-Wes Anderson, Attorney

A bit belated, but I finally caught a screening of Star Wars: The Force Awakens. Unbeknownst to me, the film was missing a part of the Star Wars experience many fans hold dear. And it’s all about branding.

Note: No spoilers of the film itself follow here, unless you consider a discussion of the pre-opening titles a “spoiler” unto itself. A further note: I do not hold myself in any way to be a competent Star Wars nerd, so please excuse any missteps or general unfamiliarity with the lore surrounding the films.

When most people think of the Star Wars opening titles, they probably think of the John Williams score’s opening flourish and a giant yellow STAR WARS outlining flashing on the screen before zooming into space to make way for the iconic scrolling text to introduce the film’s story. But many fans also immediately think of what precedes all of that – the 20th Century Fox “spotlights” logo and its associated fanfare.

20thcentury

 

It turns out that prior to the release of the first Star Wars film in 1977, 20th Century Fox had abandoned the logo and fanfare in the opening titles for films it distributed. But George Lucas loved it so much he insisted that it precede the Star Wars opening titles. It’s said that John Williams went so far as to record the soundtrack’s opening titles in the same key as the Fox fanfare, so as to truly integrate 20th Century Fox’s branding into the fabric of Star Wars. The Fox fanfare was reborn.

This all changed in 2013, after Disney purchased Lucasfilm and the rights to the Star Wars franchise. When releasing the library of Star Wars films in digital download format, Disney removed the 20th Century Fox fanfare from the opening titles. A logical move, it would seem, but it irked many Star Wars fans who considered it an indispensable part of the films. Many worried that Disney’s first new Star Wars film, “The Force Awakens,” would feature an amalgam of Disney / J.J. Abrams branding that would clash with history, as conceptualized in this YouTube video.

Screen Shot 2016-01-15 at 6.57.37 AM

Some even wondered if it would be possible for Disney to license the 20th Century Fox fanfare. While all things are possible in trademark licensing, this would likely be a step too far for 20th Century Fox, which now uses the fanfare and spotlights logo for all of its films.

Fortunately, these Disney-fication fears did not come to fruition – The Force Awakens begins silently, displaying only the Lucasfilm logo, before the iconic text “A long time ago in a galaxy far, far away…” appears on screen, and the John Williams score takes over. The Disney logo never appears (at least I didn’t notice it, unless it snuck into the film’s closing credits). And yet, despite its visual absence, I was acutely aware that this movie had Disney’s fingerprints all over it.

In making branding decisions, sometimes less can be much, much more.

– Draeke Weseman, Weseman Law Office, PLLC

On Monday, the University of Oregon and The Ohio State University will play in college football’s first College Football Playoff championship game. DuetsBlog has previously covered the trademark issues surrounding BCS Properties’ attempt to register College Football Playoff as a trademark in connection with college football playoff games here. Even if College Football Playoff ultimately fails as a trademark, Monday’s championship game will be awash in trademarks and intellectual property. Consider this your DuetsBlog guide to the game.

UNIVERSITY OF OREGON

We’ll start with Oregon, and begin with a little history. In 1859, Congress required Oregon to set aside land for a state university as a condition for admittance into the Union. Oregon chose land in Eugene, and, in the mid-1870s, began building what is today the University of Oregon®, or Oregon®, or just UO®. Although all eyes will be on the Oregon Ducks’® football team on Monday night, Eugene may be better known to many as Track Town USA® thanks to the success of Oregon’s track team under Bill Bowerman in the 1960s and 70s. During that time Bill Bowerman introduced jogging to the American public, coached the legend Steve Prefontaine, met Phil Knight, and started Nike, Inc.

Nike has maintained a strong relationship with Oregon ever since, hiring grad Tinker Hatfield in the 80s to design Air Jordan shoes (but not the ones blogged about here) and grad Dan Weiden’s agency Weiden-Kennedy, to coin the tag line “Just Do It” while developing TV ads like “Bo Knows” to sell newly invented cross-training shoes (also designed by Tinker Hatfield.) Today, Nike designs not only Oregon’s football uniforms, but also the special uniforms for all four teams that played in the College Football Playoffs, branding them from head to toe, and even hands:

For those interested, these uniform deals are influential, lucrative, and signed on a team-by-team basis.

