Hasbro sues DC over Bumblebee name

[MRP]

Thing is, can you trademark a word/name that is in the open domain? That's what the fight will be over. Hasbro didn't create the word bumblebee. They took it from an existing animal. The example I mentioned earlier with Disney trying to trademark "Day of the Dead" for a movie got them into trouble. Another example would be, characters from classical mythologies. Hercules is a popular one that is frequently adapted. Just about every studio has made an adaptation about the character, but no one has thought to trademark the name. Because no one can prove ownership or the creation of the name and the stories attached to him.


Paramount's claim hinges on whether the judge will see DC's character as infringing on their own. Unlike the case involving Superman v Captain Marvel, there's nothing similar about the two bumblebees accept their color coding and the name they use.

The Captain Marvel/Superman case was about copyright not trademark. A trademark grants a company the legal right to exploit a name (or brand if you will) in a certain category. Others can use the name in different categories, but for the categories granted by a trademark it is the sole purview of the trademark holder. Trademarks have nothing to do with copyrights or plagiarism, it is a legal right to conduct business in a certain area using a certain name. Public/open domain pertains to copyrights mostly too. Part of Edgar Rice Burroughs Tarzan books are in the public domain because their copyrights expired. I can publish an edition of those books and even create new stories featuring the characters because of that. But ERB Estates still holds the trademark to the name Tarzan for published material, so I cannot sell my works under the name Tarzan even though they feature that character because that domain belongs to the trademark holder.

This is what caused the row between ERB estates and Dynamite a few years back. Even though the copyright on the material is expired and it is in public domain, the trademarks are still active and ERB acted to defend their trademarks. They can't stop people from publishing editions of ERB material in the public domain, they can however still control the name Tarzan for all marketing and commercial use and prevent others from using it.

Hasbro has a trademark on the name Bumblebee for action figures. DC can still use the character in comics, movies, what have you, but Hasbro holds the rights to sell and market toys with the name Bumblebee. That is what a trade mark is. A right to control a name and how it is used in a certain field of business. Hasbro was granted those rights for Bumblebee.

-M

[Starchild]

Man! That's stupid! I always buy Bumblebee merchandise for my daughter. I love her DC Superhero Girls design. My daughter dressed up as her last Halloween. Hasbro is on some serious bullcrap.

My niece loves her. Now judging by Shea Fontana's twitter, she's working on a Bumblebee book. So i wonder if it'll be put on hiatus or not.

[Güicho]

The trademarks are for categories of products, that's the way trademarks work. The category is for toy action figures, not just transforming cars. And DC didn't have a trademark for Hasbro to challenge. When Hasbro was granted the trademark in 2015, there was no pre-existing trademark in the toy action figure category that was active.

-M

Wouldn't having a Trade Marked product out before 2015 count as active?

Thing is, can you trademark a word/name that is in the open domain? That's what the fight will be over. Hasbro didn't create the word bumblebee. They took it from an existing animal. The example I mentioned earlier with Disney trying to trademark "Day of the Dead" for a movie got them into trouble. Another example would be, characters from classical mythologies. Hercules is a popular one that is frequently adapted. Just about every studio has made an adaptation about the character, but no one has thought to trademark the name. Because no one can prove ownership or the creation of the name and the stories attached to him.

Exactly the word/name is generic.
Therefore the trade make has to specify what BumbleBee is being applied to.
Shouldn't a judge recognize the clear distinction between a transforming vehicle and a girl dressed as a Bee. Despite them both being classified as Bumble Bee "action figures.

[Doctor Know]

The Captain Marvel/Superman case was about copyright not trademark. A trademark grants a company the legal right to exploit a name (or brand if you will) in a certain category. Others can use the name in different categories, but for the categories granted by a trademark it is the sole purview of the trademark holder. Trademarks have nothing to do with copyrights or plagiarism, it is a legal right to conduct business in a certain area using a certain name. Public/open domain pertains to copyrights mostly too. Part of Edgar Rice Burroughs Tarzan books are in the public domain because their copyrights expired. I can publish an edition of those books and even create new stories featuring the characters because of that. But ERB Estates still holds the trademark to the name Tarzan for published material, so I cannot sell my works under the name Tarzan even though they feature that character because that domain belongs to the trademark holder.

This is what caused the row between ERB estates and Dynamite a few years back. Even though the copyright on the material is expired and it is in public domain, the trademarks are still active and ERB acted to defend their trademarks. They can't stop people from publishing editions of ERB material in the public domain, they can however still control the name Tarzan for all marketing and commercial use and prevent others from using it.

Hasbro has a trademark on the name Bumblebee for action figures. DC can still use the character in comics, movies, what have you, but Hasbro holds the rights to sell and market toys with the name Bumblebee. That is what a trade mark is. A right to control a name and how it is used in a certain field of business. Hasbro was granted those rights for Bumblebee.

-M

Ah.
Thanks for explaining that so thoroughly, mate.

[MRP]

Wouldn't having a Trade Marked product out count as active?

Slapping a TM on the package doesn't count as a trademark if the proper paperwork was not filed. When Hasbro applied for the trademark a search for active trademarks would have been done and if one was found, it would not have been granted. Which means someone from DC/Ban Dai didn't do what they were supposed to do in filing the trademark if they did file for one and didn't just slap the TM onthe packaging and assume one was filed for it.

