Valiant Entertainment, holder of the comic book trademark for The Outcast – a one shot comic by Jesse Berdinka and Norm Breyfogle from the nineties, currently on sale digitally, had already forced Boom! Studios to change the title of their planned comic Outcast to Valen The Outcast.
Something similar happened with plans for Robert Kirkman’s and Paul Azaceta’s Outcast, and so on first publication we got the name change to Outcast By Kirkman And Azaceta. But attempts to trademark that version now seem to have gone adrift.
On application, Skybound were told by the US Trademark Office, that the registration was being refused due to the likelihood of confusion.
The Examining Attorney has refused registration based on Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d), on the grounds that Applicant’s mark when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No.3,624,675 as to be likely to cause confusion, to cause mistake, or to deceive. Applicant respectfully traverses the refusal.
That’s the Valiant registration for Outcast. The case made in response by Skybound to keep Outcast By Kirkman And Azaceta as a trademark is that the word Outcast has even successfully registered with other alterations, such as Beloved Mother Of Outcasts, Calie’s Outcast, Intelligents Outcasts Clothing and the like. that the trademark should include the entirety of the words, not dissecting them into their parts, and that apparently, comic book buyers and “sophisticated purchasers”.
The comic industry is one that is fan based. Apart from the very few sold in grocery type stores, most comics are sold through outlets, on line or in stores specializing in the sale of these goods. Please see Exhibit b which shows a few of these sites. Purchaser’s become very familiar with characters and content. Registrant’s comic, which may or may not be in circulation at the present time and does not appear to have any new issues, is very different in design, content and characterization. In the comic book industry, as in the electronic game industry, the fans are very involved and aware of what is out there on the market and who is creating and selling it.
But the rejected appeal has now been made final. And it may have been over a matter of procedure.
The examining attorney objected to the exhibit because the submission of a list of registrations from a database is not the proper way to make such material of record. Rather, plain copies of the registrations or the electronic equivalent thereof, namely printouts of the registrations from the Office’s X-Search automated records, are required for this purpose.
And as to the similarity of the trademark, “Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.”
Lawyer and agent Harris Miller advised Mark Millar and Steve McNiven to change the name of their comic Nemesis to Millar & McNiven’s Nemesis. When challenged over Next Men‘s similarity to X-Men, John Byrne changed it to John Byrne’s Next Men. Could the legal issues have been avoided of they’ chosen Kirkman And Azaceta’s Outcast? Very possibly.
And as to our “sophistication”?
First, there is no evidence in the record as to the possible sophistication of consumers of the relevant goods… Even assuming that some purchasers of comic books are sophisticated, it does not mean that all or even most purchasers are sophisticated… Furthermore, where the relevant consumer is comprised of, for example, both sophisticated fans of comic books and casual purchasers of comic books, the standard of care when purchasing the goods and services is equal to that of the least sophisticated purchaser in the class….Second, even assuming that consumers who purchase these goods are sophisticated, The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.
But why is this so important? Well, both Skybound and Valiant are interested, not just in maintaining the trademark of their comics, but extending that into other media, such as TV. The fight continues…