throbber
THIS OPINION IS NOT A
`PRECEDENT OF THE TTAB
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mailed:
`July 17, 2015
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`DC Comics
`v.
`Gotham City Networking, Inc.
`_____
`
`Opposition No. 91194716
`_____
`
`James D. Weinberger and Leo Kittay of Fross Zelnick Lehrman & Zissu, P.C. for DC
`Comics.
`
`Daniel West and David O. Klein of Klein Moynihan Turco LLP for Gotham City
`Networking, Inc.
`
`_____
`
`
`Before Taylor, Bergsman and Wolfson, Administrative Trademark Judges.
`
`Opinion by Bergsman, Administrative Trademark Judge:
`
`
`
`Gotham City Networking, Inc. (“Applicant”) filed two use-based applications
`
`for the marks GOTHAM BATMEN, in standard character form, and GOTHAM
`
`BATMEN and design, shown below,1
`
`
`1 Serial Nos. 77669398 and 77668420, respectively, filed on consecutive days in February
`2009. Applicant claimed February 1, 2006 as the date of first use of its mark anywhere and
`the date of first use of its mark in commerce for both classes of services in each of the
`applications.
`
`

`
`Opposition No. 91194716
`
`
`
`
`both for the services set forth below:
`
`
`General business networking referral services, namely,
`promoting the goods and services of others by passing
`business leads and referrals among group members, in
`Class 35; and
`Entertainment in the nature of amateur softball games,
`in Class 41.
`Applicant disclaimed the exclusive right to use the word “Gotham.”2
`
`
`
`DC Comics (“Opposer”) opposed the registration of Applicant’s marks on the
`
`grounds of likelihood of confusion under Section 2(d) of the Trademark Act of 1946,
`
`15 U.S.C. § 1052(d), and dilution by blurring and tarnishment under Section 43(c) of
`
`the Trademark Act, 15 U.S.C. § 1125(c).3 In its Second Amended Notice of
`
`Opposition, Opposer claimed ownership of the following registrations:
`
`
`
`1.
`
`Registration No. 3313612 for the BATMAN logo shown below, for, inter
`
`alia, toys and sporting goods, in Class 28;4
`
`
`2 “Gotham” is defined as “a journalistic nickname for New York City.” Dictionary.com based
`on the RANDOM HOUSE DICTIONARY (2013). Applicant’s notice of reliance Exhibit 9 (51
`TTABVUE 36). Citations to the record will be to TTABVUE, the docket history system for
`the Trademark Trial and Appeal Board.
`3 Opposer also pleaded that Applicant abandoned the use of its marks for the activities in
`both classes 35 and 41. However, because Opposer did not pursue those claims in its brief,
`we consider them withdrawn. Research in Motion Limited v. Defining Presence Marketing
`Group Inc., 102 USPQ2d 1187, 1189-90 (TTAB 2012); Swiss Watch International Inc. v.
`Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1734 n.4 (TTAB 2012).
`4 Registered October 16, 2007; Sections 8 and 15 affidavits accepted and acknowledged.
`
`
`
`2
`
`

`
`Opposition No. 91194716
`
`
`
`
`
`
`2.
`
`Registration No. 1221720 for the mark BATMAN, in typed drawing
`
`form, for “comic magazines,” in Class 16;5
`
`
`
`3.
`
`Registration No. 1652640 for the mark BATMAN, in typed drawing
`
`form, for “entertainment services, namely, television and animated cartoon
`
`programs,” in Class 41;6
`
`
`
`4.
`
`Registration No. 0856045 for the mark BATMAN, in typed drawing
`
`form, for clothing, including inter alia, t-shirts, hats, and warmup jackets, in Class
`
`25;7
`
`
`
`5.
`
`Registration No. 0858860 for the mark BATMAN, in typed drawing
`
`form, for toys and games, in Class 22;8
`
`
`
`6.
`
`Registration No. 2457655 for the mark BATMAN, in typed drawing
`
`form, for “entertainment in the nature of amusement park rides,” in Class 41;9
`
`
`
`7.
`
`Registration No. 0828412 for the mark BATMAN, in typed drawing
`
`form, for “lunch kits, vacuum bottles, combined plastic cups and straws, various
`
`types of bags for cosmetics, garments, toiletries, and the like,” in Class 2;10
`
`
`5 Registered December 12, 1982; second renewal.
`6 Registered July 30, 1991; second renewal.
`7 Registered September 3, 1968; second renewal.
`8 Registered October 22, 1968; second renewal.
`9 Registered June 5, 2001; renewed.
`
`
`
`3
`
`

