The Board [unsurprisingly, I think - ed.] tossed out this opposition to registration of the word-and-design mark shown immediately below, for "installation, maintenance and repair of cell phone related hardware," finding no likelihood of confusion with, and no likelihood of dilution of, several "'S' shield" marks associated with the "Superman" character. The Board found the marks, goods/services, and trade channels too different for purposes of likelihood of confusion, and as to the dilution claim it deemed the difference between the marks to be fatal. This blog post will attempt to hit the highlights of the 72-page opinion. DC Comics v. Cellular Nerd LLC, 2022 USPQ2d 1249 (TTAB 2022) [precedential] (Opinion by Judge Marc A. Bergsman).
Procedurally, DC Comics launched off on the wrong foot by citing numerous non-precedential TTAB decisions and by submitting several illegible exhibits. The Board made clear its displeasure. Substantively, the Board focused on three of DC Comics' registered marks: the two "S & Design" marks shown immediately below, for entertainment services, comics, clothing, and a few other mundane products, and the colorful design mark shown below right, for credit card services and customer loyalty rebate programs (collectively the "S" Shield marks).
Likelihood of confusion: The Board found the "S" shield marks to be inherently/conceptually strong and also commercially strong or famous, and therefore entitled to a broad scope of protection. However, although the "S" shield design marks are famous indicia of the Superman character and although licensed products bear those marks, those uses serve as collateral source identification rather than as primary source identifiers for the licensed products.
The Board was not persuaded that the applicant's services, on the one hand, and DC Comics' s entertainment-related goods and services and its array of licensed products, including cell phone cases and accessories, are similar and related. Moreover, the involved channels of trade are different: the applicant may render its services "from mobile units, brick and mortar stores, and, perhaps, through the mail, and Opposer's goods and services are offered online and through various retail locations." DC Comics failed to show an overlap in the channels of trade.
With respect to the marks, the Board found that the term CELLULARNERD.com dominates applicant's mark because it identifies the character superimposed over the letters "CN" in the diamond shield design. "This creates the commercial impression of a tech nerd ready to solve your cell phone problems in his persona as a tech nerd, as opposed to the letter "S" shield design marks symbolizing a specific superhero."
[C]onsumers may easily distinguish Applicant's mark from Opposer's "S" shield and design marks. Because Applicant's mark conveys the image of a tech-savvy, problem-solving nerd with a vastly different set of skills than Opposer's superhero, consumers will not view the marks in their entireties as sufficiently similar to cause them to mistakenly believe there is an association with Opposer.
The Board concluded that the differences in the marks outweigh their similarities. Because the involved goods and services are not related and are offered in different channels of trade to different classes of consumers, the Board found that applicant's mark for "installation, maintenance and repair of cell phone related hardware" services is not likely to cause confusion with DC Comics' "S" shield and design marks for goods and services in the entertainment field and a wide variety of collateral or merchandising products.
Dilution by blurring: The evidence established that the first two "S" shield design marks are famous for dilution purposes, and achieved fame before applicant's first use of its mark. However, the testimony and evidence did not prove the third mark to be famous for "issuance of credit cards; providing cash and other rebates for credit card use as part of a customer loyalty program" before applicant's first use of its mark. However, as with the Section 2(d) claim, the Board found the marks too dissimilar to support the dilution claim.
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TTABlogger comment: Who knew Superman was such a bully? PS: Judge Bergsman's opinions are always worth a full reading.
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