Trademark: Difference between revisions
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==See Also== | ==See Also== | ||
* [[Transformers names in other Hasbro lines]] | * [[Transformers names in other Hasbro lines]] | ||
* [[Blastification]] | |||
==External links== | ==External links== | ||
Revision as of 01:40, 6 June 2009
A trademark is a name, phrase or symbol used by a company to distinguish their goods or services from those of other companies in a similar range, preventing "brand confusion". Trademarks are indicated by a ™ symbol, or in the case of registered trademarks, a ® symbol. Hasbro's ability to legally secure a trademark dictates what proper nouns they will use to describe a toy, gimmick, or line.
It is not the same thing as copyright.
Hasbro does not strictly need to claim trademarks for the character names applied to individual toys. Some toy companies do not claim them, though this is most often in the case of short-lived licensed lines based on movies or video games. But, Hasbro values the advantages of maintaining established characters (or character types) in the long term, and they wish to be able to hold exclusive claim to those names and use them as long as possible without fear of litigation from or loss to another company.
Trademark law is full of gray areas and complexity; otherwise lawyers couldn't charge exorbitant sums for their services in that field. The whims of the judges who look at the cases also play into the end results. However, there are guidelines and general rules that can explain why items end up named like they do.
Trademark basics
Trademarks are categorized into groups of products/services, so when a company applies for a trademark, lawyers compare them to similar marks within the same category, not across all products ever. Transformers toys fall under International Class 28, "Toys and Sporting Goods."
The name "Bumblebee" provides an illustration of how these categories work: during the time Hasbro was unable to mark a Transformers toy named "Bumblebee" (see "notable cases", below), Hasbro licensee Fun-4-All was able to release a keychain named Bumblebee, because keychains are not categorized as "Toys and Sporting Goods". Similarly, the character of Bumblebee could be referred to by that name within a comic book, since the comic company was not actually claiming it as a trademark within that field. If they were to release a comic series titled "Bumblebee", though, a trademark search and claim for comics would have been needed.
This is also why there can be car batteries with "Megatron" as a brand name, despite having no connection to Hasbro or Transformers. Hasbro does not make car batteries or anything along the lines of automobile parts, so the odds of "brand confusion" are exceedingly remote, making the battery-maker safe from litigation.
Often, companies that own character-based Intellectual Property (IP) will apply for trademarks across a vast swath of categories to maximize the range of product on which they can use that name. Around the time of Robots in Disguise, Konami brought the wildly successful Japanese collectible card game franchise Yu-Gi-Oh! to the US. Among the trademarks they applied for across multiple categories was "Space Megatron," the name of one of the game cards (called simply "Megatron" in Japan). Some fans, upon hearing this, believed that Hasbro was in danger of losing the "Megatron" trademark. However, since Hasbro had made steady and repeated use of the name over the course of the previous decade (over a dozen toys branded “Megatron” between 1990 and 2001, plus media association thanks to five years of the name belonging to a central villain of the associated TV shows), this seems unlikely. The card in question did end up being called "Space Megatron" because at the time that Konami applied for that trademark, Hasbro did not have any Transformers trading or playing cards and thus could not contest the claim in that field. However, no "Megatron" toys were produced in association with the Yu-Gi-Oh brand. Still, Hasbro ultimately didn't manage to successfully register the name "Megatron" until 2005.
Relevance
Brand recognition
Originally, Hasbro didn't put as much emphasis on outstanding characters for the Transformers toy line from a marketing standpoint as they do today. Toys were supposed to have a shelf life of two years at maximum, to be replaced by new toys, which would be entirely new characters. With the exception of Galvatron (only in the cartoon and comic fiction) and Goldbug, all the new-toy line-ups from 1985 through 1987 were entirely new characters (not counting variants or reuses of existing sculpts, such as the Targetmaster versions of Hot Rod, Cyclonus etc.), as were most of the Pretenders and all of the Micromasters released by Hasbro. As a consequence, Hasbro only bothered to register a small number of trademarks in the 1980s, such as "Optimus Prime" or "Soundwave".
Hasbro didn't originally realize how much of a crucial part recognizable characters had played in the success of the original Transformers series, until they were facing the viewer backlash following Optimus Prime's death in The Transformers: The Movie. As a consequence, the first entirely new Transformers toy to be released under the name of an older toy intended to represent the same character was the Powermaster version of Optimus Prime in 1988, followed by the Classic Pretender versions of Bumblebee, Grimlock, Jazz and Starscream in 1989. Following that, about half of the Action Master line-up in 1990 consisted of "classic" characters from the 1984-85 toy line-up.
