DC Comicsv.Gotham City Networking, Inc.

Trademark Trial and Appeal Board

May 14, 2012

No. 91194716 (T.T.A.B. May. 14, 2012)

GCP Mailed: May 14, 2012

Opposition No. 91194716

DC Comics

v.

Gotham City Networking, Inc.

Before Seeherman, Ritchie, and Wolfson,
Administrative Trademark Judges.

By the Board:
Gotham City Networking, Inc. (“applicant”) filed two
applications for registration. The first application is for
the mark GOTHAM BATMEN in standard characters.1 The second
application is for the mark as displayed below:2

1 Application Serial No. 77669383, filed on February 12, 2009,
based upon an allegation of use in commerce under Section 1(a) of
the Trademark Act, 15 U.S.C. § 1051(a), claiming February 1,
2006 as both the date of first use and the date of first use in
commerce for the services identified in both International
Classes 35 and 41. Applicant has disclaimed the term “GOTHAM.”
2 Application Serial No. 77668420, filed on February 11, 2009,
based upon an allegation of use in commerce under Section 1(a) of
the Trademark Act, 15 U.S.C. § 1051(a), claiming February 1, 2006
as both the date of first use and the date of first use in
commerce for the services identified in both International
Classes 35 and 41. Applicant has disclaimed the term “GOTHAM.”

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91194716
2
Both applications recite the following identification of
services: “general business networking referral services,
namely, promoting the goods and services of others by passing
business leads and referrals among group members” in
International Class 35 and “entertainment in the nature of
amateur softball games” in International Class 41.
DC Comics (“opposer”) filed a notice of opposition to
registration of applicant’s marks on the following grounds:
(1) priority and likelihood of confusion, (2) dilution, (3)
lack of bona fide use of the marks in commerce as of the
filing dates of applicant’s involved use-based applications,
(4) lack of a current bona fide use of the marks in commerce,
and (5) fraud based on lack of a bona fide use of the marks in
commerce as of the filing date of applicant’s involved
applications. In support of its asserted claims, opposer has
claimed common law use and ownership of numerous registrations
for the mark BATMAN, as well as a related family of bat logo
design marks, as illustrated below, used in association with
its comic books series and related goods and services, such as
television programs, motion pictures, and licensed merchandise
including sporting equipment, sports clothing and footwear,
protective gear for use in sports activities, toys, food,
records, audio/visual tapes, cassettes, CDs and DVDs.
Opposition No. 91194716
3

