Trademarks an important way for businesses to market their goods to consumers, but sometimes it can be difficult to know whose intellectual property toes you're treading on. Here are six terms and concepts that companies claim to own, and some of them might surprise you.
For those who aren't familiar with this area of intellectual property, trademarks are words or images that individuals and businesses use to identify their products, services, etc. to consumers. (If you are familiar with trademarks, skip down to the good stuff.) The purpose of trademarks is so that consumers know that certain products and services are all coming from the same source. Trademarks reduce confusion in the marketplace; for example, if you buy a soda marked as "Coke" or "Coca-Cola," you know that you're buying a product sold by the Coca-Cola company. Sometimes multiple companies use the same trademark to market products or services in different industries, especially if those marks are suggestive or descriptive of the product. For example, there's a Budget car rental service and a Budget insurance company. But the courts frown on new trademarks that dilute existing unique trademarks; so don't go around marketing Coca-Cola sunglasses any time soon.
Trademarks aren't copyrights. Unlike copyrights, they don't come with an expiration date; rather, they have a "use it or lose it" provision. As long as you are using the trademark in association with your products and services, it's yours forever. The catch is that you have to enforce your trademark or risk losing it to another company or genericization. That's why Kimberly-Clark would really like you to stop using the word "kleenex" when you mean "facial tissue" and Adobe wishes you would stop using "photoshop" as a generic verb. Also, you can't use your trademark to suppress non-commercial speech. When various public interest groups began referring to the Reagan Administration's Strategic Defense Initiative as the "star wars" program, for example, Lucasfilm sued for trademark infringement. The US District Court for the District of Columbia ruled that Lucasfilm could not control the use of the phrase in a non-commercial context and couldn't prevent it from entering into the common parlance (Lucasfilm Ltd. v. High Frontier, 622 F.Supp. 931 (D.D.C. 1985)).
You can register a trademark, but many existing trademarks are unregistered. When you see the ® symbol, that means the trademark has been registered with a national trademark office (in the US, that would be the US Patent and Trademark Office). When you see the ™ (or, for services, the ℠) symbol, that means the trademark hasn't been registered, but has been associated with an individual or business because the individual or business uses it to market products or services. And just because someone owns a registered or unregistered trademark, that doesn't mean you can't challenge their use of that trademark.
I should probably add that I'm not an attorney, and none of this should be taken as legal advice. If you want to use any of these marks and have questions, please consult an intellectual property lawyer.
It makes sense that authors, publishing companies, video game developers, and movie studios would trademark the things that have made them famous, the things that they market and sell. (Some, like Harlan Ellison, have even trademarked their own names.) But some trademarks come with a more complicated history than others:
Ownership Claimed by: DC Comics and Marvel Comics
Jointly registered trademarks are rare (since generally trademarks indicate a single source of goods), but they're not unheard of, and DC and Marvel, after separately filing for trademarks, were jointly awarded registered trademarks on the phrases "super hero" and "super heroes." (They also share a trademark on the word "super-villains.") So what exactly does it mean that these two companies own the term "super hero," which is part of our common language and is actually a genre unto itself? It means that you can't market materials using the term "super hero." You can't title your comic book "Superhero Man" - in fact, Marvel and DC forced the publisher GeekPunk to change its flagship comic title from Super Hero Happy Hour to just Hero Happy Hour. You can't call your spandex-wearing toys "superhero action figures." You can, however, use the word "superhero" in a non-marketing context.
The term "super hero" didn't originate with comics. In fact, it was used as early as 1917 to describe accomplished public figures, and in 1934 to promote the Doc Savage radio program. In the decades before Marvel and DC's trademark applications, however, the term primarily, if not exclusively, came to describe a character with superhuman abilities. Once they were awarded the trademarks, the companies diligently monitored USPTO applications, and, whenever they saw a trademark they felt infringed upon their own, would request an extension to file opposition to the trademark application, indicating their intention to oppose it. This was usually enough to convince applicants to withdraw their applications. But while the companies may be vigilant in defending their marks, it's not clear that they're as diligent about preventing their genericization. Even Marvel and DC's own materials tend to treat the term "superhero" as a descriptive term rather than a unique trademark.
Bonus Round: The first known instance of the phrase "first contact" appears in William Jenkins' novelette First Contact (written under the pseudonym Murray Leinster). In 2000, Jenkins' heir sued Paramount Pictures to enjoin the studio from titling its movie Star Trek: First Contact, claiming a common law trademark on the term. In accepting Paramount's motion for summary judgment, the Honorable T. S. Ellis, III, noted that the term "first contact" is descriptive of humanity's first contact with alien life, and that "first contact" stories were a well documented subgenre. Since the term was commonly used in literature and criticism, the term was therefore generic and could not be trademarked. It would be interesting to see what would happen if Marvel and DC went to court over "super hero."
Ownership Claimed by: Lucasfilm
If you've ever looked closely at the bottom of a Motorola Droid ad, you'll notice this fine print at the bottom, "DROID is a trademark of Lucasfilm Ltd. and its related companies. Used under license." Lucasfilm holds the registered trademark on the word "Droid," not to mention trademarks on the phrases "Battle Droid" and "Destroyer Droid." What makes the "Droid" trademark so odd is that the word is just a shortened form of word "android," a term first used in the 18th century. It's not that you can't trademark ordinary words, but it's more difficult to protect descriptive and impossible to protect generic trademarks. (That's part of why the Sci-Fi Channel changed its name to Syfy.) To the best of my knowledge, no judge has ever ruled on the viability of or limitations on the Droid trademark, but Lucasfilm has been vigilant in enforcing it. (And it probably doesn't hurt that the word "Droids" frequently comes up in the Star Wars quote, "These are not the Droids you're looking for." Even when Pixar made The Incredibles, they asked for Lucasfilm's permission to name their robot the "Omnidroid," as a courtesy to Lucas.
