For a business that sold fictional characters with extraordinary or superhuman characters, would you say that SUPERHERO is a brand name or a common name?
Law firm files for SUPERHERO LAWYERS for legal services. Marvel and DC, co-owners of incontestable registrations for SUPERHERO, oppose. Notice of opposition, with funny drawings, reproduced below, as well as applicant’s motion to dismiss. Alas, ridiculousness tends not to be a winning argument for a motion to dismiss. Discussion of applicant’s dog as evidence of good faith here.
Trademark blog references to the SUPER HERO trademark over the years.
HT Ron Coleman.
I’m inclined towards the belief that genericide happens far less frequently than is believed (aspirin, escalator, zipper, yo-yo , thermos (with an asterisk) and very few others). Today’s NY Times ran an obituary of the inventor of the trampoline which makes the claim that George Nissen, added an ‘e’ to the Spanish word for diving board, trampolin, and registered the word as a trademark. Several other sources on the Internet repeat this.
I can find trademarks filed by Nissen and his company on TESS, but I can’t find a cancelled trademark for TRAMPOLINE covering ‘backyard tumblers’ owned by anyone. If you have info on the genericide of TRAMPOLINE, please share.
Plaintiff owns registrations for, among other marks, FRAGRANCENET and FRAGRANCENET.COM. Defendant moves to dismiss based on genericness. The only record here is the pleadings. A registered trademark is entitled to a (rebuttable) presumption that it functions as a trademark. This seems to me to be an impossible 12(b)(6) grounds for dismissal, unless the motion to dismiss is combined with something else that builds a record, such as a motion for a preliminary injunction. The Court notes:
In fact, at oral argument, both sides state that, based upon their research (which is consistent with the Court’s independent research), they were aware of no case ever in this Circuit where a court has, at the motion to dismiss stage, lacking an evidentiary record, dismissed a trademark claim on the grounds that a registered product or service name . . .was generic as a matter of law.”
Well, the motion still delayed the case 6 months.
Decision Fragrance Net Generic MTD
Long-time friend of the Trademark Blog, Pam Chestek, at her new blog, Property, Intangible, has written a genericism survey that she’d like you all to take.
Consumer Law & Policy Blog: “Can the RNC forbid the use of an elephant or “GOP” to identfy Republicans?“:
Although these references have been in popular use since the 1870’s, and owe more to Thomas Nast than to the Republicans themselves, back in the 1997 and 1995, respectively, the RNC trademarked the initials “GOP” and a stylized elephant showing three stars across its body. Relying on these trademarks, the RNC has been trying to suppress the use of the initials or an elephant to refer to Republicans generally, such as in the images that appear above and on the left.
Further to our previous post on the verbing of trademarks (as in, I Tivo’ed the show, or I Zappos at work), naming blog Away With Words discusses the issue from a marketing perspective and makes the points that clients often want precisely that: verbable names.