Sometimes trademark fights get down in the gutter, literally. DC Comics has opposed a family-owned installer of home gutters attempt to register its diamond-shaped “G” trademark. But is there really any chance anyone would actually confuse the gutter company with the Man of Steel?
In October 2017, Gutter Man of Western North Carolina LLC applied for the Gutter Man “G” mark. Gutter Man claims in its original application that it has been using the “G” mark in question to represent its gutter installation and maintenance services since May, 2010. Gutter Man is a family owned business that installs rain gutters on houses.
We’re well aware of DC Comics’ protection of its marks here on Pirated Thoughts. We’ve written on multiple occasions regarding DC Comics’ protective nature over its wide array of Superman marks including the name SUPERMAN, the Superman “S” symbol, and the likeliness of the Man of Steel himself. There’s no question about it: DC Comics is out to protect their brand and isn’t going to give up any time soon. While we (quite obviously) fully endorse brand protection and the strength of intellectual property, sometimes it’s a little too easy to argue that DC has gone a bit too far when it comes to protecting their brand and their characters. This might just be one of those times.
DC Comics proved once again that it won’t falter on protecting its marks when it filed an opposition to halt registration of Gutter Man’s mark earlier this year. In its original opposition filed on May 17, DC Comics argued that the “G” symbol applied for by Gutter Man was much too similar to the Superman “S” mark to obtain successful registration. Due to this similarity, DC Comics asserted, consumers would be confused as to the source of the gutter-related goods and services and would assume that DC Comics either endorsed or offered the services itself.
At this point, you may have a few questions.
First and foremost, it’s important to know that federally registered trademarks are broken up into classes of goods. In this case, Gutter Man applied for the “G” mark for use in construction project management services and construction contracting, which is pretty consistent with its brand and its use in gutter repair and installation services.
So, you may be wondering- does DC Comics own a Superman-related mark for use in a similar class? If it does, there’s a higher likelihood of confusion between the two marks. While DC Comics has the exclusive right to use its Superman marks in marketplaces such as comic books, mugs and cups, entertainment services, pillow cases and drapes, toys, and plenty more, it definitely doesn’t own the Superman mark in the same class as the Gutter Man’s “G” mark. (It’s not likely that we’ll be seeing official licensed SUPERMAN construction services any time soon, then.)
Secondly, there’s the question of whether or not there is actually a risk of confusion between the two marks here. While it’s reasonable to say that the Gutter Man “G” mark is similar to the Superman “S” emblem and that it definitely draws on the same geometric pattern as the Man of Steel’s “S”, similarity is not the big question in a matter of determining trademark validity. The real question when it comes to determining the validity of a trademark registration is whether there is a likelihood of confusion between the two marks.
Simply put: it would be ridiculous to find that there’s a likelihood of confusion here. Not only are the marks pretty distinct, but they’re used in entirely different marketplaces and targeted at entirely different audiences. Gutter Man also only seems to provide a very specific contracting service to the Western North Carolina area, making it hard to believe that there would have been any sponsorship by DC Comics itself.
The weak nature of the implication that a likelihood of confusion would exist upon registration of the “G” mark explains why Gutter Man isn’t giving up on their registration. In the face of an opposition from a giant like DC Comics, many give up- often because their mark is in fact infringing. Last week, however, Gutter Man filed a request to extend their time to answer the complaint lodged against them by DC Comics. With just a little more time to prepare their argument against DC Comics, Gutter Man may be able to keep using the “G” mark it’s been operating with for the past several years.
Author, Caroline Womack, is a rising 3L at Quinnipiac University School of Law and primarily studies intellectual property law, focusing on video game and internet law.