In August 2017, Marvel filed an application to register the CLOAK & DAGGER mark for use in games and toys. With Marvel’s “Cloak & Dagger” television series set to premiere in early June, it was most likely trying to obtain this trademark in an attempt to protect the merchandise it will be releasing alongside the series. Unfortunately for Marvel, however, the Examining Attorney at the USPTO was not on board and rejected the application.

The USPTO initially refused registration of the CLOAK & DAGGER mark on May 22, 2017 due to the likelihood of confusion with an existing registered mark owned by Mattel, Inc. – CLOAK AND DAGGER. Mattel’s CLOAK AND DAGGER mark was registered in 2006 for use in toys. Specifically, Mattel owns the CLOAK AND DAGGER mark for a Hot Wheels casting of the same name that was released in 2007.

Marvel’s CLOAK & DAGGER mark and Mattel’s CLOAK AND DAGGER mark were cited by the Examiner as “almost identical” with the only difference between the two being the use of the ambersand as opposed to the word “and” between “CLOAK” and “DAGGER”. Additionally, the Examiner’s decision to refuse registration was influenced by the fact that the goods the marks are both for the toy market, making the likelihood of confusion between the two marks even more prevalent.

On October 28, 2017, Marvel proposed several changes to the goods of which the mark would identify in the marketplace. Marvel asserted that by narrowing the number of goods in the marketplace that the CLOAK & DAGGER mark would identify and specifying that these goods only related to the accompanying television show, there was less of a chance of consumer confusion. Additionally, Marvel noted the difference between its use of the mark (specifically for the promotion of the “Cloak & Dagger” television series) and Mattel’s use of the mark (to identify a shape and type of miniature sports car.) Because of this difference, Marvel argued, it was not sufficiently likely that the relevant consumers would be confused between the two marks.

Once again, however, the USPTO denied registration of Marvel’s CLOAK & DAGGER mark on November 20, 2017. In standing by its original decision, the Examiner cited various registrations covering toy cars as well as the merchandise that Marvel was seeking to register the CLOAK & DAGGER mark for. Marvel’s attempt to narrow the goods of which its CLOAK & DAGGER mark would be applied to, therefore, was not sufficient because all of these goods –games, toys, and miniature vehicles – are generally sold under the same mark.

The Examiner also stated that it is not only concerned about the confusion of the buyer, but protection of the original registrant (Mattel) from adverse commercial impact due to a newcomer (Marvel). In this case, the USPTO proposed, Marvel may pose a threat against Mattel.

This second and final refusal brings us to where we are in this case today. On May 18, 2018, Marvel filed a Request for Reconsideration after Final Action in hopes of giving the registration of the CLOAK & DAGGER mark another shot. The appeal was instituted the same day, but we’re still waiting on Marvel to submit its official appeal of the Examiner’s Final Action.

I think that Marvel may continue to argue that merchandise specific to the “Cloak & Dagger” television program is sufficiently distinct from the Hot Wheels line of toys to overcome the likelihood of confusion in the marketplace. It may also try to touch on the possibility that Mattel will not face a commercial disadvantage from Marvel’s registration of the CLOAK & DAGGER mark, since CLOAK AND DAGGER branded Hot Wheels is not likely to be in direct competition with Marvel’s merchandise. While Mattel isn’t involved in the proceedings as of right now, perhaps it will have a say in this case as it progresses.

Author, Caroline Womack, is a 2L at Quinnipiac University School of Law and primarily studies intellectual property law, focusing on video game and internet law.