Additionally, opposer alleges common law use and
ownership of the registered marks GOTHAM GIRLS, GOTHAM CENTRAL
and GOTHAM KNIGHTS used in connection with comics and related
animated television series with direct spin-off storylines
from its alleged famous BATMAN comics. Opposer also alleges
ownership of the registered mark GOTHAM CITY for a variety of
goods and services, including toys and sporting goods such as
soccer balls, playground balls, baseballs, basketballs, and
baseball gloves.
This case now comes before the Board for consideration of
(1) applicant’s motion for summary judgment on opposer’s
asserted claims of likelihood of confusion, dilution, lack of
bona fide use of the marks, and fraud, and (2) opposer’s
cross-motion for summary judgment on its asserted claims of
Opposition No. 91194716
4
likelihood of confusion, dilution and lack of bona use of the
marks. The motions are fully briefed.
A party is entitled to summary judgment when it has
demonstrated that there are no genuine disputes as to any
material facts, and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(a). The evidence must be
viewed in a light favorable to the nonmoving party, and all
justifiable inferences are to be drawn in the nonmovant’s
favor. Opryland USA Inc. v. The Great American Music Show,
Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
When the moving party has supported its motion with
sufficient evidence which, if unopposed, indicates there is no
genuine dispute of material fact, the burden then shifts to
the non-moving party to demonstrate the existence of a genuine
dispute of material fact to be resolved at trial. Enbridge,
Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1540 (TTAB
2009). Further, merely because both parties have moved for
summary judgment does not necessarily mean that there are no
genuine disputes of material fact, and does not dictate that
judgment should be entered. See University Book Store v.
University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1389
(TTAB 1994).
Likelihood of Confusion Claim
The parties have cross-moved for summary judgment on the
claim of likelihood of confusion. Essentially, the parties
Opposition No. 91194716
5
have taken contradictory positions regarding, among other
things, the relatedness of the parties’ respective goods and
services, as well as the trade channels of such goods and
services. Applicant additionally argues that, since its
involved marks constitute an effective parody of opposer’s
pleaded marks, there can be no likelihood of confusion.
We initially note that parody is not, per se, a “defense”
to a claim of likelihood of confusion; rather, “it is merely a
way of phrasing the traditional response that customers are
not likely to be confused as to source, sponsorship or
approval.” Schieffein & Co. v. Jack Co. of Boca, 725 F. Supp.
1314, 1323 (S.D.N.Y. 1989) (quoting J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, § 31:156 (4th
ed. database updated 2012)). Thus, parody is simply another
factor which is relevant to the analysis of likelihood of
confusion because parody is merely another way of arguing that
confusion is not likely. Nike, Inc. v. Just Did It
Enterprises, 6 F.3d 1125, 28 USPQ2d 1942 (7th Cir. 1993); Utah
Lighthouse Ministry v. Found. For Apologetic Info. and
Research, 527 F.3d 1045, 86 USPQ2d 1865 (10th Cir. 1988). In
other words, even if the defendant’s mark has a parody aspect,
that is not necessarily sufficient to prevent likelihood of
confusion. See Elvis Presley Enterprises Inc. v. Capece, 141
F.3d 188, 46 USPQ2d 1737, 1744 (5th Cir. 1998); Dr. Seuss
Opposition No. 91194716
6
Enterprises L.P. v. Penguin Books USA, 109 F.3d 1394, 42
USPQ2d 1184, 1193 (9th Cir. 1977).
In any event, we find, as discussed infra, that there
is a genuine dispute of material fact as to whether
applicant’s marks would be perceived as a parody. We also
find that there are genuine disputes of material fact as to
the relatedness of the parties’ respective goods and
services and the channels of trade of such goods and
services. Accordingly, applicant’s motion for summary
judgment and opposer’s cross-motion for summary judgment on
opposer’s pleaded claim of likelihood of confusion are
denied.
Dilution
When an application to register a mark is challenged on
the grounds of dilution, as is the case here, the Board
looks to three elements: (1) whether the opposer’s mark is
famous, (2) whether the opposer’s mark became famous prior
to applicant’s use of the mark; and (3) whether the
applicant’s mark is likely to blur the distinctiveness of
the opposer’s famous mark. National Pork Board v. Supreme
Lobster and Seafood Co., 96 USPQ2d 1479, 1494-5 (TTAB
2010).3

