Thursday, September 01, 2005

Superman Rules! TTAB Sustains DC Comics' 2(d) Opposition to "KRIPTONITA" for Fruit Cocktail

Jim Croce once warned that "you don't tug on Superman's cape," but Applicant Pan American Grain apparently didn't download that mp3. Applicant's bad faith in choosing the mark KRIPTONITA was an important factor in the Board's decision sustaining the opposition of DC Comics to registration of KRIPTONITA for "prepared alcoholic fruit cocktail." The Board found the mark likely to cause confusion with the mark KRYPTONITE, used as a merchandising mark for a variety of goods, including several food items. DC Comics v. Pan American Grain Mfg. Co., Opposition No. 91125404 (August 24, 2005) [deemed citable on September 30, 2005 (here)].


The strange green rock called "kryptonite" has been part of the Superman "mythos" for decades. Being a chunk of Superman's home planet, Krypton, it has a debilitating effect on the powers of the Man of Steel. It proved to be enervating for Pan American Grain as well.

DC Comics proved that the mark KRYPTONITE, registered for t-shirts and toys, has also been licensed for use with food products: Kraft® macaroni and cheese ("It Sure Beats A Bowl Of Kryptonite") and Diet Coke® ("Caffeine Free. Kryptonite Free."). The Board found that the goods of the parties are related since "consumers recognize that, in the general marketing environment, merchandising marks are used to identify a variety of goods and services."

The Board also found that KRIPTONITA is Spanish for "kryptonite." And it ruled that, although DC Comics failed to prove that its mark is famous, KRYPTONITE is a coined word entitled to a "broader scope of protection."

To make things worse, Applicant's proposed label (see below) for its product features a green, glowingcrystal-like rock that, according to Opposer's witness, "appears to be on a snowy background, which is like Superman's arctic fortress where he would hide from Kryptonite." Applicant admitted that, at the time of filing, it was aware of the mark KRYPTONITE in association with the Superman character, and that it knew KRIPTONITA is the Spanish word for kryptonite (Pan American Grain is a Puerto Rican company).

Applicant's proposed KRIPTONITA label
(colorized by the TTABlogger)

Even Superman would have a hard time digging out from under that pile of evidence. Pan American Grain tried but failed. It pointed to third-party uses of the mark KRYPTONITE, but the Board found only a few to be relevant and unchallenged, and those few were insignificant. Applicant also noted six KRYPTONITE registrations owned by Kryptonite Corporation for locks, bicycle parts, and bags, but the Board pointed out that a consent agreement between DC Comics and Kryptonite Corporation governed that usage and included specific safeguards to avoid confusion. The Board observed that it could not "extrapolate" from that agreement to conclude that there can be no likelihood of confusion with Applicant's use of KRIPTONITA for goods very different from those of Kryptonite Corporation.

DC Comics also pleaded a dilution claim, but the Board declined to reach it in light of the ruling on Opposer's Section 2(d) claim. In any case, since DC Comics failed to prove fame under Section 2(d), it could not possibly have met the higher standard for proof of fame under Section 43(c).

So the lesson to be learned is this: don't tug on Superman's cape.

Text Copyright John L. Welch

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