Emily Campbell Quoted in Bloomberg BNA’s Patent, Trademark & Copyright Journal on Trademarks and Likelihood of Confusion
On August 7, Bloomberg BNA covered DC Comics v. Gotham City Networking, Inc., T.T.A.B., No. 91194716, 7/17/15. The case involves a trademark application filed by Gotham City Networking Inc. for “Gotham Batmen” with a stylized bat-like logo to be used in networking referral services and “entertainment in the nature of amateur softball games.” According to Bloomberg, “DC Comics, which owns the rights to Batman and numerous trademarks related to the superhero, opposed the registration on dilution and likelihood of confusion grounds.” The Trademark Trial and Appeal Board ruled on July 17, that the use of the name “Gotham Batmen” was likely to cause confusion with a number of different marks owned by DC Comics.
Administrative Judge Jyll Taylor provided a dissenting opinion, noting that DC Comics had failed to establish that “Batman” was a famous mark, having not proven the connection between DC and Warner Bros. Studies. According to BloombergBNA, “[t]he majority had found “Batman” to be famous, largely because of the films.
Gotham City argued that its trademark constituted a parody. Dunlap Codding Shareholder Emily Campbell was quoted as saying that “for a parody defense to succeed in trademark law, the parodist has to walk a “fine line” between resembling the parodied mark and making a point…. [A] poster of a pregnant woman wearing a Girl Scout uniform with the Scouts’ slogan “Be Prepared” written underneath qualified as an example of an outrageous joke that worked as a trademark parody.” She explained that the “Batman” – “bat men” softball joke was not nearly as obvious and therefore did not bode well for Gotham City’s chances that its mark was a parody and would not cause confusion.
Campbell also said that Judge Taylor’s concerns were valid, and the majority’s famous mark analysis could be an issue on appeal. “The dissent is interesting because there does seem to be a hole in the evidence. The majority filled in the blanks to come to the conclusion that we all recognize the Batman name, but I think to adhere to the law [the board needed to make a fuller analysis.]”