May 22, 2015

Batman and Rihanna: What happens when an unstoppable force meets an immovable object?

by Guest Blogger

Found this at a great blog (pirated thoughts), which features all sorts of exciting developments in the world of comic book trademark law. Rihanna filed a trademark application last summer for her real name "ROBYN" for "Providing on-line non-downloadable general feature magazines." The application sailed through the U.S. Patent and Trademark Office and was allowed without even an office action. Once a trademark application has been screened by an examining attorney at the USPTO, the application is published by the USPTO before it registers.

Publication provides the public with an opportunity to review and complain about a trademark application before it issues. D.C. Comics noticed the application and decided that the misspelling Robyn was an assault on the caped crusader's sidekick and would cause confusion because D.C. Comics sells, well, comics that portray Robin. Most likely, D.C. Comics has a service that reports to it whenever someone applies for trademark names similar to its own trademarks.

"Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds thereforâ¦"

Likelihood of Confusion

Most trademark oppositions are based on a claim that issuance of a trademark will create a likelihood of confusion for customers in the marketplace (i.e., customers looking for superhero magazines featuring Robin will instead find magazines featuring Robyn and become confused thinking that Robin stopped wearing a mask and had a dramatic surgery).



If a trademark is famous, meaning even your tax attorney has heard of it, then the mark's owner can oppose issuance of a similar mark (even for different services) where registration of the new mark would dilute by blurring the fame or strength of the famous mark (i.e., customers would no longer instantly think of Batman's sidekick, but also think of this other Robyn character).


Again if a trademark is famous, then the mark's owner can oppose issuance of a similar mark where the registration of the new mark would dilute the famous mark by tarnishing the famous mark (i.e., Robin fans and customers would be put off because of low quality or smutty magazines sold under the Robyn mark).

There you have it. Rihanna is Robyn and Batman isn't having it. A quick Google search, however, confirmed that the closest Rihanna has come to Gotham is Goth.

Of course Rihanna will have an opportunity to respond to D.C. Comics' opposition, the answer being due 40 days from the notice of opposition from the USPTO. The entire proceeding takes about a year to final decision.

Statistics on opposition proceedings can be found at the USPTO's website.

Wondering how the next D.C. Comic series, Batman, Robin, and Robyn will lookâ¦