It’s a rare occasion when a MCU movie or TV show covers something that I feel like commenting on here, but a recent She-Hulk episode covered an interesting area of trademark law, and I think it warrants a bit of my commentary, particularly since I have encountered this situation before.
In episode 5, “Mean, Green, and
Straight Poured in to These Jeans”, Jen Walters, aka She-Hulk, finds herself in
a trademark lawsuit. Her nemesis, Titania, has obtained a trademark for the
name SheHulk and is using it to promote a line of beauty products. Titania has
sued Walters to prevent her continued use of the She-Hulk name. Eventually,
Walters is able to prevail in the lawsuit because she had embraced the She-Hulk
name, and was identified by it, before the trademark lawsuit.
Overall, the story reached the
correct outcome, but I still have a few quibbles. Assuming this is a federal
trademark, it didn’t feel like enough time had passed for Titania to have
obtained a trademark registration, or even an approved application that would
be enforceable. I’m willing to let that pass because I have no idea how much
time has passed in continuity from the emergence of She-Hulk to the events in
the current episode. Additionally, it is far more likely this would have been
resolved at the trademark office than in a court, but that wouldn’t make
compelling TV.
My biggest gripe is that Titania’s
trademark application likely never would have gotten that far. In the United
States, someone cannot register the name of a living person as a trademark without
their consent. The relevant statute states:
(c) Consists of or
comprises a name, portrait, or signature identifying a particular living
individual except by his written consent….[1]
It is highly unlikely that
Titania would have been able to obtain an approved trademark registration over
the She-Hulk name. It is common practice for trademark examiners to conduct a
basic search, and such a search would have shown the existence of She-Hulk,
unless Titania had registered the trademark before there was a She-Hulk. If the
examiner discovered someone identifying as She-Hulk, the application would have
been rejected, unless the applicant, in this case Titania, could provide
evidence that she had the right to seek registration.
Admittedly, sometimes an examiner
might mess up and allow a trademark to register that shouldn’t, but I find it
hard to believe it would occur in this instance. I have recently encountered
something similar, but in a different jurisdiction. An attempt to register a
character’s name as a trademark was initially refused because the examiner
believed the character to be an actual person.
Interestingly, once a name has
been registered as a trademark, then it can be sold and/or transferred, and it
is entirely possible the person can no longer use their name as a trademark.
This is fairly common in the fashion industry where a designer will launch a clothing
line under their name, sell the company, and once they’ve left the company, try
to launch a new brand. If they launch a new brand, they cannot use their name as
the name of their new product line. For examples, look to Halston, Christian
LeCroix, and John Galliano.
As stated above, the eventual
outcome on the show was correct. Titania could not usurp the She-Hulk name
without her consent, and, evidence of She-Hulk being identified as a person
before Titania’s trademark would have been necessary to prevail. Nevertheless,
this still proves the importance of maintaining control over one’s own trademarks,
and if you are conducting commerce using your name, it might make sense to seek
a trademark, and if you sell your company, be certain what intellectual property
assets are being transferred.
[1] 15 U.S.C. Sec. 1052.
[2] See Trademark Manual of Examining Procedure, Sec. 1206.1.