Since then, Hasbro have been putting more emphasis on recognizable characters in all their Transformers lines (although Beast Wars put it to a stretch with modified names such as "Optimus Primal" and numerous characters sporting the names of older Transformers toys, but not sharing any other similarities with those characters beyond the name).
Market situation
Hasbro wasn't the only company slowly coming to realize the importance of recognizable, "iconic" characters, however: Similar discoveries were made by competing companies at the same time. Since "characters" were no longer considered easily replaced throwaway elements of toy lines, companies began to put a stronger focus on developing, emphasizing and defending their intellectual properties—which included the characters' individual names: For comparison, back in the 1980s, it was possible for both Hasbro and Tonka to have toys named Blaster and Rumble in their respective Transformers and GoBots toy lines at the same time, without either company bothering to cause any legal problems with the other one. Likewise, Hasbro were able to release a Constructicon named Scrapper in 1985 even though Tomy's US branch had registered the name as a trademark that same year (Tomy was still separate from Takara at that time).
In contrast to that, toy companies enforce their trademarks a lot more rigidly these days. As a consequence, Hasbro's lawyers have become a lot more conservative, objecting the use of any names they fear might interfere with another company's trademark. This has resulted in quite a few names becoming "off limits" for any further use as part of a Transformers toy line, at least until the other company decides to abandon the name in question. In return, Hasbro have also performed several not-so-nice maneuvers to seize a trademark in order to prevent their competitor Bandai from introducing certain toy lines on the US market under their original names, such as "Machine Robo Rescue" or "Crush Gear". Furthermore, Hasbro's legal department also prefers to modify certain names in order to make them easier to defend in court... since Hasbro wouldn't want one of their competitors to release a toy under a name so similar to a Transformers toy's that it could easily cause confusion on behalf of the customers.
Protection and loss
Once a trademark is claimed, legal protection of that mark hinges primarily on usage. A company cannot defend a trademark that they never actually use. Protection of a trademark in the action figure world typically lasts roughly a year, though this (like most anything involving trademark law) is not ironclad. (See "notable cases" below.) The longer and more frequently a company uses a trademark ("consistent use"), the stronger their case becomes to retain ownership of it should it be contested by a competitor.
Registered trademarks are a stronger level of protection, thanks to a more involved process (and some more fees): With a standard trademark claim (™), a company that feels that another company is infringing on one of their trademarks needs to actively prove that they have used the trademark (preferably consistently) if they want to take legal action against their competitor. With a registered trademark (®), on the other hand, that process becomes somewhat automated: A company regularly needs to provide the United States Patent and Trademark Office (USPTO) with evidence of consistent use of the trademark in question anyway in order to guarantee continued registration—otherwise, the USPTO will consider the trademark "abandoned" and cancel the registration. If that company now feels another company is infringing on one of their their trademarks, the burden of proof of consistent use has become automated, and they have an 800–pound gorilla (i.e. the USPTO) backing them up on their case.
Note, however, that even registered trademarks are not by any means absolute protection: Even a registered trademark can be lost due to lack of use (abandonment) or a successful challenge from another company.
Descriptive trademarks
Defensibility is also determined by the name itself and its distinctive qualities regarding to what it’s being applied. One could not reasonably expect to claim trademark of "Apple" as a product name for apples. But for, say, computers, which would not otherwise be referred to as an "apple", that works. In regards to toys and Transformers, "Car" would be basically impossible to defend successfully as a distinct trademark. "Carblast", however, is fairly strong, being a made-up compound word highly unlikely to be used elsewhere. "Autobot Carblast" is even more defensible, thanks to the addition of a clearly nonsensical word, which is by itself very strong, like "Rodimus" or "Cybertron".
Because Hasbro has been shoring up some of their infrequently-used "common word" names in recent years by adding prefixes (such as "Autobot Tracks" or "Decepticon Frenzy"), fans sometimes mistake this to mean that reclaiming a trademark from another company is as simple as writing a faction name in front of it. This is not true. If it were, then a competitor such as Bandai could release a line of robot toys called "Megazord Transformers" with an "Optimus Prime Zord" toy and get away with it. Hasbro's addition of extra words to these old names is primarily to strengthen the claim to a name that is currently (likely) uncontested and Hasbro is likely to try and use often in the future. It is also the case that the names Hasbro has reinforced in this way are all real English words, not made-up words. Real words are harder to defend as a trademark than nonsense words. Adding nonsense to a real word makes it more defensible, but adding nonsense to somebody else's active trademark is only asking for trouble.
Based on some of Hasbro's naming choices, it could be argued that the strategy of Hasbro's IP lawyers is somewhat conservative or cautious. They may be able to defend more than they try to defend, but they choose not to take that risk.
