One Trademark, Two Owners

Since trademarks exist to tell consumers the source of goods, how can it be OK for two companies to use the same trademark?

Sometimes, using the same mark is NOT likely to lead to confusion:

  • Consumers are unlikely to be confused if the companies are in different fields. No one thinks DOVE® soap and DOVE® chocolate come from the same company.
  • Companies can also share a trademark geographically if they’re purely local. Tony’s Cleaners in Concord, NH is probably not the same as Tony’s Cleaners in Seattle, WA.

But what if two companies use:

  • the same trademark
  • for the same stuff
  • in the same market?

We recently saw an example of this: co-ownership of the trademark SUPER HERO by Marvel and DC Comics.

Another example is SWISS ARMY, which was used for decades by both Victorinox AG and Wegner, S.A.[1] That co-use was allowed because of some very specific circumstances:

Consumer confusion was not an issue because the quality was identical.

Wegner and Victorinox both made products to the specifications of the Swiss Army, so both products were of the same quality.

Consumers can know the source through other indicia. [2]

Victorinox pocketknives were sold as THE ORIGINAL SWISS ARMY KNIFE and Wegner’s were sold as THE GENUINE SWISS ARMY KNIFE. Each also used different versions of the Swiss cross on the knives:

Victorinox blow up.png Wenger blow up.png

If you think this is an extremely rare set of circumstances, you’re right. The rule that two companies can’t use the same trademark holds true, but there are occasional exceptions.

 

 

Big shout out to Bill, for suggesting this topic! What do you want to know about?

 

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[1] In 2005 Victorinox acquired Wegner, so the issue is no more.

[2] We saw this with SUPER HERO, too. Both Marvel and DC tended to use their “house brands” together with SUPER HERO.

If I Can’t Be a Superhero, Can I Use It As a Trademark?

Brooklyn. 1967. Ben Cooper, Inc. registers SUPER HERO for masquerade costumes.[1]

Meanwhile, in neighboring Manhattan . . .

Mego Corporation tries to register WORLD’S GREATEST SUPER HEROES for dolls.

Kablam!!!!!!

Ben Cooper leaps into action to oppose Mego’s application.

Weakened and unable to fend off Ben Cooper, Mego transfers its application to Marvel Comics Group.

Kerpow!!!!!!

Marvel emerges victorious and receives a registration.

Chicago. September 1982. Someone laces Tylenol tablets with potassium cyanide. Seven people die. With Halloween approaching, parents across the country fear tampering with treats and keep their kids home. Ben Cooper suffers as sales of costumes plummet. Weakened and close to death, Ben Cooper assigns its SUPER HERO registration to Marvel and DC Comics.

Recognizing that they are stronger sharing their SUPER HERO trademark rights, Marvel and DC transfer registrations they each own for SUPER HERO to joint ownership.[2]

Today, they continue to jointly own six live registrations for SUPERHERO for T-shirts, comic books, production services, and toy figures.[3]

The Trademark Office is strewn with the corpses of 200+ SUPER HERO applications and registrations for everything from slot machines and legal services to explosives and insecticides.

It seems nothing can stop the combined might of Marvel and DC.

But wait . . .

More recently, applications have been slipping through without even an opposition from Marvel and DC. There are now registrations for marks containing SUPER HERO for chiropractic services, fortunetelling, and even one for capes and T-shirts.

Have Marvel and DC lost their will to fight? Will Marvel and DC ever again rule the SUPERHERO trademark world? Tune in next time . . .

 

Big shout out to Bill B., for suggesting this topic! What do you want to know about?

 

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[1] Even if you’ve never heard of Ben Cooper, Inc. you’ve probably worn one of its costumes. In its heyday, Ben Cooper, Inc. produced kids’ Halloween costumes under licenses from companies like DC Comics, Mattel, The Children’s Television Workshop, and Disney.

[2] How can competitors co-own a registration? How does that work? Stand by for a post on that crazy issue coming soon to a blog near you.

Here are the SUPER HERO trademarks that DC and Marvel transferred to each other at the end of 1986:

Mark App Date Goods & Services Original Owner Status
SUPER HEROES 1982 Entertainment services DC Dead
SUPER HEROES 1982 Cookies Marvel Dead
SUPER HEROES 1981 Soap DC Dead
SUPER HERO 1980 Cake pans Marvel Dead
SUPER HEROES 1980 Games Marvel Dead
SUPER HEROES 1980 Linens DC Dead
SUPER HEROES 1980 Tote bags DC Dead
SUPER HEROES 1979 Comic books Marvel Live
SUPER HEROES 1976 Belts DC Dead
SUPER HEROES 1974 Toys Marvel Live
WORLD’S GREATEST SUPER HEROES 1972 Dolls Marvel Live

[3] Marvel and DC also co-own an application for SUPERHERO for entertainment services, but that application has been suspended since 2010 pending the disposition of an application for SUPERHEROE for entertainment services owned by Raynaldo Garza, which itself is subject to several office actions that refuse to register, in part because of registrations owned by Marvel and DC.

Each also individually owns registrations that include SUPERHERO. For example, Marvel owns MARVEL SUPER-HEROES.

Over the years, they have also jointly taken ownership of these applications and registrations following disputes:

COMPUTER SUPER HEROES Computer services Onetech Computer Consulting, Inc. Live
SUPERHEROES OF SERVICE Telecom services Glenwood Telecom Live
SUPERHERO Ice cream Driggs Farms Dead
SUPERHERO SCHOOL Educational services Philip and Noah Margo Dead