-M

edit to add: Another possibility is that DC had the trademark and someone else used it, and DC failed to challenge it and thus lost the trademark. Trademarks have to be used and protected to be kept, which is why Hasbro is challenging DC's use of it in action figures.

[Tazpocalapse]

I think this will get thrown out. If the suit is based on trademark infringement and that the claim is based on D.C.s BumbleBee A teenage girl with the ability to shrink could easily be confused with the Autobot BumbleBee. I don't think that it will be a strong enough case for Hasbro to win. I do see a possible deal where BumbleBee maybe renamed D.C. Universe BumbleBee for any toys made for her.

[Güicho]

Slapping a TM on the package doesn't count as a trademark if the proper paperwork was not filed.

-M

Maybe it does count ?

https://www.forbes.com/sites/work-in.../#1c081f7c0afc

They seem to make a distinction between TM not registered, and ® registers.

The TM and SM symbols are used with unregistered marks: TM for trademarks, or marks that represent goods, and SM for service marks, or marks that represent services.

The federal registration symbol, or ®, is reserved for marks registered in the U.S. Patent and Trademark Office.

You need to distinguish between TM and ®

When you use the TM ..., you notify the public of your claim of branding rights in a particular mark and in turn dissuade others from adopting the same or similar mark for the same or similar products or services. This staves off unwitting trademark infringement, which disrupts the free trade of goods and services in the marketplace.

So yeah you can just slap a TM on it.
As it is notifying the public. (a judge may still recognize that as some kind of intent to dissuade others from adopting the same or similar mark.)

Obviously didn't "dissuade" Hasbro from registering.
DC should have ®registers it, but maybe they couldn't because it's so generic.

So the question becomes why was it granted to Hasbro.
DC might argue they've maintained consistent use, and exclusive registration shouldn't have been granted to Hasbro in 2015 for such a generic name.

[Rogue Star]

My niece loves her. Now judging by Shea Fontana's twitter, she's working on a Bumblebee book. So i wonder if it'll be put on hiatus or not.

You'd think they'd be smart enough not to **** with characters of color. Especially when Bumblebee is already kind of the token black character - let's be real. But she was a cool character with a great design. This is just some greedy suit trying to squeeze extra dollars out of everything they can but they're stepping on minority characters to do it. That won't go over well, in my opinion. I know I'm going to make some noise about it.

[protege]

Similar to the whole Captain Marvel/Shazam thing I'm pretty sure Bumblebee will be subjected to a name change. DC won't fight this.

https://www.newsarama.com/36176-hasb...e=notification

I wonder if bumblebee will disappear from the "titans" comic.

[Starter Set]

Hasbro lol....how ridiculous those guys can get?

[Güicho]

I wonder if bumblebee will disappear from the "titans" comic.

No what is in the comics is not being challenged.
DC had their character first, and should have secured and defended rights to publish their character called Bumblebee.
This is over exclusive rights to brand an action figure as "Bumblebee".

Ironically DC could even argue the "super Hero Girls" are dolls and not action figures.
Which would mean they could continue to release the "super Hero Girl" as Bumblebee.

Or a judge may even allow to just seprate the word as "Bumble Bee" or the addition of a hyphen " Bumble-Bee" to distinguish the product name.



LOL at the idea that someone is going to confuse this for a Transformers car.

I hope the judge recognizes these are two very distinct types of "products", and there is no conflict or disruption of the free trade of goods.

[Lee Stone]

Doesn't matter which character was created first, it matters who applied for and was granted the trademark. If DC didn't apply for and get the trademark for action figures marketed using the name Bumblebee, and another company did, they cannot sell action figures using the name Bumblebee regardless of whose character came first. They also did not challenge Hasbro's application for such when the application was made, so no DC does not have a good case because of the way trademark law works. DC did not due their due diligence and the trademark has been granted to Hasbro. That's a clear loss for DC and they have no one to blame but their won legal and marketing departments.

-M

Similar to how they lost the use of the updated DC logo a few years back.

They could always just rename her 'Queen Bee' (and maybe add her to the Justice League).

[Starchild]

Hmmm i like name Queen Bee.

[Frontier]

But there's already a Queen Bee .

[MRP]

Similar to how they lost the use of the updated DC logo a few years back.

Exactly. There are people in the WB/DC offices paid a lot of money whose job it is is to make sure these kinds of things don't happen, but they keep dropping the ball. This isn't on Hasbro, whose required to defend their trademarks when they are infringed upon or seem to be infringed upon by law. It's on the suits at DC who either didn't ensure they had the trademarks in place and secure, or who okay-ed products to go to market without checking if there were any trademark problems that would come up. Since Hasbro is one of the biggest, if not the biggest toy manufacturer in the US, a simple search at the trademark offices website for Hasbro trademarks would have turned up all of them, and a specific search for Bumblebee Hasbro would have revealed the action figure trademark in place for Hasbro. It's not hard to prevent these things, the tools are in place and easy to use, but someone had to hand-wave it without actually doing their job for this kind of SNAFU to crop up. It's the kind of thing that leads to middle managers in legal and marketing departments to lose their jobs. There are IP and trademark attorneys whose whole job it is is to research these kinds of things for companies before they launch product lines. I am pretty sure DC/WB/Mattel would have retained the services of such, but the job didn't get done right, and this lawsuit is the result.

-M