Purveyors of T-shirts beware: before you invest in a design with a clever play on words or an adaptation of an iconic drawing, consider these two recent incidents that illustrate in divergent ways why you should have your proposed trademarks checked by counsel.
In the Central District of California, DC Comics sued T-shirt maker Mad Engine Inc. over a design incorporating the shield famously emblazoned on the chest of Superman but adding the text “DAD” inside. Mad Engine countered trademark infringement claims with a motion to dismiss based on a parody defense, arguing that its design commented “on the real-world futility and even pretentiousness of Superman and his Shield” in contrast with “DAD,” who “lacks any superpowers, but is a real-world hero to his kids.” The court however found that DC Comics properly plead a basis for finding likelihood of confusion, and that its complaint could survive to fight another day.
And just like a running back slipping through a defensive line, Seattle Seahawks star Marshawn Lynch appears to have slipped one by a USPTO trademark examiner with his application to register the phrase “I’m Just Here So I Won’t Get Fined” using a T-shirt for his specimen of use. The trademark registration was approved despite the fact that the USPTO’s own manual says:
"Slogans or phrases used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods."
This registration adds to Lynch’s burgeoning trademark portfolio, which includes his moniker “Beast Mode.” However, before you try either of the tricks used in these two cases at home, have a trademark attorney review your idea.