`
`Opposition No. 91194716
`
`
`
`8.
`
`Registration No. 1861233 for the mark BATMAN THE RIDE, in typed
`
`drawing form, for “entertainment in the nature of an amusement ride,” in Class
`
`41;11
`
`
`
`9.
`
`Registration No. 1581659 for the BATMAN logo shown below, for “tank
`
`tops, shorts, t-shirts, hats, jackets, sweat shirts, pants, pajamas, sneakers,
`
`sunvisors,” in Class 25;12
`
`
`
`10. Registration No. 1581725 for the BATMAN logo shown below, for
`
`“flying discs, video game programs, toy doll figures, toy airplanes,” in Class 28;13
`
`
`
`
`11. Registration No. 2119266 for the BATMAN logo shown below, for a
`
`
`
`variety of books and paper products, in Class 16;14
`
`
`10 Registered May 9, 1967; second renewal.
`11 Registered November 1, 1994; renewed.
`12 Registered February 6, 1990; second renewal.
`13 Registered February 6, 1990; second renewal.
`14 Registered December 9, 1997; renewed.
`
`
`
`4
`
`

`
`Opposition No. 91194716
`
`
`
`12. Registration No. 3110604 for the BATMAN logo shown below, for a
`
`
`
`variety of books and paper products, in Class 16;15
`
`
`13. Registration No. 3326043 for the BATMAN logo shown below, for a
`
`
`
`wide variety of clothing, including shirts, t-shirts and hats, in Class 25;16 and
`
`
`14. Registration No. 3353156 for the mark GOTHAM CITY, in typed
`
`
`
`drawing form, for “toys and sporting goods, namely, games and playthings, namely,
`
`action figures and accessories therefor; toy vehicles; dolls; equipment sold as a unit
`
`
`15 Registered June 27, 2006; Sections 8 and 15 affidavits accepted and acknowledged.
`16 Registered October 30, 2007; Sections 8 and 15 affidavits accepted and acknowledged.
`
`
`
`5
`
`

`
`Opposition No. 91194716
`
`for playing a board game, a manipulative game, a parlor game and an action type
`
`target game,” Class 28.17
`
`
`
`Opposer also alleged ownership and common law use of BATMAN and
`
`composite BATMAN and GOTHAM-formative marks, and the logos set forth below
`
`for a “vast array of goods … including but not limited to comic books, motion
`
`pictures, television shows … baseball jerseys, baseball caps, baseballs, baseball
`
`bats, and baseball gloves.”18
`
`
`
`
`
`
`
`
`17 Registered December 11, 2007; Sections 8 and 15 affidavits accepted and acknowledged.
`18 Second Amended Notice of Opposition ¶¶4-5 (27 TTABVUE 3-5).
`
`
`
`6
`
`

`
`Opposition No. 91194716
`
`
`
`Applicant, in its Amended Answer, denied the salient allegations in the
`
`Second Amended Notice of Opposition.
`
`I.
`
`The Record
`
`
`
`The record includes the pleadings and, by operation of Trademark Rule
`
`2.122(b), 37 C.F.R. § 2.122(b), Applicant’s application files. In addition, the parties
`
`introduced the following testimony and evidence:
`
`A.
`
`Opposer’s testimony and evidence.
`
`
`
`1.
`
`Notice of reliance on Internet documents pursuant to Safer Inc. v.
`
`OMS Investments, Inc., 94 USPQ2d 1031, 1038 (TTAB 2010) purportedly to show
`
`the history, development, notoriety and fame of the BATMAN character and the
`
`BATMAN and GOTHAM marks;19
`
`
`
`2.
`
`Two notices of reliance on printed publications pursuant to 37 CFR §
`
`2.122(e) purportedly to show the history, development, notoriety, strength and fame
`
`of the BATMAN character and the BATMAN and GOTHAM marks;20
`
`
`
`3.
`
`Testimony deposition of Michael Gibbs, Senior Vice President of
`
`Licensing and Business Development for Warner Brothers Consumer Products, Inc.,
`
`
`19 Opposer’s Exhibit Nos. 1-40 (44 TTABVUE). Opposer has relied extensively on documents
`printed from the Internet. Such documents are admissible only to show what has been
`printed, not the truth of the matter printed therein. Safer Inc. v OMS Investments, Inc., 94
`USPQ2d at 1040. For example, The New York Times news articles reporting box office
`receipts is evidence that The New York Times published specific box office receipts on
`certain dates, not that those were the actual box office receipts.
`20 Opposer’s Exhibit Nos. 41-44 (45 TTABVUE) and Nos. 45-46 (46 TTABVUE).
`
`
`
`7
`
`

