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.

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

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

Conventions and Contributory Liability

 

I’ve been thinking about the return of comic book conventions. More specifically, I’ve been thinking about contributory infringement. Recently, the second circuit decided a case involving contributory infringement of a trademark at a retail property in New York. Contributory trademark infringement allows a trademark owner to pursue liability against a third party who did not directly infringe the trademark but somehow benefited from the infringement or encouraged it. As most convention attendees know, there is a good amount of unlicensed merchandise being produced and sold at conventions. Whether or not this case could have implications for operators of comic book conventions is a fascinating question. In particular, it is an interesting question to determine whether or not a vendor’s sale of goods or art could lead to contributory infringement on the part of the convention operator.

In the case Omega SA v. 375 Canal LLC[1], the Second Circuit Court of Appeals upheld a jury verdict awarding the manufacturer of Omega watches $1.1 million in damages. The decision focused on a building owner’s willful blindness of the infringing activities taking place at their building, namely repeated sales of counterfeit high-end watches and luxury handbags, and the owner’s failure to reasonably act to stop the infringing activity upon learning of it.

Whenever people talk with me about the legal issues surrounding fan art and publisher enforcement, one of the issues I bring up is how difficult it would be for publishers to monitor for infringing activities at the numerous conventions held across the country. I know of instances where a publisher’s employees have complained about infringing goods being sold at a convention. Typically, when a publisher’s employee complains the vendor is removed or the infringing item is removed. Obviously, the burden on publishers’ employees to enforce their intellectual property could be substantive. However, this decision in 375 Canal, and other similar cases, does present an opportunity for publishers to exert more pressure on convention owners to take steps to monitor and mitigate infringing activity.

In my experience, the typical convention operator handles claims of infringement in two ways. First, they will have exhibitors sign a contract stating the goods they sell do not infringe any 3^rd party’s rights, and the exhibitor will cover the convention operator’s costs if the operator suffers harm due to the vendor’s sales of infringing goods. Second, if someone complains about a particular item or vendor, the operator may remove the vendor from the convention.

The contractual part is a good first step, and recommended, but still leaves the operator exposed because most vendors would not be able to reimburse the operator in the event of a lawsuit. However, the contract is necessary to establish that the operator is taking infringement seriously. As for asking a vendor to leave due to infringement, this policy is a must. If the operator knows the vendor is selling unlicensed or counterfeit goods and does nothing, then they could be liable for contributory trademark infringement.  

As mentioned above, protecting and enforcing trademark rights at conventions around the country (and world) can be difficult for publishers. I’m certain trademark owners would love to force operators to take a harder stance on preventing infringement, and this case opens a slight door to do so. If a convention operator has a history of allowing infringing goods to be sold at their conventions and a history of turning a blind eye to such infringement, then the operator could be found guilty of contributory trademark infringement.

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[1] 984 F.3d 244 (2021).

Trademark FAQs

A while back I did a FAQ on many of the copyright questions I receive. It’s about time to do one on trademarks as well.

Note: This is not a complete list of everything you need to know about trademarks, but a few commonly asked questions I receive. (Updated June 2021)

1) Do I need to register a trademark?

If you think the trademark is vital to your brand or organization, then registering it with the U.S. Patent and Trademark Office (USPTO) makes sense—this is known as a federal trademark. But, only do so if you are using it in interstate commerce and plan on continuously using it. Sales of product in interstate commerce and continued use are requirements to maintaining federal trademark protection. If you are using a trademark without registering it, you have what are known as common law rights, but it can be difficult to establish and protect those rights. Registration with the USPTO is the best way to prove and enforce your rights.

    1) a. Can I register a trademark if I am not yet using it?

Yes, you can file an intent-to-use application. This will preserve your right to use the trademark in connection with your goods. However, there is an additional cost to do so. When you begin using your trademark, you will have to submit a statement of use and additional fee ($100) to convert it to a registration. If you have not begun using your trademark in commerce within 6 months of it being allowed, then you will have to file a extension of time request and pay an additional fee ($125).

2) Can I register a comic book title as a trademark?

Yes, so long as you continue publishing the comic book as an ongoing series under the same title. Again, continued use is key to maintaining a trademark. Because of this requirement, titles of books or one-shots are not eligible for trademark protection.

3) How much does it cost to register a trademark?