3In determining whether a mark is likely to cause dilution by
blurring, we consider all factors relevant to the issue,
including the six factors that are enumerated in Section
43(c)(2)(B) of the Trademark Act.
Opposition No. 91194716
7
As a threshold matter, we note that opposer’s asserted
claim of dilution is deficiently pleaded. Specifically, the
notice of opposition does not include an allegation that
opposer’s pleaded BATMAN and GOTHAM marks became famous prior
to applicant’s first use of its involved marks in commerce.
Rather, opposer merely alleges that registration of
applicant’s proposed GOTHAM BATMEN marks is likely to lead to
dilution of the distinctive and famous BATMAN marks and GOTHAM
marks. See Notice of Opposition ¶ 16.
While we recognize that a party may not obtain summary
judgment on an improperly pleaded claim, see Asian and Western
Classics B.V. v. Lynee Selkow, 92 USPQ2d 1478, 1480 (TTAB
2009), citing Intermed Communications, Inc. V. Chaney, 197
USPQ 501, 503 n. 2 (TTAB 1977)(“if a claim has not been
properly pleaded one cannot obtain summary judgment thereon”),
inasmuch as applicant, in support of its motion for summary
judgment, has conceded the fame of opposer’s pleaded BATMAN
marks, and in response to opposer’s cross-motion for summary
judgment on opposer’s claim of dilution, does not contest that
opposer’s pleaded BATMAN marks became famous prior to
applicant’s first use of its involved marks, we deem, solely
for purposes of the parties’ cross-motions for summary
judgment, opposer’s notice of opposition to properly assert a
claim of dilution, but only as to opposer’s pleaded BATMAN
Opposition No. 91194716
8
marks, and that applicant has denied the salient allegations
regarding this claim.4
In view of the foregoing, we find that there are no
genuine disputes of material fact that opposer’s pleaded
BATMAN marks are famous and that opposer’s BATMAN marks
acquired their fame prior to applicant’s first use of its
involved marks.
It is only on the final element of the three-part test,
i.e., in considering the six non-exclusive factors set forth
in Section 43(c)(2)(B) of the Trademark Act, that the
parties take contradictory positions. Applicant argues that
established law permits applicant’s use of its involved
marks as a permissible parody which does not blur opposer’s
pleaded BATMAN marks.
Parody, however, is not delineated as a defense to a
claim of dilution where the defendant uses the parody as its
own designation of source, i.e., as a trademark or service
mark. See Section 43(c) of the Act, which provides the
following exclusions to a claim of dilution:
(3) Exclusions.--The following shall not be actionable
as dilution by blurring or dilution by tarnishment
under this subsection:

4 With respect to opposer’s claim that its GOTHAM marks are diluted by
blurring, as noted supra, opposer has not alleged in its pleading that
its GOTHAM marks became famous prior to applicant’s first use of its
marks, and applicant has not conceded this. Thus, opposer’s pleading
that applicant’s marks are likely to dilute its GOTHAM marks is
deficient, and we cannot consider the motions for summary judgment as
they relate to these marks.

Opposition No. 91194716
9
(A) Any fair use, including a nominative or
descriptive fair use, or facilitation of such fair
use, of a famous mark by another person other than
as a designation of source for the person's own
goods or services, including use in connection with-
...(ii) identifying and parodying, criticizing, or
commenting upon the famous mark owner or the goods
or services of the famous mark owner. ....
15 U.S.C. § 1125(c)(3)(emphasis added).
Under the statute’s plain language, parodying a famous
mark is protected by the fair use exclusion only if the
parody is not “a designation of source for the person’s own
goods or services.” Here, applicant is clearly using its
GOTHAM BATMEN and GOTHAM BATMEN and design marks as source
indicators for its identified services. Accordingly, the
parody exclusion under Section 43(c)(3) of the Trademark Act
is not applicable in this case.
We further note that applicant relies on Louis Vuitton
Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 84
USPQ2d 1969 (4th Cir. 2007). In that case, although the
Fourth Circuit noted that the fair use exception for parody
under Section 43(c)(3)(A) does not extend to parodies used
as trademarks, the Court held that “a defendant’s use of a
mark as a parody is relevant to the overall question of
whether the defendant’s use is likely to impair the famous
mark’s distinctiveness.” Louis Vuitton, 84 USPQ2d at 1978.
The Court explained:
Factor (v) (whether the defendant intended to
create an association with the famous mark) and
Opposition No. 91194716
10
factor (vi) whether there exists an actual
association between the defendant’s mark and the
famous mark) directly invite inquiries into the
defendant’s intent in using the parody, the
defendant’s actual use of the parody, and the
effect that its use has on the famous mark. While
a parody intentionally creates an association with
the famous mark in order to be a parody, it also
intentionally communicates, if it is successful,
that it is not the famous mark, but rather a
satire of the famous mark. That the defendant is
using its mark as a parody is therefore relevant
in the consideration of these statutory factors.