Genericized trademarks
Trademarks can also be lost by allowing a term to become a "genericized trademark" — effectively, letting their mark become a common term, like "aspirin" for acetylsalicylic acid. Aspirin was once a trademarked brand name controlled by Bayer, but in a 1921 court case it was ruled that the name had become genericized and could be used by all manufacturers of acetylsalicylic acid. Note that this applies to the US. Whilst "aspirin" is also a genericized word in the UK, in other countries it is still a protected trademark and other producers of acetylsalicylic acid must use a different term. The status of a trademarked word in one country often has little bearing on its use in other jurisdictions. Other brand names that have become genericized include "thermos" for vacuum flasks (genericized in the USA in 1963), "linoleum" for floor covering, and "zipper" for a method of fastening fabric. Brand names that are also in danger of becoming genericized (but are currently still protected as trademarks) include "Kleenex" for facial tissues, "Jell-o" for processed, gelatinized pig hooves, "Xerox" for photocopies, and "Google" for computer searches.
Recently, Hasbro has realized that using the word "transform" as a verb to describe the process of changing a Transformers toy from one mode into another one would make the brand name "Transformers" descriptive, making the mark indefensible. The end result would have been a loss of the mark Transformers as a registered trademark, allowing competitors to use the term "transformer" as a generic term for their shape-shifting robot toys and thus creating further confusion among parents when asked to buy a Transformer.
As a consequence, Hasbro has implemented various methods of preventing this. For example, use of "transform" as a verb when being used to describe product is almost strictly forbidden in certain written materials[1]: If it's a toy that "converts", Hasbro can argue that Transformers is not merely a descriptive term, thus allowing for trademark protection to persist. Although this mandate does not extend to character dialogue within fiction, synonyms like "convert" (or simply "change") are used in Hasbro's own products (like packaging call-outs and instructions) and in licensees' products (such as game guides).
The international market
Since Hasbro is a company rooted in the United States, the focus of trademarks is also naturally on the United States market. Unlike in the early 1990s, when name variants were abundant across the various international (particularly European) markets—especially when the Generation 1 toyline had been cancelled in the USA, but was still being continued with all-new toys in Europe and other places—Hasbro now aim for a uniform brand representation. In other words, a toy has the same name in every country it's released in by Hasbro (thus making Japanese names an anomaly). However, that could mean a toy that can't be released by Hasbro under its originally intended name in the USA (because another company is already using the trademark), but could easily be released under that name in the United Kingdom, will still be released under the substitute name chosen for the US market everywhere in the world, because it's easier to manage than individual names for individual markets.
In theory, however, this could also backfire: A toy's name that has been cleared for use in the USA by Hasbro's legal department might conflict with another company's trademark in another country. This has actually happened back in 1985, when Hasbro/Milton Bradley introduced the Generation 1 toyline on the European market: A Dutch manufacturer of kitchen utensils held the trademark for "Optimus" and reportedly caused problems with name Optimus Prime, initially resulting in MB holding back the release of the Optimus Prime toy and declaring Jetfire the leader of the Autobots instead. (The conflict was eventually settled, and the Optimus Prime toy released.) Note, however, that this is a rather unusual case: In general, European trademark law is a lot less rigid than it is in the USA, and Hasbro generally refrain from using any trademark claims after names on their international packaging, because that would require them to actively try to defend those trademarks in every single country they release those toys in.
Although there are no known recent examples of Transformers toys that couldn't be released in specific countries for trademark reasons, there is at least one case where the intention to release a toy on other markets did affect the United States name of the toy: For the Animated toyline, Hasbro registered the name Slag, in homage to the Generation 1 character of the same name. Even though the trademark was never opposed, and Hasbro renewed it as recently as Christmas of 2007, they were eventually informed that "slag" was considered a slur word not only in Beast Wars, but also in the United Kingdom. As a consequence, Hasbro decided to change the toy's name into "Snarl", and released it under that name on all worldwide markets, including the United States.
