Clerk Kent – superhero or software developer?

 In Naming failure, Trademark, Trademark law, Trademark name search

Another case on the topic about choosing a well-thought-out name for your trademark is between the world-famous comic book publisher, DC Comics, Inc. and Neam AB, a Swedish software development company.

Neam filed an application with the Swedish Patent and Registration Office (PRV) on November 18 in 2016 for the trademark CLERK KENT in classes for computer software programs and various advisory services. However, it seems like the company immediately had second thoughts, as it one day later filed a request to change the mark to either CLERK or CLERK.AI. PRV declined the request, as the changes were considered too big, which would affect the overall impression of the mark.  Furthermore, CLERK KENT was accepted on January 31 the following year and announced in the Swedish Trademark Gazette with an opposition period of three months.

DC Comics was founded in 1934 and its superhero portfolio includes well-known characters such as Wonder Woman, Batman and Superman, also known Clark Kent. It holds the rights to the trademark CLARK KENT in Sweden since 1997 for perfumes, cosmetics and men’s clothing. The company opposed Neam’s registration and demanded that it should be revoked based on that the two marks are confusingly similar, both visually and phonetically. It accused Neam of registering the mark in bad faith to profit from DC Comic’s goodwill, and claimed that CLARK KENT is renowned, well established, has good reputation and is perceived as positive.

PRV’s overall assessment is that DC Comic’s goods and Neam’s services cannot be considered as confusingly similar. DC Comic’s goods are easily accessible and of such a nature that they target consumers in general. Neam offers its services to a professional public, functioning as support or guidance for other companies’ performance or improvement. Since the two companies are targeting different client groups through separate distribution channels, they are not competitors from a legal trademark perspective.

Although Neam got to keep its registration for CLERK KENT, the company is currently using CLERK.AI, which it hasn’t registered (yet?). In conclusion, there are ways of working around problems like the obvious connection between Clerk Kent and Clark Kent. However, since no changes can be made to an existing trademark application, other than for example deleting part of a classification, it is important to make a thorough analysis before filing it.

As a part of Otmore’s proactive strategy, we offer a free trademark analysis to highlight any potential risks or obstacles that might delay or prevent your mark from being registered. Contact us and we are happy to tell you more about how we can help secure your assets.

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