It costs between $250-$350 per class of goods/services to file a trademark registration. Depending on how it’s filed, the number of classes of goods/services selected, and if it encounters any issues during the registration process, the costs of registration could increase. If you’re using an attorney or a service to assist you in registering the trademark, those fees will be separate. Once registered, there are additional fees to maintain your trademark registration.

4) Are there other trademark registration options?

You can try and register your trademark in the state in which you reside. It will be cheaper, but only grants you trademark rights in that state.

5) Can’t I just put a ® next to my title?

No, the ® designation is reserved only for trademarks registered with the U.S. Patent and Trademark Office. Unregistered trademarks may be designated with a “TM,” but it does not grant you any special rights.

If you’d like to read more about trademarks, check out my previous post in my Comics Startup 101 series.

Disney Princesses, Cosplay, and Trademark Infringement

            In 2016, Disney sued Characters for Hire, LLC (“CFH”)[1]. CFH’s primary business was having performers dress up like Disney Princesses, Star Wars characters, or Avengers characters and performing at themed birthday party celebrations. When Disney sued, it claimed CFH infringed upon its trademark and copyrights through advertisements, marketing materials, and the actors performing at parties.

            In August 2018, the court ruled in a summary judgment motion that CFH’s use did not infringe upon Disney’s trademarks. In promoting its services, CFH used generic substitutes such as Big Green Guy, The Dark Lord, Smuggler’s Co-Pilot, etc., thereby avoiding confusion with Disney’s trademarks. Another factor the court found to weigh against trademark infringement was that Disney does not offer the services provided by CFH, namely character appearances at private birthday parties, and would be unlikely to do so in the future. The court also found no evidence of actual consumer confusion. However, the court did not rule on the trademark dilution and copyright infringement claims.  The case was voluntarily dismissed by the parties in December 2018.

            This case is fascinating to me for a couple of reasons. First, it tests the boundaries of trademark law. How close is too close for something to be considered a trademark infringement? CFH was essentially in the business of hiring out performers dressed as Disney characters. Evidence submitted in the case, such as disclaimers, contract language, and character descriptions, make it clear CFH knew it was walking a fine line. Personally, I think this case could have easily gone the other way. However, the court weighed the factors that go into evaluating a trademark infringement claim very favorably toward CFH.[2] Second, since the case was not appealed and no further courts have considered it, it is a case other accused infringers can look to for guidance and hopeful relief. If CFH could prevail against Disney in this case, with some of the unfavorable facts stacked against it, then others could as well.  

Finally, I’m intrigued by its application to the ever-growing field of professional cosplay. Well-known and well-regarded cosplayers are often compensated to make appearances at events dressed as characters. This case seems to give them, and event organizers, a bit more leeway to do so without worrying about a lawsuit based on their appearance as a character owned by another corporation.

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[1] Disney Enterprises, Inc. v. Avi Lieberman, 1:16-cv-02340, (S.D.N.Y. 2016).

[2] “[T]he strength of his mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers.” Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.1961)

Plasm v. Plasmer

            I recently ran across an older trademark case that’s worth mentioning. The case is Marvel Comics v. Defiant.[1]

            The case pitted Marvel Comics against a new comic book company founded by former Marvel Editor-in-Chief Jim Shooter. Shooter’s new comic book company, Defiant, was going to launch a new comic book called Plasm. Marvel objected to the title of the new book because they had a Marvel UK comic titled Plasmer. Marvel’s lawyers told Defiant they needed to change the title of the book. They also said that if Defiant provided a list of titles, Marvel would approve one.[2] Defiant provided a list, but they never received a reply from Marvel. So, they went ahead and published the comic with one of the names on the list, Warriors of Plasm.[3]  

            Marvel sued Defiant in an attempt to halt publication of the book by seeking a preliminary injunction. Marvel had filed for a trademark application for Plasmer in the U.K., and its U.S. trademark registration was still pending. Both parties filed arguments in an attempt to have the case dismissed early. Defiant argued the case should be dismissed because Marvel did not have trademark rights in the word Plasmer. The court did an intriguing analysis of what type of pre-sale use can help establish trademark priority, and, using a standard appropriate for evaluating a motion to dismiss, it ultimately concluded Marvel had established enough rights to avoid a motion to dismiss the case.[4] The court also found it inappropriate to grant Marvel’s declaratory judgment due to the pending nature of their trademark application, which would impact Defiant’s liability, and the upcoming trial.[5] Eventually, the court denied Marvel’s preliminary injunction finding there was “little likelihood of confusion between the two.”[6] The case was dismissed shortly thereafter.