Names that require(d) prefixes or suffixes
Hasbro
- Blades: Autobot Blades
- Blaster: Autobot Blaster
- Brawl: Decepticon Brawl
- Bruticus: Predacon Bruticus, Bruticus Maximus
- Camshaft: Autobot Camshaft
- Cosmos: Autobot Cosmos
- Devastator: Constructicon Devastator
- Drag Strip: Decepticon Drag Strip
- Dropshot: Decepticon Dropshot
- Fracture: Decepticon Fracture
- Frenzy: Decepticon Frenzy
- Grapple: Autobot Grapple (misspelled as "Auotbot Grapple" in several places on the Commemorative Series reissue's packaging)
- Groove: Autobot Groove
- Heavy Load: Decepticon Heavy Load
- Hot Spot: Autobot Hot Zone (the ultimate real "Autobot Carblast" case - renaming "Hot Spot" into "Hot Zone" and adding an "Autobot" prefix) used only once, the Titanium Series figure is simply named "Hot Zone", without prefix
- Hound: Autobot Hound
- Jazz: Autobot Jazz
- Primus: Cybertron Primus (exceptional since it has never been used as a Transformers toy's name before)
- Ratchet: Autobot Ratchet
- Ravage: Battle Ravage, Command Ravage (both abandoned, back to simply "Ravage" since 2007)
- Reverb: Decepticon Reverb (for the unreleased Movie Scout, only two years after a toy using the name without a prefix was released)
- Rumble: Decepticon Rumble
- Roadbuster: Autobot Roadbuster
- Scrapper: Decepticon Scrapper
- Skids: Autobot Skids
- Tarantulas: Predacon Tarantulus (using the spelling "Tarantulus" only once), Predacon Tarantulas
- Tracks: Autobot Tracks
- Whirl: Autobot Whirl
- Wheelie: Autobot Wheelie
TakaraTomy
- Cheetas: Cybertron Cheetas
- Hot Rod: Cybertron Hot Rod
- Inferno: Cybertron Inferno
- Octone: Destron Octone
- Perceptor: Cybertron Perceptor
- Sling: Cybertron Sling
- Streak: Cybertron Streak
- Vorter: Destron Vorter
- Wildrider: Stuntron Wildrider
Oddly, while TakaraTomy's versions of the Revenge of the Fallen toys use the same names as their Hasbro counterparts, including "Autobot" and "Decepticon" prefixes, TakaraTomy have largely kept "Autobot" and "Decepticon" prefixes intact... but dropped the "Autobot" prefix for Skids and Springer, while adding more prefixes for toys whose Hasbro versions don't have prefixes:
- Blaze Master: Autobot Blaze Master
- Breakaway: Autobot Breakaway
- Knock Out: Autobot Knock Out
- Overload: Decepticon Overload
- Rampage: Decepticon Rampage
- Mixmaster: Decepticon Mixmaster
Notable/unusual cases
- As mentioned above, "Bumblebee" was unavailable to Hasbro for many years. The name was being used as a registered trademark by a company called Playcore for their "Buzz the Bumble Bee" swing as of 2003, and as Hasbro had not used the name for a toy since 1995, their case to contest was likely a weak one. The Heroes of Cybertron PVC two-pack with Spike Witwicky was officially named "Autobot Espionage Team" for that reason, although the bio on the back of the packaging identified the two characters as "Bumblebee" and "Spike" (but without claiming them as trademarks). However, in March 2005, Hasbro tried to reclaim the trademark, due to its intended association with a principal character in the big-deal live-action movie and its associated merchandise planned across a great many categories. However, the registration attempt was contested in July 2005, both by a production company named "Bumble Bee Productions, Inc." and by an online toy retailer named "Bumblebee Toys", both of which argued that the mark, as it was filed under the "toys" field, was too close to their own registered marks. Ultimately, Hasbro abandoned the registration attempt for "Bumblebee" in 2006 and simply decided to use the name as a "normal", non-registered trademark instead. The movie's release date being pushed back a year meant that the first "Bumblebee"-branded Transformers toys in over a decade were a 3" Titanium Series figure and a toy from the Classics line. (Playcore, or more accurately, its subsidiary Swing-N-Slide no longer manufactures the "Buzz the Bumble Bee" swingset.[2])
- "Bluestreak" is one of the most infamous cases of a name of a classic character being unavailable to Hasbro, since a company named Gendron, Inc. registered the name "Toledo 'Blue Streak'" in 2002. All toys based on the Generation 1 Bluestreak character released since then are officially named "Silverstreak" instead. (Note that this does only affect Hasbro; while the character is traditionally known as simply "Streak" in Japan, TakaraTomy have recently released a blue redeco of the Binaltech Streak toy, named "Bluestreak".)
- Next to Bluestreak, "Hot Rod" is the most well-known case of a name unavailable to Hasbro. Mattel has registered various "confusingly similar" trademarks over the years, among them "Ho! Ho! Hot Rod", "Hot Rods" and "Hott Rodd". Hasbro's original substitute name for the Commemorative Series line of reissues was "Rodimus Major"; "Rodimus" was used for Energon and then later also for the Classics Deluxe toy and the Universe Legends toy; and the toy based on the Animated Rodimus Prime character has been confirmed to be named "Rodimus Minor".
