January 02, 2012 11:42am PT by Eriq Gardner
Does Hasbro Have a Strong Trademark on 'Transformers'? (Analysis)
In 1984, Hasbro introduced a line of alien toy robots named the "Transformers." For nearly thirty years, the war between the Autobots and the Decepticons has enraptured audiences in comic books, animated TV series, and feature films. Now, the otherworldly battle for technological supremacy has triggered a legal fight between Hasbro and a computer manufacturer which has introduced a high-end tablet/laptop hybrid computer dubbed the "Transformer Prime."
Last month, Hasbro filed a lawsuit alleging trademark infringement against Asus Computer International. According to Hasbro, the defendant's new tablet computer threatens to "undermine the decades of time and millions of dollars" that Hasbro has invested, including on the Optimus Prime character, which the The New York Times once said was the "toughest robot in the nerd universe," and its licensed Transformers Prime TV series, which first aired in November 2010.
In response, Asus wonders whether it's really possible that a high-end tablet computer is likely to cause confusion in the marketplace with a line of toys.
Hasbro has a history of being extremely protective of its trademarks, and perhaps due in part to the business that it is in, the disputes tend to be quite humorous and eye-opening. Among our favorites from the past few years:
- In 2008, Hasbro sued two Indian brothers who introduced a Facebook application, Scrabulous, which let its users play an online simulation of the popular board game Scrabble.
- In 2010, Hasbro sent a cease-and-desist letter to the Senate campaign of Sharon Angle, saying the candidate never received permission to use the rights to Monopoly for its "Harry Reid Amnesty Game" website.
- Last month, Hasbro sent cease-and-desist letters to a Swedish-based website called PonyArchives.org, which catered to adult male fans of the 1980s TV show, My Little Pony. The fierce IP protection drew a strong rebuke from the leader of website, who wrote, "Today we learned that Hasbro, are no real bros. They are indeed proper wankers."
Hasbro has taken the insults in stride, remaining vigilant.
The latest battle draws in Asus over its Eee Pad Tranformer Tablet.
In anticipation, Hasbro has quickly unleashed its legal fury, not only with a lawsuit on the eve of Christmas, but also a motion for expedited discovery and a preliminary injunction motion.
Asus, which showed off its tablet at a trade show last January, got a cease-and-desist letter soon thereafter, and then heard nothing for nearly a year, was nearly caught off guard by the sudden litigation flurry. But last week, the company submitted court papers with the intention to slow down the lawsuit, which it says was filed abusively by Hasbro during holiday season so as to hamper a response. In making efforts to slow down the lawsuit, Asus also signaled how it intends to fight claims of trademark infringement and unfair competition.
Asus points out that Hasbro only filed a registration for a trademark for "Transformers Prime" in April, 2010, and that the United States Patent & Trademark Office hasn't yet granted it. Asus further states that the toy manufacturer hasn't yet sold merchandise on the mark yet. According to the papers, the merchandise is said to be coming in March.
Will Hasbro's coming merchandise really compete with a tablet that transforms into a netbook and confuse folks?
Hasbro cites some tech bloggers who have used the appearance of the new computer to wax nostalgically about their boyhood geek fetishes, but Asus says this isn't enough:
"Although Hasbro refuses to disclose what the merchandise is that is to be sold in March 2012, it most likely will be more toys and games like the classification under which it was filed—again creating no actual confusion with ASUS tablet computers. Hasbro’s claim that consumers are growing increasingly confused with each day is false and unsubstantiated. Further, a cursory glance at the website advertising by ASUS and Hasbro evidences the different and non-confusing use by ASUS of the word “Transformer” when used to describe tablet computers, versus Hasbro’s Transformers mark used to sell robot toys."
Asus is primed to argue that that its use of "transformer" is descriptive. After the computer company received Hasbro's first cease-and-desist letter early last year, it responded by telling Hasbro that the trademark didn't cover Asus' use of the word to show consumers what the Eee Pad tablet does.
The battle between the toy autobots and alleged trademark decepticons is now before a California federal judge. Representing the plaintiffs is Vito Costanzo at Holland & Knight. Appearing for the defendants is David Miclean at Miclean Gleason.