The aftermath of the litigation, however, was pronounced. According to Shooter, even though they won, the litigation cost them $300,000.[7] Defiant also lost out on a million dollar toy deal with Mattel because they could not afford to indemnify Mattel against future lawsuits, which Mattel now required because of the Plasmer lawsuit.[8] As a new company, Defiant had limited resources, and the lawsuit took a toll.[9] After only starting publishing in 1992, Defiant closed down in 1995.

Marvel’s U.S. trademark application for Plasmer was never issued.

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[1] Marvel Comics Limited v. Defiant, a division of Enlightened Entertainment Ltd., 837 F.Supp. 546 (1993).

[2] https://www.cbr.com/jim-shooter-interview-part-2/

[3] https://www.cbr.com/jim-shooter-interview-part-2/

[4] Marvel Comics Limited v. Defiant, a division of Enlightened Entertainment Ltd., 837 F.Supp. 546, 549 (1993).

[5] Marvel Comics Limited v. Defiant, a division of Enlightened Entertainment Ltd., 837 F.Supp. 546, 550 (1993).

[6] The Comics Journal, No. 163, Pg. 14(Nov. 1993).

[7] https://www.cbr.com/jim-shooter-interview-part-2/

[8] https://www.cbr.com/jim-shooter-interview-part-2/

[9] https://www.cbr.com/jim-shooter-interview-part-2/; The Comics Journal, No. 163, Pg. 14(Nov. 1993).

The Umbrella Academy and Abandoned Trademarks

            I was watching an episode of Netflix’s The Umbrella Academy when a familiar name appeared on a store sign: Gimbel Brothers Department Store. For those unaware, Gimbel Brothers, and its shorter version Gimbels, was a popular department store chain decades ago. Personally, I’m intrigued by Gimbels for a few reasons. First, it traces a substantial part of its origins back to Milwaukee, where I currently reside. Second, it expanded into a large national chain, and even acquired other retailers that still operate today. And, third, it shut down operations in 1986.

            I’d like to discuss that third point today. One of the defining characteristics of trademark law is that you must continually use the trademark in commerce. If you continue to use the trademark in commerce, then your trademark is protected. However, if you cease using the trademark in commerce, then it can be considered abandoned and anyone can use it. Under the federal trademark law, aka the Lanham Act, a trademark is presumed abandoned after three years of non-use or if the trademark owner discontinues use of the trademark with an intent not to resume use.

            I find it fascinating that Gimbels, a trademark abandoned in 1986, or thereabouts, continues to live on in popular media. Because of the store’s former fame, the Gimbels name resonates with consumers and provides an air of realism to the media it appears in. While Gimbels did appear in some popular media before its closure, notably Miracle on 34^th Street, since closure the store has been featured or referenced in the film Elf, as well as the television shows Happy!, The Goldbergs, Once Upon a Time, The Simpsons,[1] and, now, The Umbrella Academy.

            Once a trademark has been abandoned, others are free to use it or register it as a trademark. Theoretically, the appeal of using the Gimbels or Gimbel Brothers name is because the store is no longer operating, and people using its name in media wouldn’t need to worry about infringing on its trademark or damaging its goodwill.

            However, it turns out there is still a store bearing the Gimbels name. It is a small shop based in Maine, called Gimbel & Sons, and it was once sued by the Gimbels department store for trademark infringement.[2] The lawsuit was dismissed, and the Maine store was allowed to continue using its name provided it attached a sign stating it was not affiliated with the bigger department store chain. After Gimbels went out of business, the Maine store acquired the federal trademark registration for Gimbles Department Stores and has licensed it out to Hollywood, reportedly receiving $5,000 for its use in Elf and also licensing it for use in The Goldbergs.[3] I have not been able to determine if The Umbrella Academy licensed the name or attempted to skirt the issue by using the full Gimbel Brothers Department Store name on store signage.

            It’s yet another reminder that if you are seeking to register a trademark or claim trademark protection for your book, brand, or goods, continued use of the trademark is a must, and if you are thinking about using an abandoned trademark, it’s worth your time to make sure it’s actually abandoned. 

