DC Comicsv.Gotham City Networking, Inc.

Trademark Trial and Appeal Board

Jul 17, 2015

No. 91194716 (T.T.A.B. Jul. 17, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
July 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

DC Comics
v.
Gotham City Networking, Inc.
_____

Opposition No. 91194716
_____

James D. Weinberger and Leo Kittay of Fross Zelnick Lehrman & Zissu, P.C. for DC
Comics.

Daniel West and David O. Klein of Klein Moynihan Turco LLP for Gotham City
Networking, Inc.
_____

Before Taylor, Bergsman and Wolfson, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Gotham City Networking, Inc. (“Applicant”) filed two use-based applications
for the marks GOTHAM BATMEN, in standard character form, and GOTHAM
BATMEN and design, shown below,1

1 Serial Nos. 77669398 and 77668420, respectively, filed on consecutive days in February
2009. Applicant claimed February 1, 2006 as the date of first use of its mark anywhere and
the date of first use of its mark in commerce for both classes of services in each of the
applications.
Opposition No. 91194716

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both for the services set forth below:

General business networking referral services, namely,
promoting the goods and services of others by passing
business leads and referrals among group members, in
Class 35; and
Entertainment in the nature of amateur softball games,
in Class 41.
Applicant disclaimed the exclusive right to use the word “Gotham.”2
DC Comics (“Opposer”) opposed the registration of Applicant’s marks on the
grounds of likelihood of confusion under Section 2(d) of the Trademark Act of 1946,
15 U.S.C. § 1052(d), and dilution by blurring and tarnishment under Section 43(c) of
the Trademark Act, 15 U.S.C. § 1125(c).3 In its Second Amended Notice of
Opposition, Opposer claimed ownership of the following registrations:
1. Registration No. 3313612 for the BATMAN logo shown below, for, inter
alia, toys and sporting goods, in Class 28;4

2 “Gotham” is defined as “a journalistic nickname for New York City.” Dictionary.com based
on the RANDOM HOUSE DICTIONARY (2013). Applicant’s notice of reliance Exhibit 9 (51
TTABVUE 36). Citations to the record will be to TTABVUE, the docket history system for
the Trademark Trial and Appeal Board.
3 Opposer also pleaded that Applicant abandoned the use of its marks for the activities in
both classes 35 and 41. However, because Opposer did not pursue those claims in its brief,
we consider them withdrawn. Research in Motion Limited v. Defining Presence Marketing
Group Inc., 102 USPQ2d 1187, 1189-90 (TTAB 2012); Swiss Watch International Inc. v.
Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1734 n.4 (TTAB 2012).
4 Registered October 16, 2007; Sections 8 and 15 affidavits accepted and acknowledged.
Opposition No. 91194716

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2. Registration No. 1221720 for the mark BATMAN, in typed drawing
form, for “comic magazines,” in Class 16;5
3. Registration No. 1652640 for the mark BATMAN, in typed drawing
form, for “entertainment services, namely, television and animated cartoon
programs,” in Class 41;6
4. Registration No. 0856045 for the mark BATMAN, in typed drawing
form, for clothing, including inter alia, t-shirts, hats, and warmup jackets, in Class
25;7
5. Registration No. 0858860 for the mark BATMAN, in typed drawing
form, for toys and games, in Class 22;8
6. Registration No. 2457655 for the mark BATMAN, in typed drawing
form, for “entertainment in the nature of amusement park rides,” in Class 41;9
7. Registration No. 0828412 for the mark BATMAN, in typed drawing
form, for “lunch kits, vacuum bottles, combined plastic cups and straws, various
types of bags for cosmetics, garments, toiletries, and the like,” in Class 2;10

5 Registered December 12, 1982; second renewal.
6 Registered July 30, 1991; second renewal.
7 Registered September 3, 1968; second renewal.
8 Registered October 22, 1968; second renewal.
9 Registered June 5, 2001; renewed.
Opposition No. 91194716

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8. Registration No. 1861233 for the mark BATMAN THE RIDE, in typed
drawing form, for “entertainment in the nature of an amusement ride,” in Class
41;11
9. Registration No. 1581659 for the BATMAN logo shown below, for “tank
tops, shorts, t-shirts, hats, jackets, sweat shirts, pants, pajamas, sneakers,
sunvisors,” in Class 25;12

10. Registration No. 1581725 for the BATMAN logo shown below, for
“flying discs, video game programs, toy doll figures, toy airplanes,” in Class 28;13

11. Registration No. 2119266 for the BATMAN logo shown below, for a
variety of books and paper products, in Class 16;14

10 Registered May 9, 1967; second renewal.
11 Registered November 1, 1994; renewed.
12 Registered February 6, 1990; second renewal.
13 Registered February 6, 1990; second renewal.
14 Registered December 9, 1997; renewed.
Opposition No. 91194716

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12. Registration No. 3110604 for the BATMAN logo shown below, for a
variety of books and paper products, in Class 16;15

13. Registration No. 3326043 for the BATMAN logo shown below, for a
wide variety of clothing, including shirts, t-shirts and hats, in Class 25;16 and

14. Registration No. 3353156 for the mark GOTHAM CITY, in typed
drawing form, for “toys and sporting goods, namely, games and playthings, namely,
action figures and accessories therefor; toy vehicles; dolls; equipment sold as a unit

15 Registered June 27, 2006; Sections 8 and 15 affidavits accepted and acknowledged.
16 Registered October 30, 2007; Sections 8 and 15 affidavits accepted and acknowledged.
Opposition No. 91194716

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for playing a board game, a manipulative game, a parlor game and an action type
target game,” Class 28.17
Opposer also alleged ownership and common law use of BATMAN and
composite BATMAN and GOTHAM-formative marks, and the logos set forth below
for a “vast array of goods … including but not limited to comic books, motion
pictures, television shows … baseball jerseys, baseball caps, baseballs, baseball
bats, and baseball gloves.”18

17 Registered December 11, 2007; Sections 8 and 15 affidavits accepted and acknowledged.
18 Second Amended Notice of Opposition ¶¶4-5 (27 TTABVUE 3-5).
Opposition No. 91194716

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Applicant, in its Amended Answer, denied the salient allegations in the
Second Amended Notice of Opposition.
I. The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b), Applicant’s application files. In addition, the parties
introduced the following testimony and evidence:
A. Opposer’s testimony and evidence.
1. Notice of reliance on Internet documents pursuant to Safer Inc. v.
OMS Investments, Inc., 94 USPQ2d 1031, 1038 (TTAB 2010) purportedly to show
the history, development, notoriety and fame of the BATMAN character and the
BATMAN and GOTHAM marks;19
2. Two notices of reliance on printed publications pursuant to 37 CFR §
2.122(e) purportedly to show the history, development, notoriety, strength and fame
of the BATMAN character and the BATMAN and GOTHAM marks;20
3. Testimony deposition of Michael Gibbs, Senior Vice President of
Licensing and Business Development for Warner Brothers Consumer Products, Inc.,

