Today’s blog post requires us to go all the way back to 2013. While Lorde was still topping the charts with her single “Royals” and “Bioshock Infinite” was still enjoying the success of its release, Marvel was taking on an “uncanny” confusingly similar trademarks being registered with the USPTO.
Specifically, on May 22, 2013, Marvel filed a notice of opposition against a mark registered by Dynamite Characters, LLC located in Beverly Hills, California. Dynamite Characters originally filed its application to register the UNCANNY mark for use in the comic book and graphic novel industry on August 15, 2012. At the time, Dynamite Characters was preparing to publish the mystery-themed crime comic, “Uncanny,” which features a hero who is able to absorb the talents of others.
Marvel claimed that it had been utilizing a variation of the UNCANNY mark since 1978, citing its long-standing comic book series under the UNCANNY X-MEN mark. Additionally, Marvel stated that it had been continuously publishing a comic book series under the UNCANNY AVENGERS mark since 2012. Throughout its opposition, Marvel referred to these publications as the UNCANNY Series.
Marvel’s main argument was that the worldwide fame and popularity of the UNCANNY marks in association with Marvel products and publications in the comic book and graphic novel industry resulted in the UNCANNY mark’s adoption of a secondary meaning in the marketplace. Because consumers were likely to associate the UNCANNY mark and variations thereof with Marvel, Dynamite Characters’ right to use the UNCANNY mark in comic books would create consumer confusion. Without control over the use and quality of goods released under the UNCANNY mark, Marvel argued, the resulting confusion from similarity of the marks would result in harm to its reputation.
Dynamite Characters submitted its answer on July 1, 2013, denying the allegations, calling for dismissal of the opposition, and proposing several affirmative defenses. Among many other arguments, Dynamite Characters argued that Marvel had failed to identify any harm that would be suffered by the registration of the UNCANNY mark. Additionally, Dynamite Characters noted that Marvel and had historically failed to oppose several other applied-for and registered marks containing or comprising the word UNCANNY as well as many other marks with adjectives identical to marks owned by Marvel in the comic book marketplace (for example, “Mighty” and “Incredible”).
One interesting aspect of Dynamite’s argument is that the word “uncanny” was historically common in the comic book and graphic novel market. Ironically, it stated that the term “uncanny” was “weak and entitled to only a limited scope of protection,” making its initial request to be granted Trademark protection somewhat weaker.
There are a lot of outstanding questions in this case, specifically whether the UNCANNY mark could be deemed generic or descriptive because of how often it is utilized in the comic book marketplace. There is also a question as to whether Dynamite’s use of the UNCANNY mark truly causes confusion. A 2013 review of Dynamite’s Uncanny series stated that “[t]he inevitable X-Men fan that picks up this book through the Pavlovian response of seeing the word ‘uncanny’ on a comic cover is in for a rare treat.” This offers some support for Marvel’s argument that there is, in fact, an association in the marketplace between variations of the UNCANNY mark and Marvel.
Shortly after Dynamite Characters filed its answer to the opposition, both parties began requesting extensions of time left and right with the other party’s consent, making the Board’s decision on granting the extension relatively easy. Over time, it became clear that the parties were struggling to come to a settlement but the requests to extend the deadlines were granted over several years.
On July 24, 2017, Marvel submitted a motion to the Board requesting a suspension of the proceedings to allow the parties time to work out a settlement. Marvel informed the Board of the settlement negotiations at hand, stating that “there remain a number of open [issues] requiring further discussion and negotiation, and [Marvel] is currently working on a revised draft of the settlement document . . . The parties believe that the additional time will allow them to complete their negotiations and bring the matter to a close.” The Board granted the motion, giving the parties more time to come to a resolution or, if they did not come to a resolution, to finish discovery (information gathering) in preparation for TTAB proceedings.
Since then, however, the parties have twice-more requested that the Board give them more time to deliberate. Most recently, on April 19, 2018, Marvel filed anotherrequest for an extension of time (with the consent of Dynamite Characters), asking that the discovery closure date be moved back to August 19, 2018. This date is far off from the original February 26, 2014 deadline issued in 2013.
These proceedings are a lesson in the fact that the legal system certainly takes its time. That being said, it’s important to know what you could be getting into before you take a risk. While Dynamite Characters is likely paying a heap of legal fees in these settlement negotiations, perhaps their right to use the UNCANNY mark is truly worth it to them.
Author and the uncanny, Caroline Womack, is a 2L at Quinnipiac University School of Law and primarily studies intellectual property law, focusing on video game and internet law.