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[1] https://en.wikipedia.org/wiki/Gimbels

[2] https://www.upi.com/Archives/1982/02/22/Giant-conglomerate-sues-country-store-for-trademark-infringement/6222383202000/

[3] https://www.boothbayregister.com/article/sometimes-little-guy-wins/19284; see also https://www.nytimes.com/2006/02/19/nyregion/thecity/only-the-store-is-gone.html

Dead Rabbit Q & A

            A few weeks ago, I wrote a post about a trademark infringement lawsuit involving the Dead Rabbit comic book released by Image Comics. For more information, see the original post here, but basically, a bar in New York named Dead Rabbit (“DRT”) made menus in comic book form, planned to release a book utilizing the comics in 2018, and registered a trademark shortly after Image announced a comic book series named Dead Rabbit in February 2018. DRT then filed a lawsuit for trademark infringement against Image and the comic book store Forbidden Planet.

 Today, I’m going to do a little armchair lawyering in the form of a Q&A.

Why did DRT sue a comic book shop?

I believe there are a few reasons why Forbidden Planet was sued. From the complaint, the most obvious reason is that DRT, which is located in New York, wanted to make sure the lawsuit was heard in New York. Image is a California company. By adding a defendant in New York, the chance of the lawsuit being switched to a different court in a different state is diminished.

Another possible reason Forbidden Planet was included is to put pressure on Image to settle quickly. Retailers and distributors don’t like being caught up in litigation over a product they are selling but do not manufacture or control. By suing a retailer, there’s more pressure on Image to make the case go away quickly. 

Is there any risk to Forbidden Planet?

Yes. Selling a product that infringes a trademark constitutes infringement. Even though Forbidden Planet was unaware the Dead Rabbit comic book infringed upon someone else’s trademark, they could still be liable for the issues they sold.

Why did Image recall the book?

The primary reason to recall the book is to protect itself and retailers. As mentioned above, selling an item that infringes someone’s trademark can make you liable, even if you didn’t make it. Also, continuing to use a trademark after you’ve been made aware of it can increase your liability to the trademark owner. It’s safer to pull the allegedly infringing items until the problem has been resolved.

Will this case go to trial?

Doubtful. From my perspective, there’s not much reason to go to trial. Image has already recalled the book from the marketplace, and it looks like they are agreeing to an injunction against further publications bearing the Dead Rabbit name. The only remaining issue would be monetary compensation, if any.

Due to the fact DRT filed the trademark application after the comic book was announced, and its registration was issued in September, there are bound to be questions about whether DRT can actually enforce the federally-registered trademark against the comic book. A particularly tricky issue will be determining when Image and Forbidden Planet used the Dead Rabbit trademark in commerce. Is it when they began soliciting orders, which was before the trademark was registered, or is it the on-sale date in shops?

The likelihood of a court awarding DRT its requested $2 million in damages also seems unlikely, especially considering the issues surrounding the timing of DRT’s trademark registration. Unless DRT, and its attorneys, are hoping to get legal fees awarded, the amount available to recover doesn’t seem very high.

For instance, in orders sent to comic book shops, issue 1 sold an estimated 19,031 copies[1] to shops, and issue 2 sold an estimated 9,761 to shops[2]. If the shops sold every issue, which is unlikely, at $3.99 an issue, the total sales would be $114,880.08—and not all of that money was pocketed by one entity. Due to the somewhat convoluted flow of money through the comic book distribution system (Consumer to Retailer to Distributor (Diamond) to Publisher), the amount at issue in this case is likely to be less than the amount stated above, unless it sold well through other retail channels. Regardless, while it’s a decent amount of money, it’s a relatively small amount to get into a high-stakes legal battle over.

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[1] http://www.comichron.com/monthlycomicssales/2018/2018-10.html

[2] http://www.comichron.com/monthlycomicssales/2018/2018-11.html

Beating a Dead Rabbit

            News broke last week that Image Comics is recalling a recently released comic book, Dead Rabbit, from the market. A bar in New York, also called Dead Rabbit, filed a trademark infringement lawsuit against Image and the retailer Forbidden Planet NYC seeking $2,000,000 in damages and to cease publication of the book, amongst other things. Apparently, the bar is known for producing menus in comic book form and releasing versions the public can buy. They recently received a trademark registration covering Dead Rabbit comic books.