19 Opposer’s Exhibit Nos. 1-40 (44 TTABVUE). Opposer has relied extensively on documents
printed from the Internet. Such documents are admissible only to show what has been
printed, not the truth of the matter printed therein. Safer Inc. v OMS Investments, Inc., 94
USPQ2d at 1040. For example, The New York Times news articles reporting box office
receipts is evidence that The New York Times published specific box office receipts on
certain dates, not that those were the actual box office receipts.
20 Opposer’s Exhibit Nos. 41-44 (45 TTABVUE) and Nos. 45-46 (46 TTABVUE).
Opposition No. 91194716

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Opposer’s representation agent for the licensing of Opposer’s intellectual property,
including the BATMAN marks and batwing logos, with attached exhibits;21 and
4. Opposer properly made its pleaded registrations of record by
submitting copies of those registrations printed from the electronic database records
of the USPTO showing the current status and title of the registrations pursuant to
37 CFR § 2.122(d)(1).
B. Applicant’s testimony and evidence.
1. Notice of reliance on Internet documents submitted under Safer
purportedly to show “1) the unlikelihood of consumer confusion; 2) the dissimilarity
of the marks at issue; 3) the dissimilarity of the services at issue; and 4) the
dissimilarity of the channels of trade and advertising at issue”;22 and
2. Testimony deposition of Fred C. Klein, Applicant’s co-founder and
President, with attached exhibits.23
II. Standing
Because Opposer has properly made of record its pleaded registrations,
Opposer has established its standing. Cunningham v. Laser Golf Corp., 222 F.3d

21 50 TTABVUE 11 – 12. The confidential version of the Gibbs deposition is docketed at 48
TTABVUE. The publicly available version of the Gibbs deposition is docketed at 50
TTABVUE.
Warner Bros. Consumer Products is the licensing arm of Warner Bros. Studios. It acts as
Opposer’s licensing agent for Opposer’s intellectual property, including, inter alia,
BATMAN. 50 TTABVUE 11-12.
22 Applicant’s Exhibit Nos. 1-10 (51 TTABVUE).
23 52 TTABVUE.
Opposition No. 91194716

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943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
III. Priority
Because Opposer has properly made of record its pleaded registrations,
Section 2(d) priority of use is not an issue in the opposition as to the marks and the
goods and services covered by the pleaded registrations. King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Opposer used BATMAN as a mark identifying a series of movies since 1989.24
Fred Klein testified that Applicant first used its two BATMEN marks on February

24 44 TTABVUE 14 and 17. The evidence comprises news articles from 1989 about the
BATMAN movies produced by Warner Brothers Studios. As indicated above, Warner Bros.
Consumer Products is the licensing arm of Warner Bros. Studios. 50 TTABVUE 11. Warner
Bros. Consumer Products also “acts as [Opposer’s] representation agent … for the licensing
of [Opposer’s] intellectual properties,” (50 TTABVUE 11-12), including, inter alia,
BATMAN. While there was no evidence expressly explaining the relationship between
Opposer and Warner Bros. Studios, because Warner Bros. Consumer Products acts as
licensing agent for both Warner Bros. Studios and Opposer, we find that logic dictates that
there must be some sort of licensing relationship between Opposer and Warner Bros.
Studios regarding the use of the BATMAN marks and character. In further support of our
finding that there is a licensing relationship between Opposer and Warner Bros. Studios,
we take note of the “Batman Begins Style Guide” (Gibb’s Deposition Exhibit 6; 50
TTABVUE 118-265), a document written by Warner Bros. Consumer Products for Opposer
in anticipation of the “Batman Begins” movie (50 TTABVUE 36). The “Introduction”
explains that the “Batman Begins” movie is “the inspiration for the most dynamic
merchandising program of 2005. … The drama and intensity of Batman’s original story,
fully explored onscreen for the first time, has been translated into action-packed character
artwork supported with a full array of graphic elements.” Potential licensees are instructed
to contact Opposer’s Licensee Services “to discuss commissioning custom art because “[a]ll
custom art must be provided by [Opposer].” 50 TTABVUE 123. It stretches credulity to
assert that Opposer and Warner Bros. Consumer Products would work so closely together
marketing products derived from the Warner Bros. Studios “Batman Begins” movie unless
there was a relationship between Opposer and Warner Bros. Studios. Moreover, although
Applicant cross-examined Michael Gibbs, Senior Vice President of Licensing and Business
Development for Warner Brothers Consumer Products, Inc., regarding the relationship
between Opposer and Warner Bros. Consumer Products, Applicant did not challenge the
fame of the BATMAN marks or argue that the renown of the BATMAN marks derived
through the movies did not inure to the benefit of Opposer.
Opposition No. 91194716

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1, 2006 for the services identified in Applicant’s applications.25 Thus, Opposer has
priority of use for its BATMAN mark in connection with a series of movies prior to
any use by Applicant of its marks.26
IV. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
A. Fame of Opposer’s Marks.
This du Pont factor requires us to consider the fame of Opposer’s marks.
Fame, if it exists, plays a dominant role in the likelihood of confusion analysis
because famous marks enjoy a broad scope of protection or exclusivity of use. A
famous mark has extensive public recognition and renown. Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v.
M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker
Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
Cir. 1992).
Fame may be measured indirectly by the volume of sales and advertising
expenditures of the goods and services identified by the marks at issue, “the length

25 52 TTABVUE 29-30.
26 Opposer did not introduce any evidence or testimony regarding its first use of the
batwing logos or any GOTHAM-formative marks in connection with a series of movies.
Opposition No. 91194716

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of time those indicia of commercial awareness have been evident,” widespread
critical assessments and through notice by independent sources of the products
identified by the marks, as well as the general reputation of the products and
services. Bose Corp., 63 USPQ2d at 1305-1306 and 1309. However, raw numbers
alone may be misleading. Thus, some context in which to place raw statistics may
be necessary (e.g., the substantiality of the sales or advertising figures for
comparable types of products or services). Bose Corp., 63 USPQ2d at 1309.
There is no evidence demonstrating the marketplace strength of Opposer’s
batwing logos or GOTHAM-formative marks. In regard to the batwing logos and the
GOTHAM-formative marks, we note that because of the extreme deference that we
accord a famous mark in terms of the wide latitude of legal protection it receives,
and the dominant role fame plays in the likelihood of confusion analysis, it is the
duty of the party asserting that its mark is famous to clearly prove it. Leading
Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
Accordingly, we focus instead on the fame of the BATMAN word marks.
The evidence shows that BATMAN is an iconic American comic book,
television and movie hero. In fact, Applicant’s President, Fred Klein, testified that
“everybody probably knows about Batman.”27
Q. I think you testified previously that everyone heard
about Batman?
* * *

27 52 TTABVUE 33.
Opposition No. 91194716

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A. It’s a prominent name. I’m not going to dispute
that.
Q. And you adopted the Gotham Batmen name
because of Batman, correct?
A. Partially.
Q. As a reference to Batman, correct?
A. As I said before, I had an aha moment that softball
uses a bat, Gotham is the name of our networking
group. It just came to me if you are going to play
softball and use a bat, you should be the Batmen.
Q. But also in part that Batman the character
operates from Gotham?
A. Yes, correct.
Q. And the logo that you applied to register the
Gotham Batmen logo, the subject of this
proceeding, that also makes a reference to Batman,
correct?
A. Correct. It doesn’t have the hood or the cowl. It has
if you look at it upside down, it has a tongue-in-
cheek reference to a five-fingered fielder’s mitt, but
obviously, it could be a spider web; and obviously, it
evokes Batman, yes.28
The first BATMAN comic was published in 1939, one year after the debut of
SUPERMAN comic books.29
Batman wasn’t as strong as Superman, but he was much
more agile, a better dresser and had better contraptions
and a cooler place to live.
He lived in the Batcave, drove the Batmobile, which had a
crime lab and a closed circuit television in the back, and

