19 November 2008

Hasbro re-registering trademark on Rom

On November 6, 2008, Hasbro began the process of re-registering trademarks on "Rom" and "Rom the Spaceknight." What exactly they have in mind, I can only speculate on. But first, let's review a little terminology and history. In the interest of keeping this (relatively) short, I'm going to gloss over some details where possible. And naturally, I must disclaim the following as legal advice, as I am not a lawyer and don't even play one on TV.

First, if you don't know, a trademark is merely a word or logo used to distinguish the goods of a company from all other companies similar goods. The words "Coke," "Pentium," and "Spider-Man" are all examples of trademarks. Any company can declare something a trademark by adding that little TM symbol (™) after the word or logo wherever it appears on the company's packaging.

However, to assure full legal protection, it is best to register the trademark with the federal government. The agency that handles this is the U.S. Patent and Trademark Office (USPTO). Once a trademark's registration is approved, it becomes a registered trademark. At this point, and only at this point, the company can use the little R in a circle (®) on its logos instead of the TM.

Another aspect of registered trademarks is that they only apply to the category of items for which they are registered. For example, while no one else can call a drink "Pepsi," one might be able to use it for a hammer. (I by no means advise trying this, as the litigation would probably kill your company even if you ultimately manage to win the lawsuit.) This is also why Apple Computers has had a history of trouble with Apple Records since going into the music market with iTunes.

That's trademarks in a very small nutshell. For further reading, I suggest reading the USPTO's Trademark FAQ and/or visiting their trademark page.

Moving on to the history, back in 1979 when Parker Brothers released the Rom action figure, they filed with the USPTO for a trademark on the word/logo ROM. This was actually done through their parent company at the time, CPG Product Corp. Although the toy was only sold for a couple years (at best), they maintained the rights to the trademark until 1987, about a year after the character's Marvel comic book series had been canceled. Parker Brothers assets were later acquired by Hasbro, who is still Parker Brothers' parent company today.

Trademark law is a tricky thing. Because Marvel had licensed the Rom character from Parker Brothers, they could no longer use him upon expiration of the agreement. Or, at least, not blatantly. He managed to make a few cameos in the years after his series, but by and large it is most likely Marvel has seen no potential profit in reviving a B-list character they'd have to pay for the rights to use again.

It is important to note that Parker Brothers only registered a trademark on the mark "Rom." Not "Rom the Spaceknight" or anything similar. The title of the comic book series, according to the indica, was similarly just "Rom," not "Rom: Spaceknight" or any other variation on that theme. Although generally included on the cover, the word "Spaceknight" was sometimes omitted there as well. Furthermore, the registration only covered it's use for "toy figures and related accessories sold as a unit." If you look at your Rom comic book collection, you will not find a single instance of "Rom" as a registered trademark because comic books weren't the category the trademark was registered for.

This became important in 2000 after Chris Batista got the green light for his Spaceknights limited series. He was kind enough to contact me during this period and one of the things he told me was that Marvel's legal department was concerned that they couldn't use the name "Spaceknights" because it might be co-owned with Parker Brothers as well. Ultimately they not only decided they could use the name – most likely for the reason just noted above – Marvel even applied for registration of the "Spaceknights" trademark themselves. (Only as a comic book title, mind you.)

Now we're back where we started: Hasbro has re-registered for a trademark on Rom. This time they've gone much further than they did back in 1979. They applied for eight trademarks, four on "Rom" and four on "Rom the Spaceknight." (I should note that the phrasing of the latter was most likely chosen because it is the three word phrase that actually appeared on the action figure's box back in '79.) That's one for each of the two versions of the mark in four different categories: entertainment, paper goods, toys, and equipment. The last one is a bit puzzling. In full, the category is:
Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus.
If that seems like an odd combination of items, it might not entirely be Hasbro's fault. The USPTO seems to have certain categories for marks and many of them are some odd groups of things. The forum that I believe first announced Hasbro's move says the category is "normally used for video games." Although in this case it seems Hasbro's wording for the numeric categories they registered might simply be out of date. Other video game trademarks in the USPTO's Trademark Electronic Search System (TESS) database actually just say "video game software." Then again, a vending machine that looked like a life-sized Rom would be really cool!

So we're finally back to the question of "why?" Why has Hasbro chosen to do this after all these years? Could it be that repeated interest from various parties in somehow bringing Rom back to comics has finally gotten their attention and something is forthcoming? Or have they gotten wind of someone who was going to take advantage of the Rom trademark's inactive status and are preparing for a lawsuit to stop it? I hope it doesn't mean they're coming after my humble fan site. Surely it wouldn't be worth all that trouble. All I can say for sure is that, pending the actual approval of the USPTO, I might have to change the fine print at the bottom of all those pages from "ROM was a trademark" to "Rom is a trademark." Thank goodness for server-side includes.


  1. I personally don't think this should be read into much, if at all. It's like a domain name, at this point. Either you're willing to give it up if it's not active and not pay $10 a year to keep it (using domain name costs as the example) or you keep it for that insanely cheap price "just in case". I'd tend to believe Parker Bros is not stupid enough to see Rom as a "complete waste of their time"... but I don't believe for a moment they have any long term plans for it / him. :-/

  2. My best guess is that it's due to the 30th Anniversary next year - AND that Bing McCoy was trying hard to regain the rights.

    Hasbro manufactures the Marvel Legends action figures and all I can say is I WANT A NEW ROM figure!

    I have 2 of the old ones (one complete in box & one with no box, missing the neutralizer) and have recently secured a full size statue/kit and bust.

    Happily, buying and reading it since issue # 3, when it came out on the stands, I also have the full comic-run as well as every appearance, reference and cameo in comics and without (yup - the TIME magazine issue), and still crack open the occasional comic issue for fun.

    I don't have a ROM tattoo or anything, but I'll go on record as saying that I'm a big fan of the toy and comic, and can only hope that ANY new enterprise not fall victim to "revisit-itis", like when old TV shows are made into horrid movies.

    Just to help spread the "good news", I posted an article on the Hasbro TM dealie on my blog.
    Feel free to check it out.


    (I give you proper credit, as well as the allspark forums)


  3. Anthony,

    I'd agree with you if this was a simple renewal. But the fact that Hasbro/Parker Brothers has let the mark be expired for 20 years makes it significant. Further digging also reveals that, unlike back in 1979, what has been filed is an "intent to use" application. This requires a sworn affidavit stating they plan to use the mark in commerce soon. The application won't be approved until they file another form stating that they have begun using it.

    They've also spent about $2600 in application fees alone so far, with another $800 required when they actually start using it. Yes, that's pocket change to a big company like Hasbro, but add in attorney fees to fill out the paperwork and it doesn't sound like something they'd do without a good economic reason.