            As readers of my blog will recall, I recommend doing clearance searches on the title of your book before publishing it. Clearance searches are done to prevent situations like this from happening—even though they rarely occur.

I don’t know if the creative team, Gerry Duggan and John McCrea, did a clearance search for Dead Rabbit, but even if they did, it would have been easy to miss this one. Image Comics announced its Dead Rabbit comic book at Image Expo on February 21, 2018.[1] The group owning the Dead Rabbit bar didn’t file a trademark application to cover comic books until February 23, 2018.

Whenever someone conducts a trademark clearance search, the first place they look is the U.S. Patent and Trademark Office’s trademark database. Even if McCrea and Duggan did so before announcing their book, a conflict would not have been readily apparent. The only way for them to discover a potential conflict would have been through general web searches, and I can imagine it would be easy to overlook a bar named Dead Rabbit as a potential conflict for a comic book without some serious investigating.

Image Comics began soliciting orders for Dead Rabbit in July,[2] and the first issue was released on October 3. The bar’s trademark registration was not issued until September 4, 2018. The attorneys representing the bar did not reach out to Image until October 22, and they filed a lawsuit on November 8, one day after the second issue of the comic book was released.

I don’t know why they waited so long after filing the application, and receiving the registration, before contacting Image. One theory would be that by waiting until they have the actual registration issued, they would be in a stronger position to get Image to stop distributing the book. Even though they didn’t have a registered trademark when the Image book was announced, they still have rights to the Dead Rabbit name if they were using it in commerce first. Another theory would be that they waited until Image’s book was published, which would potentially increase liability for any infringing party and put more pressure on the defendants.

From my perspective, this whole lawsuit is a bit of a mess, and, frankly, unnecessary. Maybe I’m too trusting, but had someone reached out to Image or the creators sooner, this situation probably could have been avoided. I’m pretty sure Image and the creators would have changed the title if someone had said, “Hey, we release comics under the Dead Rabbit name.” From my perspective, as someone who has been on both sides of these disputes, it is far easier and cheaper to just change a name than to try and fight a trademark dispute. Instead, by waiting so long, it has created a massive headache for the parties involved, which the cynic in me believes was probably the point.

One final note that I haven’t seen addressed yet. The creative team is not a current party to the lawsuit. They are mentioned in the complaint, but Image and Forbidden Planet are the defendants. At this point, it looks like Image’s attorneys are taking point on negotiating the lawsuit, but this doesn’t mean Duggan and McCrea are off the hook. Many publishing contracts, especially creator-owned ones, include an indemnification provision stating the creators will cover all the costs and legal fees the publisher might incur by publishing their book if it infringes someone else’s rights. If this provision was in Duggan and McCrea’s contract, then Image could seek to recoup their legal fees from the creators. Definitely a scary prospect for the creative team.

    

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[1] http://www.comicon.com/2018/02/21/announcements-at-image-expo-2018/

[2] https://www.newsarama.com/41067-image-comics-october-2018-solicitations.html

Halloween Costumes & Knockoffs - Part II

    Once again, it's my favorite time of year. While a good many people love the Christmas season, Halloween has always been my favorite holiday. I love the costumes, the candy, the decorations, and the scares. 

    Last year, I wrote a piece about Halloween costumes and knockoffs. If you want to re-read it for the legal whys behind knockoff costumes, you can find it here. Otherwise, I’m just going to dive in to some of my favorite knockoff superhero costumes I’ve run across this year. (Note: all links affiliate links)

Oh Captain, my Captain!




This black-clad assassin will make many widows.




This one makes my lawyer-sense tingle.




You have failed this knockoff. (From what I can tell, this is not officially licensed. If it is, I retract my previous statement.)



Are they even trying?




I really need to get the new game.

Update - Hasbro and DC's Bumblebee Trademark Lawsuit

           Last year, I wrote about Hasbro filing a trademark lawsuit against DC Comics. The dispute was about DC's Superhero Girls toys featuring the character Bumblebee, which Hasbro believed infringed on its Bumblebee trademark protecting its Transformers character. I’ve continued to follow the case, and as of August 14, 2018, less than one year after the lawsuit was filed, it appears the parties have settled the case.

            DC’s counsel, James D. Weinberger of the law firm Fross Zelnick Lehrman & Zissu, P.C., filed with the court a letter to request dismissal and stating the parties have reached a settlement in principle. Details of the settlement are not given.