Continue Reading Topics of Conversation for Your College Football Playoff Party

The Star Wars series is truly an exceptional franchise, having broken box office records, creating legions of fans, and bringing the idea of collateral merchandise licensing to an unprecedented level. Also, how many other films are top hits at the box office in three different decades, even when all you’ve done is add a few minutes of extra scenes and made the explosions better?

Star Wars also made headlines in 2012 after the franchise was acquired by Disney, who promptly announced that they would begin work on the third and final trilogy of the nine episode story.

Although Episode 7 is not slated for release until December of 2015, there is new Star Wars content out for mass consumption. Just yesterday, LucasFilms released a trailer for Empire Strikes Back: Uncut through the website Mashable.com. The full film will be released today.

In case you didn’t know, 2 years ago director Casey Pugh sent out an internet call to action to Star Wars fans: film your own version of any scene from Star Wars: A New Hope, and I’ll use it to make a fan-made version. The result is a full length feature film that is at times intentionally hilarious, actually impressive, or other times, so terrible it is hilarious. The full movie can be viewed on this officially sanctioned and licensed YouTube page.

Below is the official trailer for the new Empire Strikes Back: Uncut film

There are so many levels of derivative work and licensing issues involved that I think any release would require a flowchart and possibly a power point presentation. This isn’t the first time companies have embraced user-generated content, but it is certainly one of the more ambitious uses. But it is wonderful to see a major player in the entertainment industry embrace new technologies and fan participation. The underlying copyright issues may be difficult, but they’re not insurmountable and, for me, the result is worth it.

But Star Wars hasn’t been focused solely on copyright law, they’ve been making strides in trademark law too. Although there has been an increasing interest in the registration of sound marks, LucasFilms was a pioneer in the field, having obtained a trademark registration for the sound of Darth Vader breathing. The registration was issued in 2009 and covers “Halloween and masquerade costumes incorporating masks” and “costume masks, voice altering toys, toy computers, action figures, electronic games” and similar toys and figurines. You can listen to the sound mark here.

Although Darth Vader’s breathing is perhaps the most distinctive sound to emerge from the Star Wars series, it isn’t the only one that might be worthwhile protecting. R2-D2 has some distinctive noises as well as Chewbacca’s roar. It might be a bit harder to obtain, but the sound of a light saber might have a chance, too. And who knows what else may come out of the final three episodes?

While the last year has been relatively quiet on the Star Wars front, I think these new stories are just the beginning of what will surely be a 2015 filled with “sneak peeks,” fan complaints and, yes, legal issues surrounding the Star Wars franchise as we gear up for the first Disney-produced installment of the saga. Here’s hoping that the majority of these are fun stories like Star Wars Uncut in the coming year.

With the NFL season in full swing and my fantasy football league thus far undefeated, as well as some really interesting tech stuff on fashion week, I really wanted to focus on something fascinating and fun on this Friday.

But I couldn’t resist some of the news I saw Thursday on the Notice of Opposition filed by Disney against EDM’s Deadmau5.  Having opined on this earlier in April when Disney first requested an extension of time to oppose, and pointed out that this dispute occurred many years ago, I was frankly surprised that this hadn’t yet settled.   I mean, this isn’t their first go around regarding the mau5head.

We have talked a  lot recently about the trend of small trademark applicants to take on the “Goliath” standing in their way through social media.   Natty Green v. Natty Light.  The now settled, BREWSKEE-BALL v. SKEE-BALLThe F Word v. FRAPPUCCINO. And even the Goliaths being bullied by the Davids.

Deadmau5 utilized his grasp of social media to do the same thing here with his followers.