Bonus Round: Wandering around the Internet, you'll occasionally hear that Lucasfilm attempted to trademark the word "Nazi." This comes from an Indiana Jones RPG published by TSR, which, per Lucasfilm's request, has a "™" after the word. No one in the US, however, holds a registered trademark on "Nazi." "Nazi Werewolves from Outer Space" is a different story, however.
Droid photo from Verizon Wireless.
Blue Police Box
Ownership Claimed by: British Broadcasting Corporation
The first police call boxes that resemble the modern-day TARDIS appeared in Scotland in 1929, 34 years before Doctor Who premiered. But, by the time the BBC filed for a trademark on the iconic police boxes in 1996, they had been phased out. In 1998, the Metropolitan Police challenged the BBC's application, claiming that it owned the trademark on police boxes. However, since no police agency ever registered a trademark on the police boxes, and in the time since the boxes had been phased out the general public only regularly saw police boxes on episodes of Doctor Who, the application was allowed to go forward (plus, the Metropolitan Police was ordered to pay the BBC £850 plus legal costs). That is how a once commonplace object became the trademarked property of the BBC. So, as cheeky as my top image is, you couldn't put it on a t-shirt and sell it.
Bonus Round: Okay, so the BBC is the only one who gets to sell blue police box toys and t-shirts, but what if the police box appears in a legitimate historical context? Maybe. Simon Bradshaw, a media law barrister at Cornwall Street Chambers, has an interesting blog post suggesting that a company might be able to sell model police boxes for model railroads.
Ownership Claimed by: Toho Studio
Do the creators of Godzilla really hold the trademark on any word ending in "zilla"? Probably not, given the number of active trademarks that contain those kaiju-evoking syllables. And when Toho Studios sued Sears for trademark infringement (Sears was selling garbage bags bearing the word "Bagzilla" along with a comic reptilian creature and the tagline "Monstrously Strong Bags), the case was dismissed because the products were unrelated and Sears' product was unlikely to cause market confusion. That hasn't stopped Toho from stomping across the IP landscape, sending cease and desist letters to Davezilla and Fingerzilla, which both paired the "-zilla" suffix with monstrous images. Although Toho has gotten some folks to decouple "-zilla" from dinosaurs and monsters, Toho might be all roar and no atomic breath on this one.
Bonus Round: Don't fret, Firefox fans. One of Toho's lawyers told Wired that they only go after companies profiting from the dino/-zilla combo. So they have no interest in going after the nonprofit Mozilla Foundation.
Ownership Claimed by: The J.R.R. Tolkien Estate
The J.R.R. Tolkien Estate owns numerous trademarks based on Tolkien's works, as well as registered trademarks on Tolkien's name. Last year, a fellow who sold buttons reading "While you were reading Tolkien, I was watching Evangelion" through Zazzle was contacted by Zazzle, who said that they were removing the buttons at the Tolkien Estate's request. Later, Zazzle restored the buttons, saying that they had been removed erroneously due to a miscommunication, but it shined a light on the estate's ownership of Tolkien's name and left lots of folks wondering where the line was. When are you invoking Tolkien the brand and when are you referring to Tolkien the man?
The estate also owns the right to publicity for Tolkien's name and image, which they used to challenge the publication of Steve Hillard's historical fiction book, Mirkwood: A Novel About JRR Tolkien. Eventually Hillard and the estate settled, with Hillard agreeing to make some changes to the book's appearance to make it look less like one of Tolkien's novels. A Mirkwood movie is in the works.
Bonus Round: Like any other trademark holder, the Tolkien Estate has to be vigilant about enforcing their trademarks. But some are stranger than others. In 2004, the estate issued a cease and desist letter to the owner of the domain Shiremail.com, claiming the estate owned the trademark on the word "shire." The word "shire," which means an administrative subdivision, such as a county, has been around since the 12th century.
Ownership Claimed by: Monster Cable Products
Okay, so this one is a doozy. Monster Cable Products owns more than 70 trademarks on the word "monster" after filing for its first trademark in 1980. In their quest to enforce their trademark, MCP has launched or threatened suits against Disney (for Monsters Inc.), Monster.com (note the link at the bottom of the page), and the TV show Monster Garage among others. MCP's justification for this aggressive enforcement is that their trademark is a "famous mark," and therefore worthy of protection from dilution. (An article in the Wall Street Journal made the analogy of Visa, which is a famous mark despite being a common word.)
The company ran into trouble, however, when it sued the Monster Mini Golf franchise. After receiving 200 angry customer calls, Monster Cable Products dropped the suit and agreed to pay up to $200,000 of Monster Mini Golf's legal fees. The suits didn't end there, however; Endgadget reported that several months after the Monster Mini Golf case settled, MCP filed suit against another company, Monster Transmission.
Photo for top image is actually of a police box, not a TARDIS. Blue police boxes are, however, ® BBC. Original photo by Green Lane from Wikimedia Commons, remixed right here at home. Creative Commons Attribution-Share Alike License attaches.
Ross D. Petty, 'The "Amazing Adventures" of Super Hero®,' The Trademark Reporter, Vol. 100 No. 3, May-June 2010.
Estate of William F. Jenkins v. Paramount Pictures Corp., 90 F. Supp. 2d 706, Mar. 20, 2000.
Toho Company Ltd v. Sears, Roebuck & Co., 645 F.2d 788, 1981.
David Kravets, 'Think Godzilla's Scary? Meet His Lawyers,' Wired Threat Level, Nov. 24, 2008.
Steve Stecklow, 'The Scariest Monster of All Sues for Trademark Infringement,' The Wall Street Journal, Apr. 4, 2009.