28 52 TTABVUE 50-51.
29 44 TTABVUE 26-27.
Opposition No. 91194716

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owned a Batplane. He also kept a lot of tools in his utility
belt, including knockout gas, a smoke screen and a radio.
“Since he had no superpowers, he had to rely only on his
physical and mental skills,” said Allen Asherman, the
librarian at DC Comics.
Batman’s fictional history, which was created years after
the character himself, was dark. According to Batlegend,
under his cape Batman was really a man named Bruce
Wayne who, as a child, watched as his parents were
murdered in the dark streets of New York City while they
were walking home from a movie. Traumatized, young
Bruce vowed to avenge their deaths by punishing
criminals everywhere. He studied criminology, trained his
body and assembled an assortment of tools to fight crime
in Gotham. One night, startled by a bat outside his
window, he made up his mind to dress up as a bat to put
fear into the “cowardly and superstitious” hearts of
criminals.30
See also the ENCYCLOPAEDIA BRITANNICA entry for Batman.31
“Batman was an immediate sensation.”32 The character flourished in the
1940’s appearing in multiple comic book series (e.g., Detective Comics, Batman, and
World’s Finest Comics).33 After a down period in the 1950’s, during which time the
comics, while less popular, were continuously available, the ABC television network
premiered a live-action Batman television series in 1966 starring Adam West and
Burt Ward.34

30 Id.
31 44 TTABVUE 157-158.
32 44 TTABVUE 157. That BATMAN has an encyclopedia entry is some indicia of the
character’s renown.
33 Id.
34 Id.
Opposition No. 91194716

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Batman bubbled with flashy costumes and sets (at a time
when colour television was relatively new), pop-art sound-
effect graphics and guest appearances by popular
celebrities as villains. The show was an immediate hit,
spawning an unprecedented wave of Bat-merchandise.
The Batman newspaper strip resumed, and a theatrical
movie was churned out for the summer of 1966.35
In 1989, Tim Burton directed a Batman movie that was a huge success.
The New York Times (April 9, 1989)
TIM BURTON, BATMAN AND THE JOKER
* * *
Although “Batman” doesn’t open until late June, a widely
distributed trailer has already given millions of American
moviegoers a taste the film’s darkly elegant style. The
most talked about “coming attraction” in recent memory,
it elicits applause and often cheers with its succession of
electrifying images: Gotham City in post-modern decay;
the sleek black contours of the Batmobile and Batwing
(the Caped Crusader’s airplane); the hero himself flitting,
batlike, from the deep shadows into a pool of sulphurous
light.36
_____
The New York Times (July 4, 1989)
‘Batman’ Sets Sales Record: $100 Million in 10 Days
Inexorably swooping down on movie audiences for the
second weekend in a row, “Batman” continues to
dominate the box office. The movie broke another record
on Sunday. In just 10 days, the movie, from Warner
Brothers, has sold $100.2 million worth of tickets,
breaking the record of “Indiana Jones and the Last
Crusade,” which reached $100 million on its 19th day.37

35 Id. at 158.
36 44 TTABVUE 9.
37 44 TTABVUE 14.
Opposition No. 91194716

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The success of the 1989 BATMAN movie revitalized BATMAN
merchandise.38 Success bred success and more BATMAN movies were made each
setting box office records.
The New York Times (June 22, 1992)
Batman Is Back, and the Money Is Pouring In
Batman has indeed returned. The newly opened sequel,
“Batman Returns,” broke box office records over the
weekend and is poised to turn into one of the largest
grossing films ever.
Executives at Warner Brothers, which produced and
distributed the dark, perverse and hugely expensive
comedy, said today that the movie would gross a
staggering $46.5 million for the weekend, a record. The
previous weekend record was held by “Batman,” the 1989
film that hauled in $42.7 million and then went on to be
the sixth-biggest-grossing film in history.
Tom Semel, the president of Warner Brothers Inc., said in
an interview: “It’s clear that the chemistry in and around
this movie -- the subject matter, the characters, the look
of the film -- appeals to children, to people in high school,
to adults, male and female. The film has become an event.
People want to get out of the house and see this movie.39
_____
The New York Times (June 26, 1995)
A Big Weekend For ‘Batman’
The film “Batman Forever,” after blazing a box-office
record for its opening weekend, cooled this past weekend
but still became the first film this year to take in $100
million.

38 44 TTABVUE 158.
39 44 TTABVUE 21.
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During its opening weekend, June 16 to 18, the Warner
Bros. film grossed $52.8 million, surpassing the previous
record holder, “Jurassic Park,” by $5.8 million. Total
earnings so far, using actual figures through Saturday
and projections for yesterday, were $105.9 million.
* * *
“Batman Forever,” is the third film about the Caped
Crusader, who earlier found fame in comic books, on
television and even as a ride at Six Flags Great
Adventure theme parks.40
_____
Bloomberg website (Bloomberg.com) (September 4, 2008)
Batman’s Box Office Rises with ‘Titanic’
“The Dark Knight,” the latest chapter in the Batman film
saga, took 30 days to become No. 2 in U.S. box office
history. It joined the other top four-earners, “Titanic,”
“Star Wars” and “Shrek 2” …
Time Warner’s film earned $471.5 million in the month
starting July 18 … 41
_____
CNN.com/entertainment (cnn.com) (January 8, 2009)
‘The Dark Knight’ wins big at People’s Choice Awards
“The Dark Knight” took home top honors at the People’s
Choice Awards Wednesday night, walking away with five
awards.
The movie, which won high praise and acclaim from
critics and fans, won the award for favorite movie,
favorite action movie, favorite cast, favorite on screen

40 44 TTABVUE 160.
41 44 TTABVUE 58.
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match-up (Christian Bale and Heath Ledger) and favorite
superhero (Christian Bale as Bruce Wayne/Batman).42
_____
Business Insider (July 20, 2012)
‘Dark Knight Rises’ Scores Second Highest-Grossing
Midnight Opening
Midnight box-office records were no match for Batman.
According to The Wrap, “The Dark Knight Rises” easily
swooped past “The Avengers” midnight earnings with
$30.6 million at the box office, making it the second
highest-grossing midnight opening in history.43
_____
Forbes (September 9, 2012)
‘The Dark Knight Rises’ Tops $1 Billion, Surpasses ‘The
Dark Knight’
Despite early concerns that it was “underperforming”
after an opening weekend that didn’t meet realistic
expectations, Christopher Nolan’s trilogy-ending Batman
epic The Dark Knight Rises rose above those early doubts
and has now entered the elite club of films with more
than $1 billion in worldwide box office to their name.
* * *
Domestically, however, The Dark Knight still has the
upper hand, with $533 million compared to the most
recent film’s $33 million tally.44
According to the IMDb website (imdb.com), the IMDb list of all-time best
USA box office receipts (as of September 17, 2013) has two BATMAN movies in the