            As I mentioned in my original post, it was unlikely this case would actually see trial or reach a decision on its merits. Since the settlement appears to be confidential, only the parties’ actions going forward will give us clues as to what was agreed upon. I look forward to patrolling the toy aisles to see if there are any apparent changes to the packaging or branding of DC’s Bumblebee toys in the near future. 

Comic-Con Trademark - Part 2

            I previously wrote a little about the Comic-Con trademark dispute here. In this post, I’d like to look at the history of the Comic-Con trademark and why it is a protectable mark.

A quick search of the United States Patent and Trademark Office (USPTO) database shows 79 entries using the phrase comic con, of which 59 are still active. At least 21 of those registrations belong to Comic Con International (CCI). You can find a list of the CCI trademarks at the end of the article.

            First, in order to register a trademark or service mark – for brevity, I’m just going to use trademark to refer to both – with the USPTO, the trademark must be used in interstate commerce, and it must not be confusingly similar to another registered mark. Additionally, there are four types of marks with varying degrees of strength of protection: fanciful or arbitrary, suggestive, merely descriptive, and generic.

Fanciful and arbitrary trademarks are the strongest trademarks. Fanciful marks are invented words used as a trademark, such as Pepsi, and arbitrary marks are common words used in a unique way, such as Apple for computers. Suggestive marks are also considered strong trademarks, and they suggest something about the product, but do not explicitly describe the product or service. An example of a suggestive mark would be Speedi Bake for frozen dough; it suggests an attribute of the product but does not describe the product. Merely descriptive marks describe the goods or services being offered. They are considered to have weak protection and cannot be registered unless they have acquired secondary meaning. A generic mark is when the ordinary, everyday name of a good or service is used as a trademark. Generic marks cannot be registered with the USPTO.   

In 1990, Comic-Con International (CCI) filed an application to register a “San Diego Comic Con” trademark as a logo featuring an image of a toucan and the words previously mentioned. It was registered in 1992, but later abandoned in 2016 for failure to file a renewal. CCI’s first attempt to register “Comic Con” as a trademark was in 1995. Eventually, the application was abandoned after it was challenged by Chicago Comicon. “Comic Con International” was registered as a trademark in 1999.

            As you can see, CCI has been working to secure their trademark portfolio for a while. In 2005, it filed an application to register “Comic-Con” as a trademark. This application was initially rejected because the examiner found the trademark to be merely descriptive of the goods and services being offered. A merely descriptive trademark is not eligible to be registered on the Principal Register, which entitles it to the fullest trademark protection possible, unless it has acquired secondary meaning. CCI petitioned the trademark office to register the mark because it had acquired secondary meaning. As evidence, it pointed to the fact Comic-Con had revenues in excess of $22 million between 2001 and 2006, it had spent $11 million in advertising over the same period, and attracted more than 100,000 visitors in 2005. CCI also claimed exclusive use of the trademark. Based on this evidence, the USPTO found “Comic-Con” had acquired secondary meaning and allowed the registration to issue in 2007. CCI also filed its statement of use and incontestability in 2012, which further strengthened the “Comic-Con” mark. Because it has acquired incontestability status, the “Comic-Con” trademark can only be invalidated on a few specific grounds going forward, such as the mark becoming generic or if there was a fraud committed upon the USPTO.

            It was this trademark CCI relied upon in its lawsuit against Salt Lake Comic Con, and it’s this mark and other related marks CCI has used to thwart other conventions’ attempts to register trademarks with comic con in the name, with Denver Comic Con, Wizard World Comic Con Box, and Wizard World Comic Con TV being notable examples.  

            Undeniably, CCI has managed to build a massive brand around Comic-Con, and they have taken the appropriate steps along the way to protect the brand. As evidenced when it was being registered, the Comic-Con mark is merely descriptive and not entitled to strong trademark protection. However, CCI has spent the time and money building it as a brand, and the recent victory against SLCC shows they have been successful.

