`PRECEDENT OF THE TTAB
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`Mailed:
`July 17, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
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`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.
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`Opinion by Bergsman, Administrative Trademark Judge:
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`
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`Gotham City Networking, Inc. (“Applicant”) filed two use-based applications
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`for the marks GOTHAM BATMEN, in standard character form, and GOTHAM
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`BATMEN and design, shown below,1
`
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`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.
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`Opposition No. 91194716
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`both for the services set forth below:
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`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
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`
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`DC Comics (“Opposer”) opposed the registration of Applicant’s marks on the
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`grounds of likelihood of confusion under Section 2(d) of the Trademark Act of 1946,
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`15 U.S.C. § 1052(d), and dilution by blurring and tarnishment under Section 43(c) of
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`the Trademark Act, 15 U.S.C. § 1125(c).3 In its Second Amended Notice of
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`Opposition, Opposer claimed ownership of the following registrations:
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`
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`1.
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`Registration No. 3313612 for the BATMAN logo shown below, for, inter
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`alia, toys and sporting goods, in Class 28;4
`
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`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.
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`2
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`Opposition No. 91194716
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`2.
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`Registration No. 1221720 for the mark BATMAN, in typed drawing
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`form, for “comic magazines,” in Class 16;5
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`3.
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`Registration No. 1652640 for the mark BATMAN, in typed drawing
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`form, for “entertainment services, namely, television and animated cartoon
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`programs,” in Class 41;6
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`4.
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`Registration No. 0856045 for the mark BATMAN, in typed drawing
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`form, for clothing, including inter alia, t-shirts, hats, and warmup jackets, in Class
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`25;7
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`5.
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`Registration No. 0858860 for the mark BATMAN, in typed drawing
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`form, for toys and games, in Class 22;8
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`6.
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`Registration No. 2457655 for the mark BATMAN, in typed drawing
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`form, for “entertainment in the nature of amusement park rides,” in Class 41;9
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`7.
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`Registration No. 0828412 for the mark BATMAN, in typed drawing
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`form, for “lunch kits, vacuum bottles, combined plastic cups and straws, various
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`types of bags for cosmetics, garments, toiletries, and the like,” in Class 2;10
`
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`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.
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`3
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`Opposition No. 91194716
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`8.
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`Registration No. 1861233 for the mark BATMAN THE RIDE, in typed
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`drawing form, for “entertainment in the nature of an amusement ride,” in Class
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`41;11
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`9.
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`Registration No. 1581659 for the BATMAN logo shown below, for “tank
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`tops, shorts, t-shirts, hats, jackets, sweat shirts, pants, pajamas, sneakers,
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`sunvisors,” in Class 25;12
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`
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`10. Registration No. 1581725 for the BATMAN logo shown below, for
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`“flying discs, video game programs, toy doll figures, toy airplanes,” in Class 28;13
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`11. Registration No. 2119266 for the BATMAN logo shown below, for a
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`variety of books and paper products, in Class 16;14
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`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.
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`4
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`Opposition No. 91194716
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`12. Registration No. 3110604 for the BATMAN logo shown below, for a
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`variety of books and paper products, in Class 16;15
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`13. Registration No. 3326043 for the BATMAN logo shown below, for a
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`wide variety of clothing, including shirts, t-shirts and hats, in Class 25;16 and
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`14. Registration No. 3353156 for the mark GOTHAM CITY, in typed
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`
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`drawing form, for “toys and sporting goods, namely, games and playthings, namely,
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`action figures and accessories therefor; toy vehicles; dolls; equipment sold as a unit
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`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.
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`5
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`Opposition No. 91194716
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`for playing a board game, a manipulative game, a parlor game and an action type
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`target game,” Class 28.17
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`Opposer also alleged ownership and common law use of BATMAN and
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`composite BATMAN and GOTHAM-formative marks, and the logos set forth below
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`for a “vast array of goods … including but not limited to comic books, motion
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`pictures, television shows … baseball jerseys, baseball caps, baseballs, baseball
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`bats, and baseball gloves.”18
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`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).
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`6
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`Opposition No. 91194716
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`Applicant, in its Amended Answer, denied the salient allegations in the
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`Second Amended Notice of Opposition.
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`I.
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`The Record
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`
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`The record includes the pleadings and, by operation of Trademark Rule
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`2.122(b), 37 C.F.R. § 2.122(b), Applicant’s application files. In addition, the parties
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`introduced the following testimony and evidence:
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`A.
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`Opposer’s testimony and evidence.
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`1.
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`Notice of reliance on Internet documents pursuant to Safer Inc. v.
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`OMS Investments, Inc., 94 USPQ2d 1031, 1038 (TTAB 2010) purportedly to show
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`the history, development, notoriety and fame of the BATMAN character and the
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`BATMAN and GOTHAM marks;19
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`2.
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`Two notices of reliance on printed publications pursuant to 37 CFR §
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`2.122(e) purportedly to show the history, development, notoriety, strength and fame
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`of the BATMAN character and the BATMAN and GOTHAM marks;20
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`3.
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`Testimony deposition of Michael Gibbs, Senior Vice President of
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`Licensing and Business Development for Warner Brothers Consumer Products, Inc.,
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`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).