42 44 TTABVUE 65.
43 44 TTABVUE 104.
44 44 TTABVUE 124.
Opposition No. 91194716

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top ten: “The Dark Knight” (2008) is listed as number 4 with $533,316,061 in box
office receipts and “The Dark Knight Rises” (2012) is listed as number 7 with
$448,130,642 in box office receipts. “Batman” (1989) is listed as number 75 with
$251,188,924 in box office receipts.45
Michael Gibbs, Senior Vice President of Licensing and Business Development
for Warner Brothers Consumer Products, Inc., Opposer’s representation agent for
the licensing of Opposer’s intellectual property, corroborated the success of the
BATMAN movies.
Q. And just looking at the most recent three Batman
movies [BATMAN BEGINS, DARK KNIGHT, and
DARK KNIGHT RISES], can you tell us what your
understanding is of the box office performance of
each movie?
A. All three movies were highly successful, and the
most recent Dark Knight Rises eclipsed a billion
dollars in worldwide box office.46
One Forbes magazine writer for arts and entertainment selected the
BATMAN films “The Dark Knight Rises” as the number one comic book superhero
movie and “The Dark Knight” as the number three comic book superhero movie.47
Forbes (August 22, 2012).
In 1992, director Tim Burton launched the animated television series
Batman: The Animated Series. That show was broadcast through 1995. According
to the ENCYCLOPAEDIA BRITANNICA,

45 44 TTABVUE 134 – 135.
46 50 TTABVUE 57.
47 44 TTABVUE 119-120.
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Batman: The Animated Series set a new standard for
storytelling in the Batman universe. The series – which
was marked by the mature tone of its plotlines, its
distinctive colour palette and Art Deco visuals, and the
outstanding caliber of its voice actors – reimagined
villains such as Mr. Freeze and the Riddler, and
introduced fan-favourite character Harley Quinn as the
Joker’s sidekick. The show earned four Emmy Awards
and exerted a profound influence on later depictions of
Gotham City and its inhabitants.48
Further demonstrating Opposer’s claim that the BATMAN character is
known as an iconic American hero is the auction price for original BATMAN comics.
The New York Times (December 19, 1991)
Holy Record Breaker! $55,000 for First Batman Comic
The superhero at Sotheby’s first auction of comic books
yesterday was Harold M. Anderson. … Mr. Anderson
bought many of the most important properties and paid a
record price at auction for a comic book with his $55,000
purchase of a copy of Detective 27, the 1939 issue in
which Batman appeared for the first time.49
_____
The New York Times (February 26, 2010)
Arts Beat
Batman’s First Appearance at a Bruce Wayne Price
* * *
On Monday, the $1 million sale of a copy of Action Comics
No. 1, which features the first appearance of Superman
set a record for the sale of a comic book. But it was short-
lived.

48 44 TTABVUE 158.
49 44 TTABVUE 19.
Opposition No. 91194716

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On Thursday, a copy of Detective Comics No. 27, the first
appearance of Batman from 1939, sold for $1,075,500.50
BATMAN also stakes its claim to the bestseller list.
The New York Times (July 6, 2012)
Arts Beat
Graphic Books Best Sellers: Five Batman Books Crowd
the Hardcover List
For a character who has been around for more than 70
years, Batman is looking awfully spry. The caped
crusader stars in five of the Top 10 books on the
hardcover best-seller list this week, including “Batman:
The Black Glove,” a deluxe collected edition that enters
the list at No. 2.51
Michael Gibbs testified as follows:
Q. Can you describe generally the types of products
licensed by D.C. Comics that bear the Batman
trademark?
A. Batman is our largest and most extensive licensing
program. Our program has probably – we have
license[s] for the most product categories ranging
from apparel, t-shirts, sleepwear, underwear,
shoes, to toys with action figures, and sports
equipment, to hard lines category like bedding and
notebooks and note pads.
And we’ve also, in terms of not hard physical
product, we have also have themed entertainment
area that does a Batman live arena show.
So we have - - it’s our most extensive licensing
program.52

50 44 TTABVUE 79. We make no finding as to whether the auction price of their first comics
has any bearing as to who would win in a fight between SUPERMAN and BATMAN.
51 44 TTABVUE 95.
52 50 TTABVUE 18-19.
Opposition No. 91194716

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On behalf of D.C. Comics, Warner Brothers Consumer Products licenses the
BATMAN trademark on “150 different product categories of which there are subsets
within those categories.”53 This translates into royalties based on the sale of
BATMAN and BATMAN logo-branded goods that are substantial by any means.54
The Licensing Letter estimate of licensing revenues reports that BATMAN is the
18th rated licensed property generating $250 million in retail sales in the U.S. and
Canada in 2010.55
The marketing strength of the BATMAN brand is discussed in the following
news article in Forbes magazine (July 2012) which discusses how the BATMAN
merchandise helped Mattel:
Mattel Sees Brightened Profits from Batman, Barbie
Mattel shares rallied today after the company’s quarterly
profits flew past analyst’s expectations. A bright second

53 50 TTABVUE 20. Mr. Gibbs also testified that in the year when a BATMAN movie is
released, there are in excess of a million SKUs at retail in the U.S. 50 TTABVUE 21.
However, Opposer did not explain what that means and, therefore, it has no bearing on our
decision.
54 50 TTABVUE 682 – 684. The royalty revenues generated by the sale of BATMAN and
BATMAN logo-branded goods was designated as confidential and, therefore, may only be
referenced in general terms.
55 45 TTABVUE 244-251. The Licensing Letter provides to its subscribers “estimates of
retail sales of licensed merchandise by property type and product category.” 45 TTABVUE
246. The Licensing Letter looks “exclusively at consumer products that are licensed to third
parties for manufacture and distribution, and where the manufacturer is paying a royalty
on the goods sold.” Id. at 245. “These estimates are developed through a combination of
surveys; interviews with licensors, licensees, agents, and retailers; analysis of annual
reports, royalty income and data from publicly held companies; corporate sales information
from websites; press releases; and articles. Executives at the licensors of properties listed
were given an opportunity to review and comment on the list so far as their own and their
competitor’s properties, as were selected industry experts.” Id. at 246.
Opposition No. 91194716

22

quarter came on strong demand for its Batman: Dark
Knight and Barbie toys.56
According to Michael Gibbs, “we are continually consistently doing focus
groups and other research on the awareness of the brand utilizing Q scores that are
a known quantity within the industry. And Batman is consistently over 90 percent
awareness on Q scores.”57 Corroborating the Q score testimony is the press release
published on Opposer’s website (DCComics.com) (August 23, 2013) that BATMAN’s
FACEBOOK page hit the 10 million fan mark.58
We find that the BATMAN mark is a famous mark in connection with
BATMAN for comic books and movies.59 That fame is transferred to a vast array of
collateral or merchandising products that are purchased because they bear the
BATMAN trademark; that is, consumers have come to associate the fame of
BATMAN with the products bearing that mark. See Harley-Davidson Motor Co. v.
Pierce Foods Corp., 231 USPQ 857, 863 (TTAB 1986).60