`
`Opposition No. 91194716
`
`Opposer’s representation agent for the licensing of Opposer’s intellectual property,
`
`including the BATMAN marks and batwing logos, with attached exhibits;21 and
`
`
`
`4.
`
`Opposer properly made its pleaded registrations of record by
`
`submitting copies of those registrations printed from the electronic database records
`
`of the USPTO showing the current status and title of the registrations pursuant to
`
`37 CFR § 2.122(d)(1).
`
`B.
`
`Applicant’s testimony and evidence.
`
`
`
`1.
`
`Notice of reliance on Internet documents submitted under Safer
`
`purportedly to show “1) the unlikelihood of consumer confusion; 2) the dissimilarity
`
`of the marks at issue; 3) the dissimilarity of the services at issue; and 4) the
`
`dissimilarity of the channels of trade and advertising at issue”;22 and
`
`
`
`2.
`
`Testimony deposition of Fred C. Klein, Applicant’s co-founder and
`
`President, with attached exhibits.23
`
`II.
`
`Standing
`
`
`
`Because Opposer has properly made of record its pleaded registrations,
`
`Opposer has established its standing. Cunningham v. Laser Golf Corp., 222 F.3d
`
`
`21 50 TTABVUE 11 – 12. The confidential version of the Gibbs deposition is docketed at 48
`TTABVUE. The publicly available version of the Gibbs deposition is docketed at 50
`TTABVUE.
`Warner Bros. Consumer Products is the licensing arm of Warner Bros. Studios. It acts as
`Opposer’s licensing agent for Opposer’s intellectual property, including, inter alia,
`BATMAN. 50 TTABVUE 11-12.
`22 Applicant’s Exhibit Nos. 1-10 (51 TTABVUE).
`23 52 TTABVUE.
`
`
`
`8
`
`

`
`Opposition No. 91194716
`
`943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina
`
`Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
`
`III. Priority
`
`
`
`Because Opposer has properly made of record its pleaded registrations,
`
`Section 2(d) priority of use is not an issue in the opposition as to the marks and the
`
`goods and services covered by the pleaded registrations. King Candy Co. v. Eunice
`
`King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
`
`
`
`Opposer used BATMAN as a mark identifying a series of movies since 1989.24
`
`Fred Klein testified that Applicant first used its two BATMEN marks on February
`
`
`24 44 TTABVUE 14 and 17. The evidence comprises news articles from 1989 about the
`BATMAN movies produced by Warner Brothers Studios. As indicated above, Warner Bros.
`Consumer Products is the licensing arm of Warner Bros. Studios. 50 TTABVUE 11. Warner
`Bros. Consumer Products also “acts as [Opposer’s] representation agent … for the licensing
`of [Opposer’s] intellectual properties,” (50 TTABVUE 11-12), including, inter alia,
`BATMAN. While there was no evidence expressly explaining the relationship between
`Opposer and Warner Bros. Studios, because Warner Bros. Consumer Products acts as
`licensing agent for both Warner Bros. Studios and Opposer, we find that logic dictates that
`there must be some sort of licensing relationship between Opposer and Warner Bros.
`Studios regarding the use of the BATMAN marks and character. In further support of our
`finding that there is a licensing relationship between Opposer and Warner Bros. Studios,
`we take note of the “Batman Begins Style Guide” (Gibb’s Deposition Exhibit 6; 50
`TTABVUE 118-265), a document written by Warner Bros. Consumer Products for Opposer
`in anticipation of the “Batman Begins” movie (50 TTABVUE 36). The “Introduction”
`explains that the “Batman Begins” movie is “the inspiration for the most dynamic
`merchandising program of 2005. … The drama and intensity of Batman’s original story,
`fully explored onscreen for the first time, has been translated into action-packed character
`artwork supported with a full array of graphic elements.” Potential licensees are instructed
`to contact Opposer’s Licensee Services “to discuss commissioning custom art because “[a]ll
`custom art must be provided by [Opposer].” 50 TTABVUE 123. It stretches credulity to
`assert that Opposer and Warner Bros. Consumer Products would work so closely together
`marketing products derived from the Warner Bros. Studios “Batman Begins” movie unless
`there was a relationship between Opposer and Warner Bros. Studios. Moreover, although
`Applicant cross-examined Michael Gibbs, Senior Vice President of Licensing and Business
`Development for Warner Brothers Consumer Products, Inc., regarding the relationship
`between Opposer and Warner Bros. Consumer Products, Applicant did not challenge the
`fame of the BATMAN marks or argue that the renown of the BATMAN marks derived
`through the movies did not inure to the benefit of Opposer.
`9
`
`
`
`