- "Shockwave" was temporarily lost to a company named Lanard Toys, Ltd—who actually used it in their The Corps! military figure series, direct competitors to Hasbro's G.I. Joe. An Energon toy designed as an homage to Generation 1 Shockwave was named "Shockblast" instead, as was the Alternators toy. However, Lanard had abandoned the registration for the "Shockwave" trademark shortly prior to the release of the Alternators toy (too late to change the name on the packaging), so Hasbro seized the opportunity and slapped the name onto the next available Mini-Con just to claim it back. They have since been able to use it for other toys more closely based on the Generation 1 character. Ironically, a figure from Hasbro's G.I. Joe 25th Anniversary line based on an older figure from 1988 named "Shockwave" was relased under the name "Shockblast" in 2008, presumably in an attempt to avoid brand confusion. Apparently, Hasbro consider the name "Shockwave" more iconic for the Transformers character.
- In 2001, Hasbro trademarked "Skyfire" for use in the Robots in Disguise line. However, at the same time, their competitor Mattel applied for a registered trademark on the name for a vehicle/accessory in their Max Steel toy line. Without any past usage to call on to contend Mattel's claim, Hasbro lost the trademark for "Skyfire" to the stronger registered claim within a very short time frame. This resulted in the name "Sky Blast", used first on an Armada Mini-Con, then for the Energon Omnicon Skyblast, who is a clear homage to the Generation 1 cartoon character, "Skyfire".
- A particularly odd case: During the 1990s, another company held the "Sideswipe" trademark in the "toys" field, even though Hasbro still released two toys using that name as part of the Generation 2 line (it's unclear if this resulted in any legal repercussions for Hasbro). When Hasbro finally managed to reclaim the name for the Robots in Disguise line, the name was now parsed as "Side Swipe", in two words, for whatever reason. The only two toys since then to spell "Sideswipe" as one word again were the OTFCC 2003 exclusive and the Armada Super-Con. However, the former was referred to as "Side Swipe" when featured as a cross-sell on the packaging for the OTFCC 2003 Shadow Striker/Roulette two-pack, whereas a packaging variant for the latter released as part of the "Unicron Battles" refresh of the Armada line also saw the name changed to "Side Swipe". After many years' worth of "Side Swipe" toys, the 2008 Universe Deluxe toy finally hailed the return of "Sideswipe" (as one word).
- In 2005, Fun Publications was forced to change the name of a BotCon 2005 exclusive intended as an homage to Generation 1 Outback to "Fallback". The Outback Steakhouse restaurant chain has successfully applied for "Outback" across a vast number of categories. Since Hasbro had not used the name for a product since 1993, there seems to be no way for them to wrest control of Outback Steakhouse's active claim to the mark without heavy modification - the "Outback" name was used for a 2008 exclusive GIJoe figure, as well as a forthcoming limited release, as "Stuart 'Outback' Selkirk." TFWiki.net then presumes it is only a matter of time until fans start clamoring for a figure of Judd "Hot Rod" Nelson, although Casey "Bluestreak" Kasem is still probably out of the question.
- Similar trademark problems affected other items in the BotCon 2005 set: notably, Chromia began life as Moonracer until it was discovered Royal Treasury, LLC owned the "King Moonracer" trademark for toys from the Rudolph the Red-Nosed Reindeer TV special. Unfortunately, Moonracer was already well into production when Fun Publications learned the name was unavailable, and due to the time involved in trademark searches, a suitably appropriate alternative could not be found. This necessitated the use of Chromia — reportedly their "third or fourth choice", but a name which had cleared legal.[3] Brian Savage expressed particular vexation with this turn of events at the BotCon 2005 organizer's panel.
- According to Hasbro copy writer Forest Lee at BotCon 2006, Hasbro's IP lawyers were initially skittish about using the name "Matrix of Leadership" on packaging for the 20th Anniversary version of Optimus Prime, as they were unaware of the history of the term "Matrix" within the brand, and feared confusion with the franchise surrounding the film, The Matrix. Although the lawyers were satisfied and allowed "Matrix" to be used in that instance, it appears that some variation of the term "All Spark" may supplant "Matrix" in future Transformers franchises. "All Spark" is, of course, an easier mark to defend because — unlike "matrix" — it is a contrived compound word that doesn't have any other meaning.
Footnotes
- ↑ Greg Sepelak, author of the Transformers The Game strategy guide from BradyGames
- ↑ Retailer site mentioning the discontinuation. Also, said swing is no longer visible/available on Swing-N-Slide's official site.
- ↑ alt.toys.transformers post by Lanny Lathem explaining the Moonracer/Chromia SNAFU.