56 44 TTABVUE 98.
57 50 TTABVUE 57. A Q score shows “familiarity, awareness of the Batman brand, the
logos, the character art.” Id. The better practice would have been for Opposer to have
introduced the Q score studies into evidence.
58 44 TTABVUE 130.
59 In making this finding of fact, we acknowledge that there is a hearsay element to much of
the evidence. However, there is no bias in the news articles which were not published for
purposes of this proceeding, but rather were published as part of the regular reporting of
news. Moreover, the multiple sources of information all corroborate the testimony made of
record affirming the renown of the BATMAN character and recognition of the BATMAN
brand.
60 “That the mark HARLEY-HOG used on pork products is likely to be associated as to
source with opposer is also corroborated by the fact that opposer’s uses of HARLEY and
HOG in relation to its collateral goods frequently have been whimsical in character (e.g.,
HOG piggy banks, T-shirts bearing the phrase, ‘I LOVE MY HOG HARLEY,’ ‘the HOG
Tales’ publication, etc.). Because of these uses, a person having knowledge of them would
Opposition No. 91194716

23

B. The similarity or dissimilarity of the marks in their entireties in terms
of appearance, sound, connotation and commercial impression.

Having found opposer’s BATMAN mark, in its myriad uses, to be famous, and
therefore entitled to a broad scope of protection, we now turn to the du Pont
likelihood of confusion factor focusing on the similarity or dissimilarity of the marks
in their entireties as to appearance, sound, connotation and commercial impression.
In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, a
“finding of similarity as to any one factor (sight, sound or meaning) alone ‘may be
sufficient to support a holding that the marks are confusingly similar.’” In re White
Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (citations omitted). See also In re
Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks, we
are mindful that “[t]he proper test is not a side-by-side comparison of the marks,
but instead ‘whether the marks are sufficiently similar in terms of their commercial
impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). See also San
Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196
USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d
1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The proper
focus is on the recollection of the average customer, who retains a general rather
than specific impression of the marks. Winnebago Industries, Inc. v. Oliver &

not be surprised to see HARLEY-HOG used in connection with hot dogs or similar products,
and the association with opposer of the mark so used would also be not at all surprising.”
Opposition No. 91194716

24

Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975).
Applicant is seeking to register the mark GOTHAM BATMEN, in typed
drawing form, and GOTHAM BATMEN and design shown below:

Applicant uses its marks in connection with its Class 35 networking services
as displayed below in an excerpt from its website submitted as a specimen of use in
its applications:

Applicant uses its marks in connection with its Class 41 softball services as
displayed below in an excerpt from its website submitted as a specimen of use in its
applications:
Opposition No. 91194716

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Ordinarily, for a word mark, we do not look to the trade dress which may be
changed at any time. But we may look to Applicant’s trade dress to determine the
commercial impression engendered by Applicant’s marks.
[T]he trade dress may nevertheless provide evidence of
whether the word mark projects a confusingly similar
commercial impression.
Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ
1281, 1284 (Fed. Cir. 1984). See also American Rice, Inc. v. H.I.T. Corp., 231 USPQ
793, 796 (TTAB 1986) (“we may take into account whether the trade dress of
packages or labels in the application file as specimens, or otherwise in evidence,
may demonstrate that the trademark projects a confusingly similar commercial
impression.”); Northwestern Golf Co. v. Acushnet Co., 226 USPQ 240, 244 (TTAB
1985) (“Evidence of the context in which a particular mark is used on labels,
packaging, etc., or in advertising is probative of the significance which the mark is
likely to project to purchasers.”).
Opposition No. 91194716

26

Applicant’s specimens support rather than negate Opposer’s complaints: that
Applicant’s GOTHAM BATMEN marks create a commercial impression which is
confusingly similar to that of Opposer’s BATMAN marks and batwing logos. For
example, Applicant’s use of the term BATMEN, GOTHAM and a batwing logo61 is
certain to elicit a connection with Opposer’s famous BATMAN mark especially
because “Batmen” is merely the plural form of “Batman.” Case law holds that use of
the plural form of a term “is almost totally insignificant in terms of the likelihood of
confusion of purchasers.” In re Pix of Am., Inc., 225 USPQ 691, 692 (TTAB 1985).
See also Weidner Publ’ns, LLC v. D&B Beauty Care Co., 109 USPQ2d 1347, 1355
(TTAB 2014) (“It is well established that trademarks and/or service marks
consisting of the singular and plural forms of the same term are essentially the
same mark.”).
The fact that Applicant’s mark encompasses both Opposer’s BATMAN mark
and the batwing logos increases the similarity of the marks. See, e.g., Schering-
Plough HealthCare Products Inc. v. Ing-Jing, 84 USPQ2d 1323, 1326 (TTAB 2007)
(if Opposer’s two marks are used together on a single product or in marketing, they
may be considered together in the likelihood of confusion analysis). In the present
case, there is ample evidence to establish the conjoint use of the BATMAN mark
with the batwing logos.62 The examples below are representative.

61 We acknowledge but do not accept applicant’s contention that the design element of its
composite mark would be perceived as a fielder’s mitt. It is much more likely to be
perceived as a batwing design.
62 See 50 TTABVUE 266 – 528.
Opposition No. 91194716

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63 64 65

Applicant’s combination of the name “Gotham,” “Batmen” and the batwing
design engender a commercial impression similar to Opposer’s BATMAN marks and
batwing logos.66 See the marks of Opposer and Applicant on t-shirts and hats
displayed below.
Opposer’s shirt67 Applicant’s shirt68

63 44 TTABVUE 154.
64 50 TTABVUE 303.
65 50 TTABVUE 337
66 “Gotham City” is where BATMAN fights crime. 44 TTABVUE 157 (“By 1942 Gotham City
Police Commissioner James Gordon – in a reversal from the early days of the comic, when
he had ordered his officers to fire upon Batman – was summoning the hero into action by
illuminating the nighttime skies of Gotham City with the Bat-Signal.”). See also n.3
defining “Gotham” as a journalistic nickname for New York City.
67 50 TTABVUE 411.
68 52 TTABVUE 85.
Opposition No. 91194716

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Opposer’s hats69 Applicant’s hat70

In view of the foregoing, we find that Applicant’s marks GOTHAM BATMEN
and GOTHAM BATMEN and design are similar to Opposer’s BATMAN marks and
batwing logos.
Applicant argues that the mark GOTHAM BATMEN “falls under the Gotham
family of marks,” and, therefore, identifies Applicant as the source of the services.71
Setting aside the question of whether Applicant has proven that it has a family of
“Gotham” marks, the family of marks doctrine is unavailable to a defendant as a
defense in an inter partes proceeding. Baroid Drilling Fluids Inc. v. Sun Drilling
Products, 24 USPQ2d 1048, 1052 (TTAB 1992) (“a defendant, whose sole mark in
issue is its mark sought to be registered or its mark sought to be cancelled, can rely
upon only its rights in that mark, except in very limited situations.”). See also Mag
Instrument Inc. v. Brinkman Corp., 96 USPQ2d 1701, 1715 (TTAB 2010). The issue
in this case is whether Applicant’s GOTHAM BATMEN marks so resemble
Opposer’s BATMAN and batwing logos as to be likely to cause confusion, not
whether Applicant has used other GOTHAM-formative marks.