 

 

 

 

 

 

 

But let’s be real for one minute.  This isn’t just about confusing an EDM performer with a mouse in a cartoon.  Deadmau5 has applied for the logo below

https://www.duetsblog.com/files/2014/09/sideloadimage-2017-10-30-17-14-35.jpg

in connection with:

  • Apparatus and instruments for recording, receiving, processing, reproducing and/or transmitting sound and/or visual information or recordings; turntables, slipmats, headphones;
  • speakers;
  • radio receiving and transmitting apparatus;
  • telephone apparatus and instruments;
  • telephones, mobile telephones and telephone handsets; adapters for use with telephones;
  • battery chargers for use with telephones;
  • cases adapted for mobile telephones; sunglasses; spectacles, spectacle frames and cases; sound and/or visual recordings; interactive sound and/or visual recordings; sound and/or visual recording media;
  • juke boxes;
  • games adapted for use with television receivers;
  • video games;
  • coin/counter operated games;
  • arcade apparatus and games;
  • computer games;
  • computer software;
  • computers;
  • data processing equipment;
  • usb sticks;
  • mouse pads;
  • mice for computers;
  • screen savers;
  • publications (downloadable) provided on-line from databases, from the Internet or from any other communications network including wireless, cable or satellite; compact discs;
  • DVDs;
  • CD ROM;
  • carrying cases adapted for compact discs;
  • carrying cases adapted for DVDs;
  • video cameras;
  • cameras;
  • photographic and cinematographic apparatus and instruments;
  • photographic transparencies,photographic films;
  • digital music (downloadable);
  • MP3 players;
  • personal digital assistants and other hand held electronic devices;
  • metronomes;
  • telephone ring tones;
  • encoded magnetic cards and cards bearing machine readable information;
  • bank cards;
  • credit cards;
  • cheque cards;
  • cash cards;
  • smart cards;
  • automatic vending machines and mechanisms for coin operated apparatus;
  • batteries;
  • holographic images;
  • holographic cards;
  • holograms, credit cards with holograms;
  • BMX bikes;
  • Printed matter, namely, magazines in the field of entertainment;
  • printed publications, namely, magazines in the field of entertainment; books in the field of music and entertainment;
  • greeting cards, post cards;
  • picture cards;
  •  photographs, pictures, prints, posters, stationery, pens, pencils, erasers, pencil sharpeners, pencil cases, staplers, staple removers, rulers, boxes for pens, book markers, notepads;
  • address books;
  • diaries;
  • scrapbooks;
  • albums for photographs;
  • catalogues in the field of music;
  • stickers;
  • printed gift vouchers;
  • gift bags;
  • carrier gift bags;
  • calendars;
  • artists’ materials, namely, pens and brushes;
  •  paint brushes;
  • decalcomanias;
  • plastic materials for packaging not included in other classes, namely, bags;
  • cheques and travelers cheques;
  • banking cards, other than encoded or magnetic;
  • credit cards, other than encoded or magnetic
  • Leather and imitations of leather and goods made of these materials and not included in other classes, namely, leather cases;
  • trunks and travelling bags;
  • suitcases;
  • bags, namely, all-purpose sports bags;
  • schoolbags;
  • tote bags;
  • backpacks;
  • day packs;
  • handbags;
  • shoulder bags;
  • duffel bags;
  • messenger bags;
  • purses;
  • wallets;
  • leather shoulder belts;
  • credit card holders;
  • umbrellas, parasols and walking sticks
  • Clothing for men, women and children, namely, t-shirts, tank tops, sweat shirts, sweaters, jackets, hats, caps, visors, head bands, scarves, shorts, socks and casual footwear
  • Toys, games and playthings, namely, board games, card games and action skill games;