The list of registered trademarks and applications belonging to CCI includes the following: COMIC CON INTERNATIONAL (Registration #:2218236)

COMIC-CON (Registration #:3219568)

SAN DIEGO COMIC CON INTERNATIONAL (Registration #:3221808)

ANAHEIM COMIC-CON (Registration #:4425806)

SAN DIEGO COMIC CON INTERNATIONAL (Registration #:4835134)

SAN DIEGO COMIC CON INTERNATIONAL (Registration #:4835135)

SAN DIEGO COMIC CON INTERNATIONAL (Registration #:4835136)

COMIC-CON INTERNATIONAL PRESENTS WONDERCON ANAHEIM (Registration #:4854233)

LOS ANGELES COMIC-CON (Registration #:4856095)

COMIC-CON (Serial #:86482541)

SAN FRANCISCO COMIC-CON (Serial #:86482550)

COMIC-CON (Serial #:86482556)

COMIC-CON (Serial #:86482561)

SAN DIEGO COMIC CON INTERNATIONAL (Serial #:86484638)

COMIC-CON (Serial #:86485096)

LA COMIC-CON (Serial #:86774356)

COMIC-CON DEMAND (Serial #:86775699)

OFFICIAL COMIC CON AFFILIATE (Serial #:86805448)

SAN DIEGO COMIC CON INTERNATIONAL (Serial #:86937856)

COMIC-CON (Serial #:86937864)

COMIC CON (Serial #:86937870). 

The Comic-Con Trademark - Part 1

In case you missed it, last week a jury found Comic-Con to be a valid, enforceable trademark. The jury ruled Salt Lake Comic Con (SLCC) infringed upon the Comic-Con trademark owned by Comic-Con International (CCI), the company behind San Diego Comic-Con, and it awarded CCI a judgment of $20,000, far less than the $12,000,000 it was seeking. For a great recap of some of the background and issues underlying the dispute, check out this Forbes article by Rob Salkowitz .

The two conventions have been litigating the issue since 2014, and this decision has implications for the broader comic book convention circuit. There are numerous comic book conventions around the country, and many of them use the phrase “comic con” in their name and branding. After this decision, many of these companies will need to re-evaluate their brand and determine if they need to change their name, change their marketing practices, or seek a license from CCI to use the phrase.

While SLCC has vowed to appeal the decision, recent reports suggest they are also looking at re-branding their convention.[1] The validity of the Comic-Con trademark is also being challenged with the United States Patent and Trademark Office (USPTO). Both routes are an uphill battle.

On appeal, the issues being appealed and the standard of review the court applies will likely determine the outcome. In order for SLCC to have a shot at winning on appeal, it will have to convince the 9^th Circuit to review the case de novo, meaning the 9^th Circuit will essentially rehear the case.[2] If SLCC can show there is a question of law or a mixed question of law and fact still at issue, then the 9^th Circuit would use this standard of review. If, however, the court applies another standard of review, such as clearly erroneous, abuse of discretion, or substantial evidence, then the outcome favors SDCC. These standards are deferential to the lower courts findings, and it will be hard for SLCC to overturn the lower court’s ruling.

SLCC is also facing a tough battle in their proceeding to cancel the Comic-Con trademark with the Trademark Trial and Appeals Board (TTAB). CCI’s main Comic-Con trademark was registered in 2007. In 2012, CCI filed for incontestability, which means the mark had not been challenged during the previous 5 years, and it limits the ways a trademark can be invalidated. Now, the only way for SLCC to invalidate the mark would be to show it has become generic, which now may be impossible to do as a result of the jury decision, or by showing CCI committed fraud upon the USPTO when registering the trademark. The latter approach is the one being taken by SLCC, but the proceeding was suspended pending the outcome of the trial. Again, this is an uphill battle for SLCC, but if they can convince the TTAB the statements made by CCI to obtain registration were fraudulently made, then they have a shot.

Personally, I’m a little surprised by the decision. When it was registered, the USPTO found the “Comic-Con” mark to be merely descriptive because it describes comic conventions, but the mark was granted registration due to it acquiring secondary meaning. Merely descriptive marks describe the goods and services being offered and are usually afforded weak protection. Perhaps that is one factor explaining the low monetary award? Even though Comic-Con, and even Comic Con, are riskier phrases for convention organizers to use, it’s hard to imagine organizers being prevented from using the words comic book convention or comic convention to describe their events going forward.

As I said near the beginning, if you use the phrase “comic con” in your event title, you will need to re-evaluate your brand strategy. Honestly, it’s not the worst thing to do anyways. At best the comic con phrase is merely descriptive of the services being offered. You’ll be doing yourself a favor if you can come up with a unique brand name. It’ll be easier to trademark too, but that’s a discussion for next time.   