Id. at 1978-79.
We note that no other federal courts have adopted the
Fourth Circuit’s interpretation that, even though the
statute specifically excludes parody as a fair use defense
to a dilution claim, the possible parody effect of the
defendant’s mark should be considered in determining whether
the plaintiff has proved dilution by blurring. In fact, the
Second Circuit, in deciding Starbucks Corp. v. Wolfe’s
Borough Coffee Inc., 588 F.3d 97, 92 USPQ2d 1769 (2d Cir.
2009), specifically stated that “we need not adopt or reject
Louis Vuitton’s parody holding,” because it found that the
defendant’s use of its mark was not a parody that would
favor defendant in the dilution analysis “even if we were to
adopt the Fourth Circuit’s rule.” Starbucks Corp., 92
USPQ2d at 1778.
Just like the Second Circuit in Starbucks, “we need not
adopt or reject Louis Vuitton’s parody holding” at this point.
Instead, we find that there is a genuine dispute as to whether
Opposition No. 91194716
11
applicant’s marks would be viewed by the consuming public as a
parody, as applicant asserts. As part of this question, there
is a genuine dispute as to the similarity of the parties’
respective goods and services, and this affects whether
applicant’s marks would be viewed as a parody.
Accordingly, applicant’s motion and opposer’s cross-
motion for summary judgment on opposer’s claim of dilution,
as they relate to opposer’s BATMAN marks, are denied.
Lack of Bona Fide Use of Applicant’s Marks in Commerce and
Fraud

With respect to opposer’s claims of lack of bona fide use
of applicant’s marks in commerce as of the filing date of
applicant’s applications,5 and fraud based on such lack of
bona fide use of the marks, applicant maintains that its
amateur softball team was formed in February 2006 and that
members of its amateur softball team, who are also members of
its networking referral group, cross state lines to
participate in the softball league while wearing uniforms
displaying applicant’s marks. Further, in addition to playing
softball, these members refer business to one another and

5 We note that opposer has also alleged in its notice of
opposition that applicant does not currently make bona fide use
of its marks. It appears that opposer is actually alleging a
claim of abandonment based upon no bona fide use and/or nonuse
since the filing date of applicant’s applications. We note,
however, that an abandonment claim has not been pleaded and
therefore we have given no consideration to such a claim in our
determination herein.

Opposition No. 91194716
12
generally discuss networking opportunities throughout the
United States. See Declaration of Fred C. Klein, applicant’s
co-founder, at ¶¶ 5-8, submitted with applicant’s motion for
summary judgment. Further, applicant contends that its
network business referral group and associated softball team
are prominent on the Internet, id. at ¶ 9, and that the
specimen of use filed with applicant’s application, and
accepted by the USPTO, clearly illustrates the nexus between
applicant’s business networking referral services and its
softball team. Applicant therefore contends that there are no
genuine disputes of material fact that it had made bona fide
use of its marks at the time of the filing of its applications
and therefore, based on such bona fide use, there is no
genuine dispute of material fact and that, as a matter of law,
it did not commit fraud on the Office.
In opposition to applicant’s motion and in support of its
cross-motion on its asserted claim of lack of bona fide use in
commerce, opposer argues that applicant has not made any
service mark use of its GOTHAM BATMEN marks. Specifically,
opposer contends that applicant has admitted, in response to
opposer’s interrogatory requests, as well as by the testimony
of applicant’s president, that it does not direct any
advertising, promotional materials, or solicitations for goods
and services bearing its marks to the public. Opposer further
maintains, based on applicant’s responses to opposer’s
Opposition No. 91194716
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interrogatory requests, that applicant’s use of its marks is
confined to applicant’s communicating information about its
amateur softball team to other members within its private
organization, to members of its softball team, and to league
officials.
Opposer also contends that applicant’s use of its marks
on softball jerseys as the name of a team does not constitute
bona fide use of the marks in commerce because there is no
interstate use of applicant’s GOTHAM BATMEN marks and,
therefore, applicant is not using its marks to promote
commercial activities, or even non-profit activities, across
state lines. Moreover, opposer argues that the specimens of
use submitted in support of applicant’s applications confirm
applicant’s lack of bona fide use in commerce. Specifically,
opposer contends that the specimens consist of nothing more
than news stories on applicant’s website about applicant’s
amateur softball team and, as such, do not constitute bona
fide use of applicant’s marks in commerce.
In reply, applicant contends that, in response to
opposer’s requests for admissions, applicant responded with an
explicit denial when asked to admit that it did not direct
“advertising, promotional materials, or solicitations for
goods and services” displaying its GOTHAM BATMEN marks to the
public. In fact, applicant points to the testimony of its
president and co-founder, Fred Klein, as well as to its
Opposition No. 91194716
14
responses to opposer’s interrogatory requests, that applicant
has placed its GOTHAM BATMEN marks on promotional materials
viewed by the public. Further, applicant argues that, while
its GOTHAM BATMEN marks are used to promote its softball team,
they are also used to promote the business networking referral
services offered by applicant, including those offered via
applicant’s softball team.
With regard to applicant’s motion for summary judgment on
the ground of fraud, opposer maintains that genuine disputes
of material fact exist which would preclude disposition of
this claim by summary judgment. Specifically, opposer argues
that applicant made material misrepresentations to the USPTO
when it claimed it had made bona fide use of its GOTHAM BATMEN
marks as of the filing date of its applications, because
applicant never made such use in commerce.6