  • board games;
  • skateboards;
  • musical toys;
  • playing cards;
  • novelty figurines, namely, molded plastic toy figurines;
  •  slot machines;
  • automatic, coin operated or counter operated amusement apparatus adapted for use with an external display screen or monitor;
  • Christmas tree festive decorations;
  • carnival masks
  • Coffee, coffee essences, coffee extracts;
  • mixtures of coffee and chicory;
  • mixtures of coffee and chicory, chicory and chicory mixtures, all for use as substitutes for coffee;
  • tea, tea extracts;
  • cocoa;
  • chocolate;
  • chocolate products, namely, truffles;
  • sugar, maltose for food, rice, tapioca, sago, couscous; flour and preparations made from cereals and/or rice and/or flour, namely, cereal based snack foods;
  • nut paste, confectionery made of sugar and candy, breakfast cereals;
  • pastry;
  • pizza, pasta and pasta products, namely, noodles and alimentary pastas;
  • bread;
  • biscuits;
  • cookies;
  • cakes;
  • ice, ice cream, water ices, frozen confections;
  • preparations for making ice cream and/or water ices;
  • honey;
  • preparations consisting wholly or substantially wholly of sugar, for use as substitutes for honey, namely, honey substitutes; syrup, treacle, molasses;
  • ketchup;
  • custard powder;
  • frozen, prepared or packaged prepared meals consisting primarily of pasta or rice;
  • dessert mousses;
  • bakery desserts;
  • puddings;
  • yeast, baking powder;
  • salt, pepper, mustard;
  • vinegar;
  • chutney;
  • spices and seasonings;
  • vegetal preparations for use as drinks;
  • herbal and tea infusions, other than for medicinal use;
  • meat pies;
  • mayonnaise;
  • meat tenderizers for household purposes;
  •  royal jelly for human consumption, other than for medicinal purposes;
  • natural sweeteners;
  • syrups, namely, maple syrup;
  • salad dressings
  • beers;
  • mineral and aerated and effervescing waters and other non-alcoholic drinks, namely, soda and juice;
  •  fruit juices;
  • syrups, essences and extracts and other preparations for making beverages;
  • isotonic beverages
  • Entertainment in the nature of live performances by a musical artist;
  • educational services, namely, providing classes, seminars or workshops in the field of music;
  • production and distribution services in the field of sound and/or visual recordings and entertainment programs, namely, motion pictures, radio programs or videos in the field of music;
  • music library services;
  • music publishing services;
  • recording studio services;
  • disk jockey services;
  • provision of information relating to music, entertainment, games and events provided on-line from a computer database, from the Internet or any other communications network including wireless, cable or satellite; provision of non-downloadable digital music from the Internet;
  • provision of non-downloadable digital music from MP3 websites;
  • production, preparation, presentation, distribution, and rental of television and radio programs and films, animated films and sound and/or visual recordings; production of live entertainment features in the nature of music concerts;
  • organization, production and presentation of quiz shows, exhibitions for entertainment purposes, sporting events, shows in the nature of music concerts, road shows, live staged events in the nature of musical performances, theatrical performances, concerts, live musical performances and audience participation events; provision of on-line non-downloadable electronic publications, namely, a magazine in the field of music;
  • electronic computer game services provided from a computer database, the Internet or any other communications network including wireless, cable, satellite; advisory and consultancy services related to the aforementioned services