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[1] https://icv2.com/articles/news/view/39144/salt-lake-comic-con-organizers-will-appeal

[2] http://cdn.ca9.uscourts.gov/datastore/uploads/guides/stand_of_review/I_Definitions.html#_Toc199130796

Would a Bumblebee by any other name sting as much?

           Last week news broke that Hasbro, manufacturer of the Transformers toys, sued DC Comics for trademark infringement.[1] 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.[2]

            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).[3] 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.[4]

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.

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[1] http://variety.com/2017/biz/news/bumblebee-trademark-transformers-dc-comics-warner-bros-1202541577/

[2] http://dc.wikia.com/wiki/Karen_Beecher_(New_Earth)

[3] https://en.wikipedia.org/wiki/Bumblebee_(comics)

[4] http://www.dccomics.com/blog/2015/10/01/the-dc-super-hero-girls-universe-is-live

The Power of the Olympic Trademarks

          This is my first non-comic book related post, but as it says in the header, this is a comics and entertainment law blog. As such, it seems like the right time to look at an issue you will be seeing over the next few weeks, if you haven’t noticed it already. The 2016 Summer Olympics start today in Rio, and the United States Olympic Committee (“USOC”) is notoriously aggressive in defending its trademarks. If you are not an official sponsor of the Olympics and are thinking about trying to capitalize on the games through marketing or social media, you may want to think again.

In the U.S., and in all countries that have hosted the games, there are laws protecting the intellectual property associated with the Olympics.[1] In the United States, the Ted Stevens Olympic and Amateur Sports Act gives the United States Olympic Committee the “exclusive right to use:

(1) the name “United States Olympic Committee”;

(2) the symbol of the International Olympic Committee, consisting of 5 interlocking rings, the symbol of the International Paralympic Committee, consisting of 3 TaiGeuks, or the symbol of the Pan-American Sports Organization, consisting of a torch surrounded by concentric rings;

(3) the emblem of the corporation, consisting of an escutcheon having a blue chief and vertically extending red and white bars on the base with 5 interlocking rings displayed on the chief; and

(4) the words “Olympic”, “Olympiad”, “Citius Altius Fortius”, “Paralympic”, “Paralympiad”, “Pan-American”, “America Espirito Sport Fraternite”, or any combination of those words.”[2]

The statute also gives the USOC the exclusive right to license the trademarks to sponsors,[3] and it allows the USOC to file a civil action against any party using the Olympic trademarks without its permission.[4] The Supreme Court has even ruled that unlike in traditional trademark lawsuits where a suing party must show a likelihood of confusion, there is no such requirement for the USOC to enforce its rights and typical trademark defenses are not available.[5] Additionally, the Supreme Court found that the First Amendment does not provide protections against using the Olympic trademarks in commercial speech.[6]

            Through the Stevens Act and court decisions, the USOC has a broader and stronger trademark interest than any other trademark owner. It has also not been shy about enforcing its rights. Recently, it even went so far as sending out letters to companies who sponsor athletes but not the Olympics warning them to not (i) post about the Olympic Trials or Games on their social media accounts, (ii) share or repost media from official Olympic accounts, or (iii) use hashtags involving USOC trademarks such as #Rio2016 or #TeamUSA.[7]

            While this seems ridiculous, based on the statute and court decisions, the USOC just might be able to enforce it. Even though you may be tempted to try and trade on the Olympics to promote or support your brand, doing so could be costly if the USOC finds out.    

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[1] http://www.inta.org/TrademarkBasics/FactSheets/Pages/ProtectionofOlympicTrademarks.aspx (last visited August 3, 2016).

[2] 36 U.S.C. §220506(a).

[3] 36 U.S.C. §220506(b).

[4] 36 U.S.C. §220506(c).

[5] San Francisco Arts Athletics, Inc. v. United States Olympic Committee, 483 U.S. 522, 531 (1987).

[6] Id. at 535.

[7] Rovell, Darren. USOC sends letter warning non-Olympic sponsor companies, ESPN.com, July 21, 2016,  http://www.espn.com/olympics/story/_/id/17120510/united-states-olympic-committee-battle-athletes-companies-sponsor-not-olympics (last visited August 3, 2016).