69 50 TTABVUE 419 and 434.
70 52 TTABVUE 84.
71 57 TTABVUE 31.
Opposition No. 91194716

29

Applicant further argues that its addition of the word GOTHAM to BATMEN
“drastically changes the aural [and visual] similarities between the parties’
respective marks.”72 We disagree. The presence of “Gotham” to Applicant’s mark
GOTHAM BATMEN does not distinguish Applicant’s mark from Opposer’s
BATMAN marks. First, while the term “Gotham” is not an explicit part of opposer’s
pleaded marks, the relationship of the superhero BATMAN to a place known as
Gotham is indisputable. Thus, any aural dissimilarity would be outweighed by the
recognition of this fact by those familiar with opposer’s marks, who would still be
more likely to think of the superhero BATMAN even if their exposure to applicant’s
mark was aural.
Second, even if “Gotham” is viewed as a geographically descriptive term
rather than a term evocative of the milieu for the superhero who protects the city
and residents of Gotham, those who see, rather than hear, the applicant’s marks
will still be more likely to think of the superhero and the city he protects,
particularly because of the batwing element in applicant’s composite mark. In
short, technical differences in the sight and sound of the parties’ marks will be out-
weighed by their connotative similarity.
C. The similarity or dissimilarity and nature of the goods and services of the
parties and the variety of goods and services on which Opposer’s marks are
used.73

72 57 TTABVUE 27.
73 The ninth du Pont likelihood of confusion factor is “[t]he variety of goods on which a mark
is or is not used (house mark, “family” mark, product mark).”
Opposition No. 91194716

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The next du Pont factor we consider is that of the relatedness of the goods
and services. Applicant points out that it uses its GOTHAM BATMEN marks in
connection with networking services and softball games, and “not a single one of
Opposer’s marks is offered in connection with either general business networking
services or entertainment in the form of amateur softball games.” Further,
Applicant asserts that despite Opposer’s extensive licensing program, Opposer
“cannot even begin to make a colorable argument that it has ever offered or licensed
goods and/or services that are complementary or even related to business
networking services.”74
It is well established that Applicant’s services and Opposer’s goods and
services need not be similar or competitive, or even move in the same channels of
trade, to support a holding of likelihood of confusion. It is sufficient that the
respective goods and services are related in some manner, and/or that the
conditions and activities surrounding the marketing of the goods and services are
such that they would or could be encountered by the same persons under
circumstances that could, because of the similarity of the marks, give rise to the
mistaken belief that they originate from the same producer. See Black & Decker
Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1492 (TTAB 2007); In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, we note that Opposer’s BATMAN character is an iconic, fictional
American hero, that the BATMAN trademark is famous, and that Opposer

74 57 TTABVUE 22 – 25.
Opposition No. 91194716

31

leverages the fame of the BATMAN character and trademark through an extensive
licensing program. The Board, in another case, stated the following, which is
equally appropriate in this case:
The licensing of commercial trademarks for use on
“collateral” products (such as clothing, glassware, linens,
etc.), which are unrelated in nature to those goods or
services on which the marks are normally used, has
become a common practice in recent years. See: General
Mills Fun Group, Inc. v. Tuxedo Monopoly, Inc., 204
USPQ 396, 400 [where we stated that such use is a
matter of common knowledge and “has become a part of
everyday life which we cannot ignore”], affirmed 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981) [where the Court
of Customs and Patent Appeals noted that “‘collateral
product’ use is a matter of textbook discussion (see J.
Gilson, Trademark Protection and Practice §5.05[10]
(1980) and frequent commentary (see Grimes and
Battersby, The Protection of Merchandising Properties, 69
T.M. Rep. 431 (1979) and references cited therein)”].
In re Phillips-Van Heusen Corporation, 228 USPQ 949, 951 (TTAB 1986). See also
L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1889 (TTAB 2008) (“It is common
knowledge, and a fact of which we can take judicial notice, that the licensing of
commercial trademarks on ‘collateral products’ has become a part of everyday life.”);
Turner Entertainment Co. v. Nelson, 38 USPQ2d 1942, 1945 (TTAB 1996) (“It is
common knowledge, and in the present case, undisputed that video games, t-shirts,
beach towels, caps and other logo-imprinted products are used as promotional items
for a diverse range of goods and services.”). As shown by the record evidence,
virtually everyone in America is familiar with the BATMAN character and
trademark and is aware that the trademark is licensed for use in connection with a
vast array of goods and services.
Opposition No. 91194716

32

Normally, consumers would not expect that business networking services or
softball games would emanate from the same source as entertainment services in
the nature of movies, television series and comic books. However, such
generalizations, while analytically convenient and superficially persuasive, must
not overreach. Michael Gibbs testified that Opposer licenses the BATMAN mark in
connection with “most product categories ranging from apparel, t-shirts, sleepwear,
underwear, shoes, to toys with action figures, and sports equipment, to hard lines
category like bedding and notebooks and note pads … we also have a themed
entertainment area that does a Batman live arena show.”75 With respect to sporting
goods, Mr. Gibbs testified that Opposer licenses “all types of sporting equipment
from all types of balls, from baseballs to footballs to basketballs to gloves, bats,
fishing poles, life vests, jerseys, apparel jerseys, both hockey, football, and
baseball.”76 Displayed below is a copy of a bat and ball set licensed by Opposer.
77

75 50 TTABVUE 18-19.
76 50 TTABVUE 19.
77 50 TTABVUE 308.
Opposition No. 91194716

33

Opposer has registered BATMAN78 and the batwing design79 for clothing,
including hats and t-shirts. The BATMAN t-shirt displayed above (footnote 67) is
advertised for sale on the Sport Chalet website80 and the Dick’s Sporting Goods
website.81 BATMAN baseball caps displayed above (footnote 69) are advertised for
sale on the Champs Sports website.82 These products can be used as softball
uniforms and are presumably sold by the companies that are advertising them for
sale. T-shirts and hats that can be used as softball uniforms are complementary
products related to softball games as demonstrated by the fact that Applicant uses
similar products for its hats and jerseys.83
Applicant’s GOTHAM BATMEN networking services are related to the
GOTHAM BATMEN softball games.
Q. Would you also say they [the GOTHAM
BOMBERS, an associated softball team] are also a
networking group in addition to being a softball
group?
A. As I said, it’s intended to be social. When you play
on a team you get to know people very well, you
know, a chain is as strong as its weakest link. It
was a way to recruit members, network, going out
drinking afterwards, having a party at the end of
the year.

