In a non-precedential decision in DC Comics v Deanna Rivetti (Opposition 91219851, August 17 2017), the Trademark Trial and Appeal Board (TTAB) sustained an opposition to the registration of Application Number 86240703 for SUPER WOMAN OF REAL ESTATE for “real estate procurement for others” in Class 36 and held that the mark was likely to dilute DC Comics’ famous marks, including SUPERMAN (US Regs 1181536, 1216976, and 1218552), SUPERWOMAN (US Reg 3784483) and the Superman body suit.
The applicant, Deanna Rivetti, is a real estate agent licensed in the state of California and sought to register the mark in standard characters based on first use of the mark on August 2 2011. While the application was filed on December 19 2014 and Rivetti agreed to disclaim the term REAL ESTATE via an examiner’s amendment eight months later, the examiner did not issue a formal office action at any time during prosecution. Although the miscellaneous statement filed with her application asserted that “DC Entertainment, owner of the ‘Superwoman’ [mark]… has approved the ownership and use” of the mark, such a statement should not have been accepted as evidence of DC Entertainment/DC Comics’ consent to her use and registration of the mark in lieu of a formal letter of consent.
Despite her contention, DC Comics filed a notice of opposition on December 19 2014 based on an alleged likelihood of confusion with, and dilution of, its US registrations and common law rights. These rights include its famous family of SUPER-formative marks, such as SUPERMAN, SUPERGIRL, SUPERWOMAN, SUPER DOG AND SUPER FRIENDS, and the appearance of Superman in his blue bodysuit (and the appearance of Supergirl in her blue top) with the letter ‘S’ inside a five-sided shield on the chest and red cape, in connection with “literary and entertainment works” and “various goods and services”.
Before analysing the basis of opposition, the TTAB noted that Rivetti’s original and second specimens of use were insufficient as they did not display the SUPER WOMAN OF REAL ESTATE word mark sought to be registered (see above). Rather, they were filed with the specimen descriptions of “S for Super Woman” and “S= Super[,] W= Woman[, and t]he picture of the house = Real Estate,” respectively. The submission of the substitute specimen with the letters SW inside a five-sided shield occurred before the examination of the application; however, it is not clear what prompted the amendment. Nevertheless, the TTAB recommended the application be remanded back to the examining attorney for reexamination in the event Rivetti ultimately prevailed in the case.
Dilution by blurring
Dilution by blurring is an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of a famous mark”. Dilution may be likely, “regardless of the presence or absence of actual or likely confusion, of competition, or economic injury” (Section 43(c) of the Lanham Act, 15 USC Section 1125(c)).
The TTAB considered the elements that a plaintiff must prove in a board proceeding in order to prevail in a claim of dilution by blurring (Coach (101 USPQ 2d, 1723-24)) – namely, whether:
- the plaintiff owns a famous mark that is distinctive;
- the defendant is using a mark in commerce that allegedly dilutes the plaintiff’s famous mark;
- the defendant’s use of its mark began after the plaintiff’s mark became famous; and
- the defendant’s use of its mark is likely to cause dilution by blurring.
Rivetti conceded that DC Comics’ marks are famous and became so before her first use of the SUPER WOMAN OF REAL ESTATE mark of August 2 2011, as stated in her application. This admission and use of the mark in commerce satisfied the first, second and third elements of the claim as listed above.
With the first three elements satisfied, DC Comics was required to prove that Rivetti’s use of the SUPER WOMAN OF REAL ESTATE mark was likely to cause dilution by blurring.
The board observed that:
“dilution by blurring occurs when a substantial percentage of consumers, on seeing the junior party’s use of a mark in connection with her services, are immediately reminded of the famous mark and associate the junior party’s use with the owner of the famous mark, even if they do not believe that the services emanate from the famous mark’s owner.” (NY Yankees P’ship v IET Prods & Servs Inc, 114 USPQ2d 1497, 1506 (TTAB 2015)). (Citations omitted).