Really, guys?! This is a ridiculously long list of goods, and eventually deadmau5 would have to show use on all of these goods, or delete them.  Although this was based on a foreign registration in Australia, it makes me wonder whether there was a strategy here upon filing this, especially given the prior grievances of Mickey Mouse as I pointed out in my prior post.

With the right strategy, I think deadmau5 could easily carve out a plurality of goods and services descriptions that would allow for registration of his mau5head in view of the prior, famous, and subsisting rights of Disney’s Mickey Mouse.  And as we have often said, registration of a trademark may be barred while in actual use there is no likelihood of confusion due to the differences in standards between a likelihood of confusion in the Trademark Office’s view and a likelihood of confusion in the context of infringement. Disney hasn’t filed a lawsuit to prevent deadmau5 from using the mark, just to try to prevent them from registering it (although a good attorney will point out Disney’s delay in addressing the common law use of the mau5head).

BUT THEN…Disney’s website shows a “Re-Micks” video using deadmau5’s music WITH MICKEY MOUSE and WITHOUT PERMISSION TO USE THE MUSIC (according to deadmau5’s Twitter).  Really, guys?! 

What do you think about this dispute and the parties’ actions?  How do you think it should shake out?

 

Deadmau5 (‘ded-mau̇s; a.k.a. Joel Zimmerman) is a popular house music artist who performs wearing a mouse-like head covering called the mau5head.   On Twitter he calls himself an “Event Driven Marketing specialist,” so I thought this was a fitting subject for the hip legal, creative and marketing folks who follow us here at DuetsBlog – although it is also a clever backronym for EDM.

 

Look familiar at all?  Here comes the drop…

The Hollywood Reporter featured a story on an apparent brewing tiff between deadmau5 and Disney based on the filing of an extension request to oppose Ronica Holdings’ application for deadmau5’s logo.  The application claims a plethora of goods and services, including beer, toys, apparel, backpacks, metronomes, digital music, entertainment services, and BMX bikes.

Trademark image

 

Disney owns registrations (here and here) for the mark below for various apparel items, backpacks, and luggage, in addition to some marks with Mickey Mouse:

Trademark image

 

But this appears to be a redux of a prior battle.

Back in 2009, Catbread Inc. filed an application for the same logo (albeit maybe a little thinner at the corners of the mouth) on goods and services that overlap with those in the present application.  Catbread later assigned other deadmau5 logos to Ronica.  Disney filed a couple requests to extend their deadline to oppose the application, and Catbread ultimately expressly abandoned the application in 2011.

Trademark image

But Disney didn’t attempt to oppose (or even file a request to extend their deadline to oppose) this registered logo:

Mark Image

I assume that the express abandonment of the prior application came after discussions between deadmau5’s legal team and Mr. Mouse (an inaccurate portrayal, but I had to throw in a funny South Park clip).  Typically such an express abandonment comes either as part of a settlement or else perhaps the applicant quietly decided to simply abandon the application rather than deal with a response to a demand letter signed by Mr. Mouse.  In addition to the application, Disney’s legal counsel must have been aware of some use of the deadmau5 mark and potential associated trade dress issues.   On the other side, prior to filing the new application, this seems like a battle that deadmau5’s counsel likely anticipated with the new filing.  But since 2011, deadmau5’s popularity has grown substantially, so maybe there is more incentive and more evidence to support that the deadmau5 mark is not confusingly similar to Mickey.

Who do you think prevails on this one – deadmau5 or Mr. Mouse?

 

English Company THOIP asserted its rights to a family of unregistered trademarks in a children’s book series involving cartoon characters called “Mr. Men” and “Little Miss” by suing the king of the cartoon characters—Walt Disney Company (and related companies). The products at the center of the dispute are t-shirts. You may have seen Britney Spears sporting Little Miss THOIP’s t-shirts in the celebrity magazines or on the celebrity websites, or perhaps, read about the filing in 2009 from DuetsBlogger Sharon Armstrong.

In August 2010, the United States District Court for the Southern District of New York (the New York Court) granted the Walt Disney Company’s motion for summary judgment on the issue of “forward confusion.” The remaining dispute involved whether “reverse confusion” had occurred. One of THOIP’s likely concerns is that consumers will think that THOIP is copying Disney’s brand and may not look favorably on THOIP.

You may recall DuetsBlog has run posts about the reverse confusion doctrine in the past. I posted “David and Goliath”relating to Texas pizzerias taking on Dominos and Steve Baird posted on the topic in connection with Lion’s Tap and McDonald’s, here and here. This doctrine basically protects smaller, lesser known, trademark owners whose trademarks are infringed upon by large multi-national companies with gigantic advertising budgets. The Walt Disney Company certainly fits this bill. When I walk through the Mall of America with my 6 1/2 year-old niece, Olivia, it is relatively impossible to escape the pull of the Disney Store. You may have experienced a similar phenomenon. Most, if not all, children have something at their house associated with the Walt Disney Company, be it a stuffed animal or DVD.