6 We note that opposer also asserts, in opposing applicant’s
motion for summary judgment on opposer’s fraud claim, that
applicant intentionally misrepresented its dates of first use in
its involved applications. Opposer did not allege, as a basis
for its asserted fraud claim in its notice of opposition, that
applicant had provided false dates of use. Even were we to deem
the notice of opposition amended so as to assert this basis,
opposer is advised that, if a mark was in use at the time an
application is filed, a claim as to the date of first use, even
if false, does not constitute fraud. See Western Worldwide
Enterprises Group Inc. v. Qingdao Brewery, 17 USPQ2d 1137, 1141
(TTAB 1990) (“The Board repeatedly has held that the fact that a
party has set forth an erroneous date of first use does not
constitute fraud unless, inter alia, there was no valid use of
the mark until after the filing of the [Section 1(a)]
application.”).

Opposition No. 91194716
15
Based upon the parties’ conflicting arguments regarding
applicant’s specimen of use, as well as other submitted
evidence, we find that genuine disputes of material fact
exist as to whether applicant made bona fide use of its
involved marks in commerce as of the filing date of its
involved applications with regard to its networking services
and whether applicant’s use of its marks in connection with
such networking services constitutes service mark usage. We
also find that, at a minimum, genuine disputes of material
fact remain as to applicant’s intent to commit fraud on the
Office. The parties are advised that the factual question
of intent is particularly unsuited to disposition on summary
judgment. Copelands' Enterprises Inc. v. CNV Inc., 945 F.2d
1563, 20 USPQ2d 1295, 1299 (Fed. Cir. 1991); see also Asian
and Western Classics B.V. v. Selkow, supra, 92 USPQ2d 1478.
We further find, however, that there are no genuine
disputes of material fact as to whether applicant had made
bona fide use of its marks as of the filing date of its
applications with regard to its entertainment services in
the nature of softball games. Specifically, opposer does
not contest that, as of the filing date of applicant’s
applications, applicant’s amateur softball team crossed
state lines to participate in softball league play and that
applicant’s marks appear on the jerseys of applicant’s
softball team members. Further, applicant’s co-founder and
Opposition No. 91194716
16
president, Fred Klein, testified that members of the general
public attend the softball games, see Klein Deposition at
57:25-58:3, submitted as Exhibit E to the Declaration of
Nancy J. Mertzel, counsel for opposer, filed in support of
opposer’s cross-motion for summary judgment. Opposer does
not contest this fact. Although applicant does not charge
the general public for attending the softball games and/or
sell the softball jerseys bearing applicant’s marks, this
does not equate to a lack of bona fide use of the marks.
Indeed, use of marks in conjunction with the rendering of
free services [in this case entertainment services in the
nature of amateur softball games] still constitutes a “use
in commerce” under the Trademark Act. See Capital Speakers,
Inc. v. Capital Speakers Club of Washington D.C. Inc., 41
USPQ2d 1030, 1035 fn. 3 (TTAB 1996) (holding that the mere
provision of services is sufficient for registration and
that a for-profit sale is not required). In view thereof,
we find that applicant is entitled to judgment in its favor
as a matter of law with respect to opposer’s claim of lack
of bona fide use as of the filing date of applicant’s
