When I say the word “superpower”, what image does it conjure up? Superheroes? Villians? Those having extraordinary supernatural abilities? That is what DC Comics is betting on. DC Comics (“DC”) is the well-known publisher of comic books featuring characters such as Superman and Batman. DC owns two marks for SUPER POWERS® for various clothing items such as shirts, sweatshirts, and hats in Class 025.  The marks have a registration date of April 22, 2014.

DC recently instituted an opposition proceeding against Honeylove Sculptwear, Inc. (“Honeylove”). Honeylove filed a trademark application for SUPERPOWER for shapewear, tights and leggings in Class 025. They claim a date of first use of May 1, 2019.

The Examiner for Honeylove’s mark cited DC’s standard character word SUPER POWERS® mark against it citing a likelihood of confusion due to the similarity between the marks; the similarity between the types of goods sold; and the similarity of the consumers and channels of trade. Honeylove requested reconsideration.

Request for Reconsideration of SUPERPOWER

In its request for reconsideration, Honeylove argued DC’s mark entitles only to a narrow scope of protection. A number of third parties in the clothing industry use the wording “Superpower” and/or “Super Power” as a source indicator for goods and services identical or closely related to DC’s goods. Honeylove provided several examples of registered marks using various iterations of “Super Power” as well as screenshots of various third parties using the words for clothing items.

Honeylove further argued consumers perceive the marks as having different meanings given the context of the respective uses of the marks. They noted DC specifically deleted jackets, sleepwear, pajamas, lingerie and underwear from its registration when filing their combined §§8/15 statements. None of DC’s remaining listed clothing items overlap with those of Honeylove. They also argued shapewear, tights and leggings are undergarments that must conform to the shape of the user’s body. As such, consumers will exercise care when assessing differences in brands.

Honeylove also argued their clothing is provided on through direct-to-consumer sales via its website. Conversely, DC sells its good through big box retailers and promotional clothing stores. As such, both clothing items would never be encountered in the same marketplace.

Honeylove argued a different connotation of “Super Power” by consumers. For DC’s goods, the connotation is with powerful supernatural abilities such as those exemplified by DC’s characters. Conversely, Honeylove’s consumers associate the term with the strength or power of the compression of the garments. Accordingly, Honeylove contends the marks effectuate a different connotation. The Examiner, persuaded by Honeylove’s arguments, put the case through to publication. DC filed to oppose allowance of the mark.

Opposition of SUPERPOWER

DC alleges a likelihood of confusion given the similarity between the marks and goods sold. DC asserts the marks are virtually identical in sight, sound, and commercial impression. They also assert the goods sold to the same consumers and in the same channels of trade.

Takeaway

In a likelihood of confusion case, the important consideration is whether an ordinary consumer would be confused as to the source of the goods. Honeylove has until April 5th to file their response. We will have to wait and see if the TTAB agrees with the Examiner. Stay tuned folks.

FAQs

Can a crowded field narrow trademark protection?

Yes, registration and use of similar marks for similar goods and services narrows the amount of protection a given mark receives.

Michele Lawson

Michele Lawson is a U.S. Registered Patent Attorney.