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.
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.