78 Registration No. 0856045.
79 Registration No. 3326043.
80 50 TTABVUE 409.
81 50 TTABVUE 411.
82 50 TTABVUE 415-429.
83 52 TTABVUE 22-24 and 84-85.
Opposition No. 91194716

34

Yes, some of our best new members have come from
that meeting.84
For example, when Applicant sends out a communication seeking players to fill out
the roster for a softball game, people often respond and make an inquiry such as “do
you do any [real estate] legal work?”85 The members make a referral as
appropriate.86
Because Opposer’s BATMAN mark is famous and it has been licensed for use
on a myriad of products, countless individuals have been exposed to Opposer’s
BATMAN mark and to its use on or in connection with collateral products, including
t-shirts and baseball balls and bats. Under these circumstances, individuals
familiar with Opposer’s BATMAN marks and their associated goods and services,
when confronted with Applicant’s mark in connection with softball games and
networking services, will consider such activities to be sponsored by or affiliated
with Opposer. See NASDAQ Stock Market Inc. v. Antartica S.r.l., 69 USPQ2d 1718,
1732 (TTAB 2003).
In view of the foregoing, we find that Applicant’s services and Opposer’s
goods and services are related.
D. Established, likely-to-continue channels of trade and classes of consumers.
Applicant is seeking to register its marks for the following services:
General business networking referral services, namely,
promoting the goods and services of others by passing
business leads and referrals among group members; and

84 52 TTABVUE 18.
85 52 TTABVUE 38.
86 52 TTABVUE 38-39.
Opposition No. 91194716

35

Entertainment in the nature of amateur softball games.
The channels of trade and classes of consumers for the softball games are
unrestricted and, therefore, may include any men and women who participate in
softball games, including fans of the BATMAN superhero. Likewise, because the
channels of trade and classes of consumers for the business networking services are
unrestricted, the business networking services are available to any person willing to
join a business networking organization, including fans of the BATMAN superhero.
Opposer’s entertainment services and licensed collateral merchandise are
available to mass audiences comprising consumers from all walks of life; in other
words, Opposer offers its entertainment services and licensed goods to ordinary
consumers including men and women who play softball and who join business
networking organizations.
Applicant argues that “[w]hen actual evidence of a party’s trade channels
exist[s], the Board should rely on those specified trade channels.”87 In Applicant’s
case, its services are available only “through direct contact with [Applicant].”88
Applicant’s interpretation of the law is incorrect. Because the scope of the
registration Applicant seeks is defined by the description of services in its
application (and not by its actual use), it is the description of services in the
application (and not actual use) that we must look to in determining Applicant’s
right to register:

87 57 TTABVUE 18.
88 57 TTABVUE 18.
Opposition No. 91194716

36

The authority is legion that the question of registrability
of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which sales
of the goods are directed.
Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990).
In view of the foregoing, we find that the du Pont likelihood of confusion
factors relating to the channels of trade weighs in favor of finding that there is a
likelihood of confusion.
E. The conditions under which and buyers to whom sales are made (i.e.,
“impulse” vs. careful, sophisticated purchasing).

Applicant argues that the degree of care exercised by the relevant public is a
factor that weighs against finding that there is a likelihood of confusion because
Applicant “is a membership organization of business professionals” whose initiation
is time consuming and requires careful consideration.89 However, as indicated
above, we may not resort to extrinsic evidence to restrict the classes of consumers
for Applicant’s services. See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764
(TTAB 1986) (evidence that relevant goods are expensive wines sold to
discriminating purchasers must be disregarded given the absence of any such
restrictions in the application or registration). Thus, Applicant may not limit its
“group membership” to “business professionals.” For example, applicant’s
networking group membership may include or even be restricted to members of

89 57 TTABVUE 21-22.
Opposition No. 91194716

37

BATMAN fan clubs. Moreover, the classes of consumers for softball games include
ordinary consumers from all walks of life, including BATMAN fans.
F. The absence of any reported instances of actual confusion.
Despite simultaneous use of their marks since 2006, there are no reported
instances of actual confusion. “[T]he absence of actual confusion over a reasonable
period of time might well suggest that the likelihood of confusion is only a remote
possibility with little probability of occurring.” Central Soya Co., Inc. v. North
American Plant Breeders, 212 USPQ 37, 48 (TTAB 1981). However, the probative
value of the absence of actual confusion depends upon there being a significant
opportunity for actual confusion to have occurred. Barbara’s Bakery Inc. v.
Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007). See also Citigroup Inc. v. Capital
City Bank Group, Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98
USPQ2d 1253 (Fed. Cir. 2011); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d
1768, 1774 (TTAB 1992).
Applicant has argued that the goods and services of the parties move in
different channels of trade because Applicant’s services are rendered exclusively
through direct contact with Applicant which “is completely different from any of
[Opposer’s] trade channels.”90 Specifically,
[C]onsumers will only encounter the GOTHAM BATMEN
Marks on the password-protected Gotham Website or
through the referral-based GOTHAM BATMEN e-mail
listserv. … The GOTHAM BATMEN Marks are
exclusively marketed through these two (2) trade
channels, which consumers will only have access to if they

90 57 TTABVUE 18.
Opposition No. 91194716

38

have previously been referred to [Applicant] by [a member
of Applicant]. This is unique and quite different from the
broadly defined channels of trade used by [Opposer] to
promote its goods to the general public. Therefore,
because the only consumers that receive GOTHAM
BATMEN advertising material are affiliated with
[Applicant], it is almost guaranteed that they will not
confuse [Applicant’s] marketing material as originating
from [Opposer].91
If, as Applicant argues, Applicant’s trade channels are completely different than
Opposer’s trade channels, then there has not been a reasonable opportunity for
actual confusion to have occurred. However, we have found the parties’ presumptive
trade channels to overlap.
In view of the foregoing, we find that the lack of any reported instances of
actual confusion is neutral.
G. Balancing the factors.
Opposer’s BATMAN marks and batwing logos are famous marks. Our
primary reviewing court has cautioned that in such circumstances there is “no
excuse for even approaching the well-known trademark of a competitor.” Kenner
Parker Toys, Inc., Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
Cir. 1992).
Thus, the Lanham Act’s tolerance for similarity between
competing marks varies inversely with the fame of the
prior mark. As a mark’s fame increases, the Act’s
tolerance for similarities in competing marks falls. For
this reason, this court emphasizes:
When a Plaintiff’s trademark is a strong, famous
mark, it can never be “of little consequence”. The

91 57 TTABVUE 19 citing the Klein Deposition, p. 11 (52 TTABVUE 12-14).
Opposition No. 91194716

39

fame of a trademark may affect the likelihood
purchasers will be confused inasmuch as less care
may be taken in purchasing a product under a
famous name.
[Specialty Brands, 748 F.2d 669, 223 USPQ 1281, 1282
(Fed. Cir. 1984)]; see also B.V.D. Licensing v. Body Action
Design, 846 F.2d 727, 730, 6 USPQ2d 1719, 1722 (Fed.
Cir. 1988) (Nies, J. now C.J., dissenting) (“a purchaser is
less likely to perceive differences from a famous mark.”)
(emphasis in original). In accord with the same principles,
this court states:
[T]here is “no excuse for even approaching the well-
known trademark of a competitor . . . and that all
doubt as to whether confusion, mistake, or
deception is likely is to be resolved against the
newcomer, especially where the established mark is
one which is famous. . . .”
[Nina Ricci, S.A.R.L. v. E.T.F. Enters., 889 F.2d 1070, 12
USPQ2d 1901, 1904 (Fed. Cir. 1989)] (quoting Planter’s
Nut & Chocolate Co. v. Crown Nut Co., Inc., 305 F.2d 916,
134 USPQ 504, 511 (CCPA 1962)].
Id. at 1456.
In view of the facts that the marks of the parties are very similar, the goods
and services are related and must be presumed to move in the same channels of
trade and be sold to the same classes of consumers, we find that Applicant’s marks
GOTHAM BATMEN and GOTHAM BATMEN and design for business networking
services and softball games are likely to cause confusion with Opposer’s BATMAN
marks and batwing logos.