If my niece and I ventured to Magic Kingdom in Florida, we would likely see the Miss Disney or Little Miss Disney t-shirts. Per Wikipedia, Magic Kingdom has often also been used as an unofficial nickname for Disneyland Park before Walt Disney World was built in Florida. However, the official tagline for Disneyland is “The Happiest Place On Earth,” while the tagline for Walt Disney World’s Magic Kingdom is “The Most Magical Place On Earth.” Despite the similarities, the Florida park’s tickets have always included the official name of Magic Kingdom. In 1994, in order to differentiate it from Disneyland, the Florida theme park was officially renamed to “Magic Kingdom Park,” but as Olivia and most youngsters know, it is most often called Magic Kingdom. I digress. According to the New York Court’s opinion, the Miss Disney and Little Miss Disney t-shirts can be purchased at the Magic Kingdom or Disneyland theme parks (the only other place to purchase them is the World of Disney Store in New York, which is now defunct). From my quick search on Google, it appears that you may also purchase some of the t-shirts on the Internet.

By way of background, following the August 2010 ruling, the New York Court had reopened discovery to allow THOIP to submit evidence of actual confusion. Unfortunately for THOIP, a couple of weeks ago, the New York Court excluded the survey evidence THOIP had submitted. In doing so, it explained that the “survey failed to replicate actual marketplace conditions, lacked a proper control, improperly counted certain responses as indicating confusion, and suffered from demand effects.” This was a fatal blow to THOIP. In looking at the likelihood of confusion factors (a/k/a the Polaroid factors – named after the famous case), the New York Court explained that had THOIP submitted strong admissible survey evidence it would have allowed the case to proceed on the reverse confusion issue. As THOIP had not done so, the New York Court granted summary judgment in favor of the Walt Disney Company.

Although THOIP did not prevail, reverse confusion remains a weapon in the arsenal of smaller trademark owners. The take-away is that survey evidence is often important to prevail in such cases. 

Is anyone aware of any other potential reverse confusion claims that have been or that should be brought?

—Dave Taylor, Taylor Brand Group

Think of your favorite brands of clothing, beverages, restaurants, or insurance–any product or service you like and purchase. You could probably name two brands or more in every category in addition to competitive brands that you’ve chosen not to buy, or haven’t bothered to try. Take a little bit of time with your personal brand list and I’ll bet you could list two hundred or more brands for which you harbor a basic, binary opinion as in "good/bad" or "buy/don’t buy"– the decision that is making or breaking marketing careers all around the world at any given moment.

And yet every one of those opinions is likely being carried around locked in your brain, accessible only by you. It isn’t in writing. It isn’t in a database anywhere. (A credit card statement is the closest indicator, but a vague one at best.) As much as the marketing world thinks it knows about you, it really doesn’t know that much about your total brand preferences. They get only slivers of information when you register for a warranty, join a fan club, post a comment, or take an in-depth survey.

At least for now.

Imagine the power of being able to create an in-depth brand profile around you or me or a billion or so other consumers. To be able to look inside our heads and see this secret mental list of yes/no, good/bad, buy/don’t buy. It’s happening. Google and Facebook are in all out dash right now trying to figure out a kosher way to excavate and sell this information. I expect they’ll both find a solution.

Until then, if brands are floating around somewhere in our brain cells, what does this mean to marketers who are building and nurturing their brands?

Keep it simple: Simpler is easy to remember. That’s why so many powerful brands have a simple concept at their core. FedEx is reliable. Disney is fun. Apple is cool. Simple brand ideas are more likely to stick in the mind. A good example is the new brand of mobile phone from Motorola, the Droid. Barely more than ten months old, it has done a great job of portraying its versatility with the simple slogan "Droid Does." The two-word tagline states a simple brand promise. And judging by its success, the Droid brand experience delivers on that promise.

Brands are not just mental, they’re tied to our emotions: Every powerful brand has a direct connection to the self-esteem of its customers. Going back to the examples above: Using FedEx means I’m a smart employee (who won’t get fired), taking my kids to Disneyland makes me feel like a good parent (with a lot less money than before we went), using an iPad or iPhone means I’m hip and leading edge (and when my iPhone drops a call, maybe I feel a little bit stupid). These emotions don’t have to be learned or remembered, we just feel them. They’re always there.
 