`
`Opposition No. 91194716
`
`1, 2006 for the services identified in Applicant’s applications.25 Thus, Opposer has
`
`priority of use for its BATMAN mark in connection with a series of movies prior to
`
`any use by Applicant of its marks.26
`
`IV. Likelihood of Confusion
`
`
`
`Our determination under Section 2(d) is based on an analysis of all of the
`
`probative facts in evidence that are relevant to the factors bearing on the issue of
`
`likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
`
`USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315
`
`F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
`
`A.
`
`Fame of Opposer’s Marks.
`
`
`
`This du Pont factor requires us to consider the fame of Opposer’s marks.
`
`Fame, if it exists, plays a dominant role in the likelihood of confusion analysis
`
`because famous marks enjoy a broad scope of protection or exclusivity of use. A
`
`famous mark has extensive public recognition and renown. Bose Corp. v. QSC Audio
`
`Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v.
`
`M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker
`
`Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
`
`Cir. 1992).
`
`
`
`Fame may be measured indirectly by the volume of sales and advertising
`
`expenditures of the goods and services identified by the marks at issue, “the length
`
`
`25 52 TTABVUE 29-30.
`26 Opposer did not introduce any evidence or testimony regarding its first use of the
`batwing logos or any GOTHAM-formative marks in connection with a series of movies.
`
`
`
`10
`
`

`
`Opposition No. 91194716
`
`of time those indicia of commercial awareness have been evident,” widespread
`
`critical assessments and through notice by independent sources of the products
`
`identified by the marks, as well as the general reputation of the products and
`
`services. Bose Corp., 63 USPQ2d at 1305-1306 and 1309. However, raw numbers
`
`alone may be misleading. Thus, some context in which to place raw statistics may
`
`be necessary (e.g., the substantiality of the sales or advertising figures for
`
`comparable types of products or services). Bose Corp., 63 USPQ2d at 1309.
`
`
`
`There is no evidence demonstrating the marketplace strength of Opposer’s
`
`batwing logos or GOTHAM-formative marks. In regard to the batwing logos and the
`
`GOTHAM-formative marks, we note that because of the extreme deference that we
`
`accord a famous mark in terms of the wide latitude of legal protection it receives,
`
`and the dominant role fame plays in the likelihood of confusion analysis, it is the
`
`duty of the party asserting that its mark is famous to clearly prove it. Leading
`
`Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
`
`Accordingly, we focus instead on the fame of the BATMAN word marks.
`
`
`
`The evidence shows that BATMAN is an iconic American comic book,
`
`television and movie hero. In fact, Applicant’s President, Fred Klein, testified that
`
`“everybody probably knows about Batman.”27
`
`Q.
`
`I think you testified previously that everyone heard
`about Batman?
`*
`
`*
`
`*
`
`
`27 52 TTABVUE 33.
`
`
`
`11
`
`

