It’s just not a good day for fans of LGBT superheroes at Marvel these days. Not only has Hercules been straightened out, but Northstar has had his trademark application suspended.
A trademark registration was made on February 11th by Marvel for the name Northstar for “Comic books; printed periodicals in the field of comic book stories and artwork” . Bleeding Cool reported this is part of speculation that Northstar may be getting his own series again at Marvel.
But there may have been another reason. On January 12th, Simon & Schuster had made an application for the words “North Star Way” for “Series of fiction and non-fiction books” and on the 29th issued the following press release.
Simon & Schuster rolls out a new imprint designed to “offer authors an expanded suite of profile-building, ancillary services that extend beyond the boundaries of traditional publishing,” according to a statement released today.
The imprint, called North Star Way, will focus on wellness and self-improvement nonfiction, delivered in a variety of multimedia formats in addition to print and ebooks, from apps and podcasts to online video.
Headed up by VP and Publisher Michele Martin, North Star Way will initially launch with four titles. Adam Rothberg, SVP of Corporate Communications at Simon & Schuster, explains that “the focus is to do a lot of things with a smaller group of authors and titles,” as opposed to publishing in high volumes.
Could this have pushed Marvel to register the name of their mutant character?
Either way, Marvel’s application has been suspended for “likelihood of confusion”, though they did argue the case.
In the response dated July 22, 2015, applicant argues that the overall commercial impressions of both the cited mark and the prior-filed application are different from applicant’s mark. However, as discussed in the Office action, the marks are similar in that the dominant feature of the marks sound and look alike, the entirety of applicant’s mark is encompassed in registrant’s, and the additional matter in the marks does not obviate the refusal, as the dominant elements remain the same.
Applicant further argues that the parties’ respective goods are related to distinct characters and subject matter; however, when analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
Sorry Northstar, you can still have your own comic if Marvel chooses to publish it, but you won’t get those little TM letters after it. Yet.