Messages build on each other over time: Now think of a brand you really like. One you’ve bought repeatedly over a period of time. Maybe you read a book or a few articles about it (a car brand, for instance) or you have t-shirts or other badges that proclaim your allegiance to the brand. For that brand, you are likely to know quite a bit. How did it get that way? It took time. You probably didn’t take real notes, but you’ve made a lot of mental ones over the years. You may know something about the history of the company, and you’ve probably even noticed which of your friends and family are using the same brand. These little nuggets of information accrue over time. A marketer can try and list 20 reasons to buy a product, or hope that you will listen long enough to learn a bunch of bullet points about his latest new widget. But the fact is, since we’re memorizing all this, without really even thinking about it, it’s easier to learn a little at a time.

Yogi Berra famously said, "Baseball is 90% mental and the other half is physical." In the case of building a memorable brand, all this brand knowledge and all these preferences reside exclusively between our ears. It’s 100% mental. And so is the other half.

–Dan Kelly, Attorney

Last Friday, MVL Rights, LLC, a Disney subsidiary and apparent owner of rights in the HULK name and character of Marvel Comics origin, filed a lawsuit in the U.S. District Court for the Southern District of Ohio against Airbase Industries, LLC regarding Airbase’s use of HULK in connection with air compressors.  [Insert obligatory Hulk-angry-lawsuit quip here.]  The first newsflash I read reported that Airbase’s HULK-branded compressors are green (like the Marvel Comics Hulk character).  Even so, without further investigation, knowing only the word marks (identical) and goods and services of the parties (fictional character vs. air compressors), and potential color similarity, I reserved initial judgment, envisioning a host of scenarios that could cut in different directions, for or against either party.

A back-of-the-envelope trademark infringement analysis usually focuses on the two leading elements in the likelihood of confusion analysis:  the similarity of the marks and the similarity of the goods.  Here, the word components of the marks are identical–both are HULK.  The goods and services?  Much more difficult.  I am not accustomed to seeing comic-book characters adorn or endorse shop equipment, but I suppose it is not beyond the realm of possibility.  The word “hulk,” after all, has a dictionary definition of “a large or unwieldy boat or other object,” which could describe or suggest many types of shop equipment.  (In terms of a character to endorse or sponsor heavy-duty shop equipment, I suppose that a company could do worse than The Hulk.  On the other hand, he is not terribly eloquent and is a bit juvenile.)

Today I had time to actually review the complaint and exhibits filed with the complaint, and here’s an image of the accused infringing goods:

Continue Reading Shop Tools by Marvel Comics?

–Sharon Armstrong, Attorney

Lest you think this post is just an excuse to post the ridiculously viral video of The Muppets singing Queen’s “Bohemian Rhapsody,” guess again.  There is a trademark lesson here.


Do I still have your attention?  The lesson is this – you, the consumer, don’t need to know what the source of a good or service is for that good or service’s mark to function as a mark.  All that matters is that mark is capable of signifying a single source, regardless of whether any consumers know what that single source is.

Case in point – when I saw this video, I thought of the late, great Jim Henson, who passed away from complications of pneumonia in 1990.  But there’s the rub – Mr. Henson hasn’t had a hand in The Muppets since his death (pun intended).  As much as I love The Muppets, I couldn’t for the life of me remember who – or what – is the source of The Muppets.  A bit of searching, and the answer was clear: the owner of The Muppets (and the MUPPETS family of trademark registrations) is the Muppets Studio, LLC (The Walt Disney Company).  In contrast, the JIM HENSON portfolio of marks is owned by the Jim Henson Company, which I believe is unaffiliated with Disney.  The fact that I still think of Jim Henson when Animal cries “Mama!” is irrelevant for the purposes of trademark law.  In the end all that matters is that the source of goods and services featuring Animal – whatever he happens to be crying – is the same source of goods and services featuring Miss Piggy, Fozze the Bear, Kermit the Frog, and the rest of The Muppets.