`
`Opposition No. 91194716
`
`
`A.
`
`Q.
`
`A.
`Q.
`A.
`
`It’s a prominent name. I’m not going to dispute
`that.
`And you adopted the Gotham Batmen name
`because of Batman, correct?
`Partially.
`As a reference to Batman, correct?
`As I said before, I had an aha moment that softball
`uses a bat, Gotham is the name of our networking
`group. It just came to me if you are going to play
`softball and use a bat, you should be the Batmen.
`But also in part that Batman the character
`operates from Gotham?
`Yes, correct.
`And the logo that you applied to register the
`Gotham Batmen
`logo,
`the subject of
`this
`proceeding, that also makes a reference to Batman,
`correct?
`Correct. It doesn’t have the hood or the cowl. It has
`if you look at it upside down, it has a tongue-in-
`cheek reference to a five-fingered fielder’s mitt, but
`obviously, it could be a spider web; and obviously, it
`evokes Batman, yes.28
`The first BATMAN comic was published in 1939, one year after the debut of
`
`Q.
`
`A.
`Q.
`
`A.
`
`
`
`SUPERMAN comic books.29
`
`Batman wasn’t as strong as Superman, but he was much
`more agile, a better dresser and had better contraptions
`and a cooler place to live.
`He lived in the Batcave, drove the Batmobile, which had a
`crime lab and a closed circuit television in the back, and
`
`
`28 52 TTABVUE 50-51.
`29 44 TTABVUE 26-27.
`
`
`
`12
`
`

`
`Opposition No. 91194716
`
`
`owned a Batplane. He also kept a lot of tools in his utility
`belt, including knockout gas, a smoke screen and a radio.
`“Since he had no superpowers, he had to rely only on his
`physical and mental skills,” said Allen Asherman, the
`librarian at DC Comics.
`Batman’s fictional history, which was created years after
`the character himself, was dark. According to Batlegend,
`under his cape Batman was really a man named Bruce
`Wayne who, as a child, watched as his parents were
`murdered in the dark streets of New York City while they
`were walking home from a movie. Traumatized, young
`Bruce vowed to avenge their deaths by punishing
`criminals everywhere. He studied criminology, trained his
`body and assembled an assortment of tools to fight crime
`in Gotham. One night, startled by a bat outside his
`window, he made up his mind to dress up as a bat to put
`fear into the “cowardly and superstitious” hearts of
`criminals.30
`See also the ENCYCLOPAEDIA BRITANNICA entry for Batman.31
`
`
`
`“Batman was an immediate sensation.”32 The character flourished in the
`
`1940’s appearing in multiple comic book series (e.g., Detective Comics, Batman, and
`
`World’s Finest Comics).33 After a down period in the 1950’s, during which time the
`
`comics, while less popular, were continuously available, the ABC television network
`
`premiered a live-action Batman television series in 1966 starring Adam West and
`
`Burt Ward.34
`
`
`30 Id.
`31 44 TTABVUE 157-158.
`32 44 TTABVUE 157. That BATMAN has an encyclopedia entry is some indicia of the
`character’s renown.
`33 Id.
`34 Id.
`
`
`
`13
`
`

`
`Opposition No. 91194716
`
`
`Batman bubbled with flashy costumes and sets (at a time
`when colour television was relatively new), pop-art sound-
`effect graphics and guest appearances by popular
`celebrities as villains. The show was an immediate hit,
`spawning an unprecedented wave of Bat-merchandise.
`The Batman newspaper strip resumed, and a theatrical
`movie was churned out for the summer of 1966.35
`In 1989, Tim Burton directed a Batman movie that was a huge success.
`
`
`
`The New York Times (April 9, 1989)
`TIM BURTON, BATMAN AND THE JOKER
`*
`*
`*
`Although “Batman” doesn’t open until late June, a widely
`distributed trailer has already given millions of American
`moviegoers a taste the film’s darkly elegant style. The
`most talked about “coming attraction” in recent memory,
`it elicits applause and often cheers with its succession of
`electrifying images: Gotham City in post-modern decay;
`the sleek black contours of the Batmobile and Batwing
`(the Caped Crusader’s airplane); the hero himself flitting,
`batlike, from the deep shadows into a pool of sulphurous
`light.36
`
`_____
`
`The New York Times (July 4, 1989)
`‘Batman’ Sets Sales Record: $100 Million in 10 Days
`Inexorably swooping down on movie audiences for the
`second weekend
`in a row, “Batman” continues to
`dominate the box office. The movie broke another record
`on Sunday. In just 10 days, the movie, from Warner
`Brothers, has sold $100.2 million worth of tickets,
`breaking the record of “Indiana Jones and the Last
`Crusade,” which reached $100 million on its 19th day.37
`
`
`35 Id. at 158.
`36 44 TTABVUE 9.
`37 44 TTABVUE 14.
`
`
`
`14
`
`

