John Wright is an Intellectual Property Attorney, working at Burris Law. And he is an aficionado of popular culture…
So he was just the person I wanted to look at Marvel's preview of the launch of Great Lakes Avengers by Zac Gorman and Will Robson out on October 12th. And if it actually stacked up legally… did it make sense?
Wright told me,
Sure, it makes some sense. It sounds like The Avengers served the Great Lakes Avengers with a cease & desist letter to stop using the AVENGERS mark without permission, not knowing that Flatman had already applied to register the AVENGERS as a trademark. (I assume this all took place in the United States.)
The Avengers' legal representative calls it "sheer dumb luck" due to "several major shakeups" at Stark Holdings, but it sounds to me more like someone at Stark Holdings forgot to renew the trademark registration, leaving it up for grabs.
So, what probably happened is that Flatman's application to register AVENGERS sailed through since there were no other registered marks that would be confusingly similar to it and he became the owner of a trademark registration.
If something like this happened to a major corporation, the first step might be to attempt to negotiate an assignment of the trademark rights in exchange for a payment. There are probably other legal actions that Stark Holdings could have taken, like filing a petition to cancel Flatman's registration, but a settlement would most likely be cheaper and would allow The Avengers more control of the outcome.
But, in this case, Connie Ferrari is asking Flatman to "waive" all of his rights. Waiving rights is one thing, but assigning them is another. What she will probably do is ask him to sign an agreement either assigning all of his rights in the AVENGERS trademark to The Avengers, or at the very least making him agree to surrender his AVENGERS registration for cancellation.
Conceptually, there's nothing wrong with a contract that exchanges trademark rights for membership in an organization. But, Flatman should save the celebration until he has seen the terms in the contract and all parties have signed on the dotted line
It's DC Shoes all over again…