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`Opposition No. 91194716
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`Opposer’s representation agent for the licensing of Opposer’s intellectual property,
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`including the BATMAN marks and batwing logos, with attached exhibits;21 and
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`4.
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`Opposer properly made its pleaded registrations of record by
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`submitting copies of those registrations printed from the electronic database records
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`of the USPTO showing the current status and title of the registrations pursuant to
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`37 CFR § 2.122(d)(1).
`
`B.
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`Applicant’s testimony and evidence.
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`
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`1.
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`Notice of reliance on Internet documents submitted under Safer
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`purportedly to show “1) the unlikelihood of consumer confusion; 2) the dissimilarity
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`of the marks at issue; 3) the dissimilarity of the services at issue; and 4) the
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`dissimilarity of the channels of trade and advertising at issue”;22 and
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`
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`2.
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`Testimony deposition of Fred C. Klein, Applicant’s co-founder and
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`President, with attached exhibits.23
`
`II.
`
`Standing
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`
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`Because Opposer has properly made of record its pleaded registrations,
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`Opposer has established its standing. Cunningham v. Laser Golf Corp., 222 F.3d
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`
`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.
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`8
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`Opposition No. 91194716
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`943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina
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`Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
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`III. Priority
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`
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`Because Opposer has properly made of record its pleaded registrations,
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`Section 2(d) priority of use is not an issue in the opposition as to the marks and the
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`goods and services covered by the pleaded registrations. King Candy Co. v. Eunice
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`King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
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`
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`Opposer used BATMAN as a mark identifying a series of movies since 1989.24
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`Fred Klein testified that Applicant first used its two BATMEN marks on February
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`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
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`Opposition No. 91194716
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`1, 2006 for the services identified in Applicant’s applications.25 Thus, Opposer has
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`priority of use for its BATMAN mark in connection with a series of movies prior to
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`any use by Applicant of its marks.26
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`IV. Likelihood of Confusion
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`
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`Our determination under Section 2(d) is based on an analysis of all of the
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`probative facts in evidence that are relevant to the factors bearing on the issue of
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`likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
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`USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315
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`F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
`
`A.
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`Fame of Opposer’s Marks.
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`
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`This du Pont factor requires us to consider the fame of Opposer’s marks.
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`Fame, if it exists, plays a dominant role in the likelihood of confusion analysis
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`because famous marks enjoy a broad scope of protection or exclusivity of use. A
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`famous mark has extensive public recognition and renown. Bose Corp. v. QSC Audio
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`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
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`Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
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`Cir. 1992).
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`
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`Fame may be measured indirectly by the volume of sales and advertising
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`expenditures of the goods and services identified by the marks at issue, “the length
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`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.
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`10
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`Opposition No. 91194716
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`of time those indicia of commercial awareness have been evident,” widespread
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`critical assessments and through notice by independent sources of the products
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`identified by the marks, as well as the general reputation of the products and
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`services. Bose Corp., 63 USPQ2d at 1305-1306 and 1309. However, raw numbers
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`alone may be misleading. Thus, some context in which to place raw statistics may
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`be necessary (e.g., the substantiality of the sales or advertising figures for
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`comparable types of products or services). Bose Corp., 63 USPQ2d at 1309.
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`
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`There is no evidence demonstrating the marketplace strength of Opposer’s
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`batwing logos or GOTHAM-formative marks. In regard to the batwing logos and the
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`GOTHAM-formative marks, we note that because of the extreme deference that we
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`accord a famous mark in terms of the wide latitude of legal protection it receives,
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`and the dominant role fame plays in the likelihood of confusion analysis, it is the
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`duty of the party asserting that its mark is famous to clearly prove it. Leading
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`Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
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`Accordingly, we focus instead on the fame of the BATMAN word marks.
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`
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`The evidence shows that BATMAN is an iconic American comic book,
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`television and movie hero. In fact, Applicant’s President, Fred Klein, testified that
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`“everybody probably knows about Batman.”27
`
`Q.
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`I think you testified previously that everyone heard
`about Batman?
`*
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`*
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`*
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`27 52 TTABVUE 33.
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`11
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`Opposition No. 91194716
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`
`A.
`
`Q.
`
`A.
`Q.
`A.
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`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.
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`A.
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`
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`SUPERMAN comic books.29
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`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
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`28 52 TTABVUE 50-51.
`29 44 TTABVUE 26-27.
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`12
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`Opposition No. 91194716
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`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
`
`
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`“Batman was an immediate sensation.”32 The character flourished in the
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`1940’s appearing in multiple comic book series (e.g., Detective Comics, Batman, and
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`World’s Finest Comics).33 After a down period in the 1950’s, during which time the
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`comics, while less popular, were continuously available, the ABC television network
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`premiered a live-action Batman television series in 1966 starring Adam West and
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`Burt Ward.34
`
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`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.
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`13
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`Opposition No. 91194716
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`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.
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`14
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`Opposition No. 91194716
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`The success of
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`the 1989 BATMAN movie
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`revitalized BATMAN
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`merchandise.38 Success bred success and more BATMAN movies were made each
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`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.
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`15
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`Opposition No. 91194716
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`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
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`Opposition No. 91194716
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`
`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
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`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
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`
`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
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`
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`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.