Opposition No. 91194716

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V. Whether Applicant’s Marks Constitute A Parody?
Applicant argues as a defense to the likelihood of confusion claim that its
GOTHAM BATMEN marks represent “a parodic or satiric use” of Opposer’s
BATMAN marks and batwing logos.92
The GOTHAM BATMEN Marks are clear and undeniable
twists on [Opposer’s] Batman-related marks and its comic
book hero Batman. The GOTHAM BATMEN play the
game of softball, a game which necessarily involves the
use of a softball bat, a batter, batting averages, batboys,
etc. and members of the GOTHAM BATMEN group
jokingly refer to themselves as superheroes of the softball
field and super networkers. The members of the
GOTHAM BATMEN are well past their athletic prime
and have several members that are sixty (60) and seventy
(70) years of age. Moreover, the GOTHAM BATMEN
listserv makes joking references to [Opposer’s] Batman
character on a regular basis by referring to bat signals
appearing in the sky, when it is obvious to all that
nothing of the sort appeared.93
The right of the public to use words in the English language in a humorous
and parodic manner does not extend to use of such words as trademarks if such use
is likely to cause confusion. Nike Inc. Maher, 100 USPQ2d 1018, 1023 (TTAB 2011);
Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1592 (TTAB 2008);
Columbia Pictures, Inc. v. Miller, 211 USPQ 816, 820 (TTAB 1981). In this case, the
parody defense fails because Applicant’s mark is likely to cause confusion with
Opposer’s marks.94

92 57 TTABVUE 34.
93 57 TTABVUE 34.
94 While the Board may consider as a defense to a likelihood of confusion claim whether the
mark sought to be registered or cancelled is a parody of the plaintiff’s mark, the Board will
“not consider the parody defense as part of the assessment of a dilution claim, because a
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Moreover, Applicant’s GOTHAM BATMEN mark does not create a parody of
Opposer’s BATMAN marks and batwing logos because Opposer’s marks are not the
target of the parody; it is Applicant’s members that are the target of the parody.95
As noted above, Applicant, in its brief, asserts that “members of the GOTHAM
BATMEN group jokingly refer to themselves as superheroes of the softball field and
super networkers.” Mr. Klein testified on behalf of Applicant that “there is no
question that Batman was part of the joke on us.”96 In other words, the purported
parody is an inside joke. Applicant’s parody of the athletic and networking prowess
of its members does not require the use of Opposer’s marks because the parody does
not target Opposer. Therefore, Applicant’s use of GOTHAM BATMEN as a parody is
not a good defense to the likelihood of confusion claim in this case. See e.g., Elvis
Presley Enterprises Inc. v. Capece, 141 F.3d 188, 46 USPQ2d 1737, 1745-46 (5th Cir.
1998). See also Nike Inc. Maher, 100 USPQ2d at 1023.
In view of the foregoing, Applicant’s parody defense fails to justify the
registration of Applicant’s marks.

mark that identifies source, which it must for registration, will not concurrently qualify for
a statutory exclusion to a dilution claim.” The New York Yankees Partnership v. IET
Products and Services, Inc., ___ USPQ2d ___ (TTAB 2015).
95 As stated in 6 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION, § 31:153 (4th ed. 2014):
[I]f defendant appropriates a trademarked symbol such as a
word or picture, not to parody the product or company
symbolized by the trademark, but only as a prominent means
to satirize and poke fun at something else in society, this is not
“parody” of a trademark.
96 52 TTABVUE 52-53.
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In view of our finding that there is a likelihood of confusion, we need not
decide Opposer’s dilution claim.
Decision: The opposition is sustained and registration to Applicant is
refused as to both applications.

Dissent By:
Taylor, J., dissenting.
I respectfully dissent from the decision of the majority that Opposer has met
its burden, on this record, to demonstrate the fame of its pleaded BATMAN marks.
More particularly, the majority found the BATMAN marks to be famous primarily
based on the public’s exposure to them in connection with a series of movies
released by Warner Bros. Studio. However, in my opinion the majority exceeded its
discretion when it attributed use by Warner Bros. Studio of the pleaded Batman
marks to inure to the benefit of Opposer, DC Comics. As the majority aptly points
out in footnote 24, “there was no evidence explaining the relationship between
Opposer, DC Comics and Warner Bros. Studios.” Nonetheless, the majority goes on
to note that the record demonstrates that Warner Bros. Consumer Products
(“WBCP”) is the licensing arm of Warner Bros. Studios and also “acts as [Opposer’s]
representation agent … for the licensing of [Opposer’s] intellectual properties,
including Batman,” and then presumes, because WBCP acts as a licensing agent for
both Opposer and Warner Bros. Studios, that “logic dictates” that there must be
some sort of licensing arrangement between them. I fail to see the logic. It simply
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does not follow that because Opposer and Warner Bros. Studio use the same
licensing agent, a license agreement exists between them. Nor, as the majority
postulates, does the “Batman Begins Style Guide” demonstrate a licensing
relationship between Opposer and Warner Bros. Studio. While the record shows
that WBCP has entered into licensing agreements on behalf of Opposer, and
apparently prepared the style guide for merchandising purposes in connection with
the Batman Begins move, there is nothing in the guide that expressly confirms a
licensing arrangement between Opposer and Warner Bros. Studio. Notably, the
style guide points to DC Comics Licensee Services and not WBCP for “custom
artwork.” Even if one may surmise a relationship between Opposer and Warner
Bros. Studio from the style guide, supposition does not replace the evidence
required to establish factual findings. See, for example, In re Hand, 231 USPQ 487
(TTAB 1986) citing to Ex parte The Pure Oil Company, 99 USPQ 19 (Com’r 1953)
(“[T]he Patent Office files should clearly reflect facts which justify a finding that
such [trademark] use inures to the benefit of the applicant.”).
Last, while it is true that Applicant did not expressly challenge the fame of
Opposer’s BATMAN marks or argue that the renown of the BATMAN marks
derived through the movies did not inure to the benefit of Opposer, as the plaintiff
in this opposition proceeding, Opposer has the burden to prove its case.
In short, while Opposer pleaded use of the BATMAN marks and character in
connection with, inter alia, movies, it did not prove that claim, and the evidence of
record of use of the BATMAN marks properly attributed to Opposer is insufficient
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to establish fame. Since I would find that the BATMAN marks are not famous, and
because the goods and services of the parties are so disparate, they would not be
encountered by the same persons under circumstances that could, because of the
admitted similarity of the marks at issue, give rise to the mistaken belief that they
originate from the same source.
In view of the foregoing, I find that despite the similarity of the marks,
Opposer failed to prove by a preponderance of the evidence that its pleaded
BATMAN marks are famous and that the goods and services of the parties are
related. Accordingly, the Opposition should be dismissed.