than in a court, but that wouldn’t make compelling TV.

My biggest gripe is that Titania’s trademark application likely never would have gotten that far. In the United States, someone cannot register the name of a living person as a trademark without their consent. The relevant statute states:

             No trademark by which the goods of the applicant may be distinguished from the goods of                     others shall be refused registration on the principal register on account of its nature unless it—             

 (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent….[1]

 Further, this has been extended to also protect shortened names, pseudonyms, stage names, and nicknames.[2]

It is highly unlikely that Titania would have been able to obtain an approved trademark registration over the She-Hulk name. It is common practice for trademark examiners to conduct a basic search, and such a search would have shown the existence of She-Hulk, unless Titania had registered the trademark before there was a She-Hulk. If the examiner discovered someone identifying as She-Hulk, the application would have been rejected, unless the applicant, in this case Titania, could provide evidence that she had the right to seek registration.

Admittedly, sometimes an examiner might mess up and allow a trademark to register that shouldn’t, but I find it hard to believe it would occur in this instance. I have recently encountered something similar, but in a different jurisdiction. An attempt to register a character’s name as a trademark was initially refused because the examiner believed the character to be an actual person.

Interestingly, once a name has been registered as a trademark, then it can be sold and/or transferred, and it is entirely possible the person can no longer use their name as a trademark. This is fairly common in the fashion industry where a designer will launch a clothing line under their name, sell the company, and once they’ve left the company, try to launch a new brand. If they launch a new brand, they cannot use their name as the name of their new product line. For examples, look to Halston, Christian LeCroix, and John Galliano.

As stated above, the eventual outcome on the show was correct. Titania could not usurp the She-Hulk name without her consent, and, evidence of She-Hulk being identified as a person before Titania’s trademark would have been necessary to prevail. Nevertheless, this still proves the importance of maintaining control over one’s own trademarks, and if you are conducting commerce using your name, it might make sense to seek a trademark, and if you sell your company, be certain what intellectual property assets are being transferred.

[1] 15 U.S.C. Sec. 1052.

[2] See Trademark Manual of Examining Procedure,  Sec. 1206.1.