The TTAB considered the following six non-exhaustive factors that it must consider to determine whether a mark is likely to cause dilution by blurring (Section 43(c)(B)(i)-(vi) of the Lanham Act, 15 USC Section 1125(c)(B)(i)-(vi)):
- the degree of similarity between the mark or trade name and the famous mark;
- the degree of inherent or acquired distinctiveness of the famous mark;
- the extent to which the owner of the famous mark engaged in substantially exclusive use of the mark;
- the degree of recognition of the famous mark;
- whether the user of the mark or trade name intended to create an association with the famous mark; and
- any actual association between the mark or trade name and the famous mark.
With regard to the first element and Rivetti’s use of the mark, the board determined that the overall similarity of the marks was “immediately apparent”. While the board does not ordinarily examine an applicant’s trade dress when evaluating a word mark, the trade dress may provide evidence as to the commercial impression created by the mark. The applicant’s above use of the mark as shown on her Facebook page was found to “trigger consumers to conjure up” DC Comics’ famous marks, specifically the famous SUPERMAN mark and the appearance of Superman in his blue bodysuit with the letter ‘S’ inside a five-sided shield on the chest and red cape.
At the time of the decision, Rivetti had begun to use the image bearing the letters ‘SW’; however, the above image of the applicant wearing the famous Supergirl bodysuit and ‘S’ shield appeared on her website when DC Comics filed its notice of opposition. Interestingly, the applicant’s past and existing uses more closely resemble the appearance of Supergirl, in her blue top with the same letter ‘S’ inside a five-sided shield with a red skirt and cape, although the TTAB did not mention this in their decision.
The TTAB also found that DC Comics’ marks are inherently distinctive and Rivetti further admitted its marks are famous, which satisfied the second element.
As there was no evidence of third-party uses of marks similar to the SUPERMAN mark or the appearance of the Superman character, both of which are widely recognised, the board determined both the third and fourth elements were also satisfied.
Rivetti’s use of a blue bodysuit with the letters ‘SW’ inside a five-sided shield on the chest and a red cape were found by the board to prove the applicant’s intention to create an association with DC Comics’ SUPERMAN character and marks, thereby satisfying the fifth element of dilution by blurring. Notably, the TTAB again did not acknowledge the striking similarity of Rivetti’s use of a blue bodysuit and ‘SW’ shield to Supergirl’s bodysuit and shield.
Lastly, as the applicant acknowledged in her response to DC Comics’ interrogatories that “‘clients, other agents, brokers, and prospective clients’ have ‘referred directly or indirectly’” to DC Comics, DC Comics’ marks in connection with the Superman, Supergirl or Superwoman characters, and DC Comics’ marks in connection with her mark, the board found there had been actual association between Rivetti’s and DC Comics’ marks, thereby fulfilling the sixth element.
Having weighed all six factors in favour of DC Comics, the TTAB sustained the opposition and determined that DC Comics was entitled to judgment based on its claim of dilution by blurring and therefore did not need to additionally examine the likelihood of confusion claim. Rivetti’s Application 86240703 for SUPER WOMAN OF REAL ESTATE for “real estate procurement of others” in Class 36 was therefore refused.
Although Rivetti’s website and Facebook page (Deanna Rivetti Super Woman of Real Estate) continue to resolve and use the applied-for mark, she has not yet filed an appeal of the board’s decision. The deadline to appeal expires on October 19 2017.
It is difficult to evaluate whether DC Comics would have been successful on a claim of likelihood of confusion alone, as Rivetti’s use of the mark in relation to real estate services may have been sufficiently distinct from DC Comics’ use of its family of marks in relation to literary and entertainment works and their licensees’ use of the marks in connection with various goods and services, not including real estate, such that there is no likelihood of confusion as to the source of the respective goods and services.
While Superman can famously leap tall buildings in a single bound, it looks like he may now have the exclusive right to use his name to sell them too.