`
`Opposition No. 91194716
`
`
`
`The success of
`
`the 1989 BATMAN movie
`
`revitalized BATMAN
`
`merchandise.38 Success bred success and more BATMAN movies were made each
`
`setting box office records.
`
`The New York Times (June 22, 1992)
`Batman Is Back, and the Money Is Pouring In
`Batman has indeed returned. The newly opened sequel,
`“Batman Returns,” broke box office records over the
`weekend and is poised to turn into one of the largest
`grossing films ever.
`Executives at Warner Brothers, which produced and
`distributed the dark, perverse and hugely expensive
`comedy, said today that the movie would gross a
`staggering $46.5 million for the weekend, a record. The
`previous weekend record was held by “Batman,” the 1989
`film that hauled in $42.7 million and then went on to be
`the sixth-biggest-grossing film in history.
`Tom Semel, the president of Warner Brothers Inc., said in
`an interview: “It’s clear that the chemistry in and around
`this movie -- the subject matter, the characters, the look
`of the film -- appeals to children, to people in high school,
`to adults, male and female. The film has become an event.
`People want to get out of the house and see this movie.39
`_____
`The New York Times (June 26, 1995)
`A Big Weekend For ‘Batman’
`The film “Batman Forever,” after blazing a box-office
`record for its opening weekend, cooled this past weekend
`but still became the first film this year to take in $100
`million.
`
`
`38 44 TTABVUE 158.
`39 44 TTABVUE 21.
`
`
`
`15
`
`

`
`Opposition No. 91194716
`
`
`During its opening weekend, June 16 to 18, the Warner
`Bros. film grossed $52.8 million, surpassing the previous
`record holder, “Jurassic Park,” by $5.8 million. Total
`earnings so far, using actual figures through Saturday
`and projections for yesterday, were $105.9 million.
`*
`*
`*
`“Batman Forever,” is the third film about the Caped
`Crusader, who earlier found fame in comic books, on
`television and even as a ride at Six Flags Great
`Adventure theme parks.40
`_____
`Bloomberg website (Bloomberg.com) (September 4, 2008)
`Batman’s Box Office Rises with ‘Titanic’
`“The Dark Knight,” the latest chapter in the Batman film
`saga, took 30 days to become No. 2 in U.S. box office
`history. It joined the other top four-earners, “Titanic,”
`“Star Wars” and “Shrek 2” …
`Time Warner’s film earned $471.5 million in the month
`starting July 18 … 41
`
`_____
`CNN.com/entertainment (cnn.com) (January 8, 2009)
`‘The Dark Knight’ wins big at People’s Choice Awards
`“The Dark Knight” took home top honors at the People’s
`Choice Awards Wednesday night, walking away with five
`awards.
`The movie, which won high praise and acclaim from
`critics and fans, won the award for favorite movie,
`favorite action movie, favorite cast, favorite on screen
`
`
`40 44 TTABVUE 160.
`41 44 TTABVUE 58.
`
`
`
`16
`
`

