TTAB bats away ‘Gotham Batmen’ trademarks
The Trademark Trial and Appeal Board (TTAB) has upheld DC Comics’s opposition to trademark applications for the phrase ‘Gotham Batmen’.
In its 2-1 decision, the TTAB ruled that the two applications, covering networking services and softball entertainment, would cause a likelihood of confusion with DC Comics’s ‘Batman’ trademarks.
New York-based professional services group Gotham City Networking filed the use-based applications in 2009.
In its challenge DC Comics cited 13 registered US trademarks for ‘Batman’, covering services such as comic magazines, video games and dolls, and one mark for ‘Gotham City’, as the basis for its likelihood of confusion claim.
Furthermore, DC Comics cited the popularity of the “Batman” films directed by both Tim Burton and Christopher Nolan and produced by Warner Bros as evidence of the name’s fame.
The court documents cited a report estimating that DC Comics’s licensing deal with Warner Bros covering Batman branded goods generates around $250 million in annual sales.
But while Gotham City Networking argued that its applications covered different services to the ‘Batman’ marks, the TTAB said they would still cause confusion.
Judge Marc Bergsman, who wrote the majority opinion, issued on July 17, said: “Because opposer’s ‘Batman’ mark is famous and it has been licensed for use on a myriad of products, countless individuals have been exposed to opposer’s ‘Batman’ mark and to its use on or in connection with collateral products, including t-shirts and baseball balls and hats.
“Under these circumstances, individuals familiar with opposer’s ‘Batman’ marks and their associated goods and services, when confronted with applicant’s mark in connection with softball games and networking services, will consider such activities to be sponsored by or affiliated with opposer,” he added.
Gotham City Networking also argued that there had been no evidence of confusion between the marks and that the marks were in fact a parody, but the TTAB dismissed both those claims.
However, Judge Jyll Taylor, writing the dissenting opinion, said the fame of the ‘Batman’ marks was “primarily based on the public’s exposure to them in connection with a series of movies released by Warner Bros”.
“The majority exceeded its discretion when it attributed use by Warner Bros of the pleaded marks to inure to the benefit of opposer, DC Comics,” she said.
Taylor concluded that she did not find the ‘Batman’ marks famous on this basis and therefore cannot agree with the analysis that consumers would believe both marks “originate from the same source”.
Neither Gotham City Networking nor DC Comics had responded to a request for comment at the time of publication, but we will update the story should the companies get in touch.
