After making (and remaking (and re-remaking)) movies, sequels, and prequels for nearly every comic book character in its library, it appears that DC Comics has finally found a new foe for its Batman franchise: music and fashion superstar Rihanna. The parties are squaring off at the Trademark Trial and Appeal Board over Rihanna’s application to register the mark ROBYN in connection with “on-line non-downloadable general feature magazines.”
Every villain needs an origin story, something to explain a character’s sinister past, or the source of their incredible super powers. Rihanna is no different, with an origin story stretching back to 1988, in the far away land of Barbados. It was here, in this mysterious and tropical paradise, where Rihanna was born. Her parents, having no reason to suspect any future life of villainy, named her “Robyn,” and from then. . . . Well, actually that’s the end of the story. That’s pretty much all you need to know.
DC Comics, on the other hand, is the owner of the Batman franchise, including copyrights and trademarks associated with all the secondary characters, including Catwoman, the Joker, Mr. Freeze, and, yes, Robin the Boy Wonder. DC Comics did not take kindly to Rihanna’s application and filed a Notice of Opposition.
The Notice of Opposition sets forth two claims: a likelihood of confusion with, and dilution of DC Comics’ prior rights in its ROBIN trademark. Unsurprisingly, the situation provides another example of the general public’s skepticism of the legal claims of a trademark owner. DC Comics believes that Rihanna’s use of ROBYN with online general feature magazines “is likely to cause confusion, cause mistake, or to deceive the public into the false belief that [Rhianna’s magazine is] sponsored or connected with [DC Comics.]” Meanwhile, a writer for the online magazine AV Club interprets this as stating that DC Comics is “worried that everyone is an idiot.”
The legal issues are relatively straight forward: the marks are phonetically identical and visually similar. Therefore, the crux of the case will depend upon the scope of common law rights that DC Comics can establish, and whether Rhianna’s magazine might be considered to fall under that same umbrella.
What is more interesting is that this case provides examples of a number of misconceptions regarding trademark law. With no particular order, rhyme, or reason, here are four items to consider.
1. There is no right to use your name, at least not as a trademark. It doesn’t matter if your first name really is “Denny” or if your last name really is “McDonald.” Unfortunately, you have limited options for the name of your restaurant.
2. Fame is not infectious. Mere association with a famous mark does not prove that a different mark is famous. For example, even if TOMMY HILFIGER is a famous mark, this does not mean that the TH logo is a famous mark (H/T TTAB). Accordingly, DC Comics’ allegation of Batman as “one of a rarified group of characters known and loved throughout the world,” even if proven, does not establish fame of the ROBIN mark.
3. Trademark law does not provide owners with ownership of that word. The fancy version of this rule is that trademark law does not provide a “right in gross” to a particular term. A plaintiff asserting a likelihood of confusion must still establish that the goods or services are related.
4. Merely having a registration, and even having commercial success, does not mean that there is a likelihood of confusion. The conceptual strength of the term and the extent of third-party use helps determine the scope of protection afforded to the plaintiff’s mark. Here, “robin” is not a fanciful term like “xerox.” Robin is a common first name. It is a common last name. It is also one of the most common birds in North America. Apparently, when Robin isn’t busy fighting crime, he is busy serving up burgers, making chocolate eggs, and living a second life as a Swedish pop star (and a third life as a Finnish pop star). The DC Comics Robin isn’t even the only well-known fictional Robin (looking at you, Mr. Hood). The more exposure to third-party uses of ROBIN, the less likely consumers will mistakenly assume that other ROBIN (or ROBYN) marks have a connection to DC Comics. This is true regardless of how famous a mark may be.
Will DC Comics be successful in preventing Rihanna from capitalizing on the goodwill associated with the Robin character? Will the daring Rihanna escape the clutches of DC Comics with her application in tact? Will radio dramas finally make a comeback? Tune in next time to find out! (June 23rd, if there is no agreement to extend the time to answer)