applications solely in regard to applicant’s recited
entertainment services in the nature of amateur softball
games.
In summary, the parties’ respective motions for summary
judgment on opposer’s asserted claims of likelihood of
Opposition No. 91194716
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confusion, dilution, and lack of a bona fide use in commerce
as of the filing date of the involved applications with
regard to applicant’s identified networking services, as
well as applicant’s motion for summary judgment on opposer’s
pleaded claim of fraud, are denied.7
However, applicant’s motion for summary judgment on
opposer’s claim of lack of a bona fide use in commerce as of
the filing date of the involved applications with regard to
applicant’s identified entertainment services is granted and
opposer’s cross-motion on the same claim is denied.
We note that applicant has requested that the Board
bifurcate this opposition into two separate opposition
proceedings, one for each of applicant’s two involved
applications. Applicant’s request is denied. Contrary to
applicant’s arguments in support of bifurcation, we find
that common issues of law and fact exist with respect to
each of applicant’s applications vis-a-via opposer’s
asserted claims and that it would be judicially efficient to
maintain a single proceeding.

7 The fact that we have identified certain genuine disputes of
material fact as a sufficient basis for denying the parties’
respective motions for summary judgment should not be construed
as a finding that these disputes necessarily are the only ones
which remain for trial. Moreover, the parties should note that
the evidence submitted in connection with a motion for summary
judgment or opposition thereto is of record only for
consideration of that motion. Any such evidence to be considered
at final hearing must be properly introduced in evidence during
the appropriate trial period. See Levi Strauss & Co. v. R.
Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); and Pet Inc.
v. Bassetti, 219 USPQ 911 (TTAB 1983).
Opposition No. 91194716
18
As a final matter, as noted above, opposer has not
properly pleaded its dilution claim. Accordingly, opposer
is allowed twenty days from the mailing date of this order
in which to file and serve an amended pleading which
properly sets forth a claim of dilution, failing which
opposer’s dilution claim will be dismissed with prejudice.8
In turn, applicant is allowed twenty days from the date on
the certificate of service of opposer’s amended pleading to
file and serve an answer to opposer’s amended notice of
opposition.
Trial Schedule
Proceedings herein are resumed. Trial dates, beginning
with the deadline for expert disclosures, are reset as
follows:
Expert Disclosures Due 8/1/2012
Discovery Closes 8/31/2012
Plaintiff's Pretrial
Disclosures Due 10/15/2012
Plaintiff's 30-day Trial Period
Ends 11/29/2012
Defendant's Pretrial
Disclosures Due 12/14/2012
Defendant's 30-day Trial Period
Ends 1/28/2013
Plaintiff's Rebuttal
Disclosures Due 2/12/2013
Plaintiff's 15-day Rebuttal
Period Ends 3/14/2013

8 As noted supra, we have treated opposer’s dilution claim with
respect to its pleaded BATMAN marks as properly pleaded solely
for purposes of our consideration of the parties’ cross-motions
for summary judgment. Opposer’s dilution claim nonetheless
remains deficiently pleaded, as explained above.
Opposition No. 91194716
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In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.125.
Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.129.