`
`Opposition No. 91194716
`
`
`match-up (Christian Bale and Heath Ledger) and favorite
`superhero (Christian Bale as Bruce Wayne/Batman).42
`_____
`Business Insider (July 20, 2012)
`‘Dark Knight Rises’ Scores Second Highest-Grossing
`Midnight Opening
`Midnight box-office records were no match for Batman.
`According to The Wrap, “The Dark Knight Rises” easily
`swooped past “The Avengers” midnight earnings with
`$30.6 million at the box office, making it the second
`highest-grossing midnight opening in history.43
`_____
`Forbes (September 9, 2012)
`‘The Dark Knight Rises’ Tops $1 Billion, Surpasses ‘The
`Dark Knight’
`Despite early concerns that it was “underperforming”
`after an opening weekend that didn’t meet realistic
`expectations, Christopher Nolan’s trilogy-ending Batman
`epic The Dark Knight Rises rose above those early doubts
`and has now entered the elite club of films with more
`than $1 billion in worldwide box office to their name.
`*
`*
`*
`Domestically, however, The Dark Knight still has the
`upper hand, with $533 million compared to the most
`recent film’s $33 million tally.44
`According to the IMDb website (imdb.com), the IMDb list of all-time best
`
`
`
`USA box office receipts (as of September 17, 2013) has two BATMAN movies in the
`
`
`42 44 TTABVUE 65.
`43 44 TTABVUE 104.
`44 44 TTABVUE 124.
`
`
`
`17
`
`

`
`Opposition No. 91194716
`
`top ten: “The Dark Knight” (2008) is listed as number 4 with $533,316,061 in box
`
`office receipts and “The Dark Knight Rises” (2012) is listed as number 7 with
`
`$448,130,642 in box office receipts. “Batman” (1989) is listed as number 75 with
`
`$251,188,924 in box office receipts.45
`
`
`
`Michael Gibbs, Senior Vice President of Licensing and Business Development
`
`for Warner Brothers Consumer Products, Inc., Opposer’s representation agent for
`
`the licensing of Opposer’s intellectual property, corroborated the success of the
`
`BATMAN movies.
`
`Q.
`
`And just looking at the most recent three Batman
`movies [BATMAN BEGINS, DARK KNIGHT, and
`DARK KNIGHT RISES], can you tell us what your
`understanding is of the box office performance of
`each movie?
`All three movies were highly successful, and the
`most recent Dark Knight Rises eclipsed a billion
`dollars in worldwide box office.46
`One Forbes magazine writer for arts and entertainment selected the
`
`A.
`
`
`
`BATMAN films “The Dark Knight Rises” as the number one comic book superhero
`
`movie and “The Dark Knight” as the number three comic book superhero movie.47
`
`Forbes (August 22, 2012).
`
`
`
`In 1992, director Tim Burton launched the animated television series
`
`Batman: The Animated Series. That show was broadcast through 1995. According
`
`to the ENCYCLOPAEDIA BRITANNICA,
`
`
`45 44 TTABVUE 134 – 135.
`46 50 TTABVUE 57.
`47 44 TTABVUE 119-120.
`
`
`
`18
`
`

`
`Opposition No. 91194716
`
`
`Batman: The Animated Series set a new standard for
`storytelling in the Batman universe. The series – which
`was marked by the mature tone of its plotlines, its
`distinctive colour palette and Art Deco visuals, and the
`outstanding caliber of its voice actors – reimagined
`villains such as Mr. Freeze and the Riddler, and
`introduced fan-favourite character Harley Quinn as the
`Joker’s sidekick. The show earned four Emmy Awards
`and exerted a profound influence on later depictions of
`Gotham City and its inhabitants.48
`Further demonstrating Opposer’s claim that the BATMAN character is
`
`
`
`known as an iconic American hero is the auction price for original BATMAN comics.
`
`The New York Times (December 19, 1991)
`Holy Record Breaker! $55,000 for First Batman Comic
`The superhero at Sotheby’s first auction of comic books
`yesterday was Harold M. Anderson. … Mr. Anderson
`bought many of the most important properties and paid a
`record price at auction for a comic book with his $55,000
`purchase of a copy of Detective 27, the 1939 issue in
`which Batman appeared for the first time.49
`_____
`The New York Times (February 26, 2010)
`Arts Beat
`Batman’s First Appearance at a Bruce Wayne Price
`*
`*
`*
`On Monday, the $1 million sale of a copy of Action Comics
`No. 1, which features the first appearance of Superman
`set a record for the sale of a comic book. But it was short-
`lived.
`
`
`48 44 TTABVUE 158.
`49 44 TTABVUE 19.
`
`
`
`19
`
`

