The character of Superman famously has become associated with certain symbols and indicia which, in the public mind, are inextricably linked with the Superman character and which function as trademarks. Among them include the “S” shield design (i.e., letter “S” inside a five-sided shield), and the pulling apart of a shirt to reveal a uniform below bearing the S-in-shield” emblem underneath.

Cellular Nerd LLC filed an application to register the composite word and design mark, CN (850)GOT-NERD CELLULAR NERD.com, for “installation, maintenance and repair of cell phone related hardware,” in International Class 37.

DC Comics, owner of the SUPERMAN mark and the “S” shield design, opposed the CELLULAR NERD mark under Section 2(d), claiming likelihood of confusion.  DC Comics v. Cellular Nerd LLC, Opp. No. 91246950, 2022 USPQ2d 1249 (TTAB Dec. 20, 2022).

Strong and Famous

Some of the “S” shield registrations were for mugs and clothing, which contained a claim of acquired distinctiveness under Section 2(f), and a Section 2(f) claim may be treated as a concession that the “S” shield design mark was not inherently distinctive. See Yamaha Int'l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (“reliance by the applicant on Section 2(f) assumes that the mark has been shown or conceded to be merely descriptive”); In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB 1990) (“tantamount to an admission”); Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (“reliance on Section 2(f) during prosecution presumes that the mark is descriptive”).

Nonetheless, the TTAB found the “S” shield design to be inherently or conceptually strong, as well as famous and commercially strong, and thus “entitled to a broad scope of protection.” But “fame alone is not sufficient to establish likelihood of confusion.” See Univ. of Notre Dame du Lac v. J. C. Gourmet Food Imps. Co., 703 F.2d 1372, 217 USPQ 505, 507 (Fed. Cir. 1983) (“To hold otherwise would result in recognizing a right in gross, which is contrary to principles of trademark law”).

Differences in the Marks

With respect to the marks themselves, the TTAB also found that the term “CELLULARNERD.com” appears prominently in large font, and is the dominant part of the mark.

          The term CELLULARNERD.com also dominates the mark because it identifies the character superimposed over the letters “CN” in the diamond shield design. This creates the commercial impression of a tech nerd ready to solve your cell phone problems in his persona as a tech nerd, as opposed to the letter “S” shield design marks symbolizing a specific superhero. As such, consumers may easily distinguish Applicant's mark from Opposer's “S” shield and design marks. Because Applicant's mark conveys the image of a tech-savvy, problem-solving nerd with a vastly different set of skills than Opposer's superhero, consumers will not view the marks in their entireties as sufficiently similar to cause them to mistakenly believe there is an association with Opposer.

Different Goods and Services

Licensed products, such as cellphone cases, however, bear the “S” shield marks as “collateral source identification” rather than for establishing a reputation for the mark among purchasers of the licensed products.

          For example, the purchaser of an iPhone case emblazoned with the “S” shield design is unlikely to believe that Applicant's “installation, maintenance and repair of cell phone related hardware” services bearing its mark is somehow associated with the source of the iPhone case. In other words, Applicant's mark and Opposer's marks will not likely give rise to the mistaken belief that the parties' respective goods and services emanate from the same source.

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          The fame of Opposer's “S” shield design marks does not ipso facto mean that consumers will associate Opposer's “S” shield design marks with Applicant's type of “installation, maintenance and repair of cell phone related hardware” services. As noted above, there must be a reasonable basis for the public to associate the source of “installation, maintenance and repair of cell phone related hardware” services with Opposer's “S” shield design marks. On this record, we cannot make the inference Opposer urges.

No Overlap in Channels of Trade

The TTAB also found there was no overlap between the channels of trade, noting there was no testimony or evidence that shows consumers will encounter Applicant's cell phone maintenance and repair services “in the same marketing milieu” as the goods and services bearing Opposer's “S” shield design mark.

Despite the strength of the “S” shield design marks, the TTAB held there was no likelihood of confusion because the differences in the marks outweigh their similarities, and because the goods and services are not related and are offered in different channels of trade to different classes of consumers. The TTAB also found the marks were too dissimilar to support a dilution claim.

Thus, the opposition was dismissed.

The trademark attorneys at Thomas P. Howard, LLC enforce trademarks or defend against infringement nationwide including in Colorado.