`
`Opposition No. 91194716
`
`
`On Thursday, a copy of Detective Comics No. 27, the first
`appearance of Batman from 1939, sold for $1,075,500.50
`BATMAN also stakes its claim to the bestseller list.
`
`The New York Times (July 6, 2012)
`Arts Beat
`Graphic Books Best Sellers: Five Batman Books Crowd
`the Hardcover List
`For a character who has been around for more than 70
`years, Batman is looking awfully spry. The caped
`crusader stars in five of the Top 10 books on the
`hardcover best-seller list this week, including “Batman:
`The Black Glove,” a deluxe collected edition that enters
`the list at No. 2.51
`Michael Gibbs testified as follows:
`
`
`
`
`
`Q.
`
`A.
`
`
`
`
`
`Can you describe generally the types of products
`licensed by D.C. Comics that bear the Batman
`trademark?
`Batman is our largest and most extensive licensing
`program. Our program has probably – we have
`license[s] for the most product categories ranging
`from apparel, t-shirts, sleepwear, underwear,
`shoes, to toys with action figures, and sports
`equipment, to hard lines category like bedding and
`notebooks and note pads.
`And we’ve also, in terms of not hard physical
`product, we have also have themed entertainment
`area that does a Batman live arena show.
`So we have - - it’s our most extensive licensing
`program.52
`
`
`50 44 TTABVUE 79. We make no finding as to whether the auction price of their first comics
`has any bearing as to who would win in a fight between SUPERMAN and BATMAN.
`51 44 TTABVUE 95.
`52 50 TTABVUE 18-19.
`
`
`
`20
`
`

`
`Opposition No. 91194716
`
`
`
`On behalf of D.C. Comics, Warner Brothers Consumer Products licenses the
`
`BATMAN trademark on “150 different product categories of which there are subsets
`
`within those categories.”53 This translates into royalties based on the sale of
`
`BATMAN and BATMAN logo-branded goods that are substantial by any means.54
`
`The Licensing Letter estimate of licensing revenues reports that BATMAN is the
`
`18th rated licensed property generating $250 million in retail sales in the U.S. and
`
`Canada in 2010.55
`
`
`
`The marketing strength of the BATMAN brand is discussed in the following
`
`news article in Forbes magazine (July 2012) which discusses how the BATMAN
`
`merchandise helped Mattel:
`
`Mattel Sees Brightened Profits from Batman, Barbie
`Mattel shares rallied today after the company’s quarterly
`profits flew past analyst’s expectations. A bright second
`
`
`53 50 TTABVUE 20. Mr. Gibbs also testified that in the year when a BATMAN movie is
`released, there are in excess of a million SKUs at retail in the U.S. 50 TTABVUE 21.
`However, Opposer did not explain what that means and, therefore, it has no bearing on our
`decision.
`54 50 TTABVUE 682 – 684. The royalty revenues generated by the sale of BATMAN and
`BATMAN logo-branded goods was designated as confidential and, therefore, may only be
`referenced in general terms.
`55 45 TTABVUE 244-251. The Licensing Letter provides to its subscribers “estimates of
`retail sales of licensed merchandise by property type and product category.” 45 TTABVUE
`246. The Licensing Letter looks “exclusively at consumer products that are licensed to third
`parties for manufacture and distribution, and where the manufacturer is paying a royalty
`on the goods sold.” Id. at 245. “These estimates are developed through a combination of
`surveys; interviews with licensors, licensees, agents, and retailers; analysis of annual
`reports, royalty income and data from publicly held companies; corporate sales information
`from websites; press releases; and articles. Executives at the licensors of properties listed
`were given an opportunity to review and comment on the list so far as their own and their
`competitor’s properties, as were selected industry experts.” Id. at 246.
`
`
`
`21
`
`

`
`Opposition No. 91194716
`
`
`quarter came on strong demand for its Batman: Dark
`Knight and Barbie toys.56
`According to Michael Gibbs, “we are continually consistently doing focus
`
`
`
`groups and other research on the awareness of the brand utilizing Q scores that are
`
`a known quantity within the industry.

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket