The Buck Rogers comic strip and its many spin-off novellas, films, television series, and toys introduced Americans to the dream and adventure of space travel.  Legal conflicts over possession of the rights to Buck Rogers have been more mundane but just as long lived. The comic strip, which debuted in 1929, was developed by Philip Francis Nowlan under contract with John F. Dille’s National Newspaper Service.  The Nowlans and the Dille’s have been fighting ever since over the rights to the BUCK ROGERS trademark.  Even today, more than eighty years after Buck’s first adventure, the heirs of Dille and Nowlan are staking conflicting claims to the trademark.  Here’s a brief look at one of the issues raised by recent litigation between them in the Federal District Court for the Eastern District of Pennsylvania.

A trademark is a source identifier, that is, it identifies the source of goods and services. But can a trademark itself be a good? In The Dille Family Trust vs. The Nowlan Family Trust, Plaintiff Dille asserted various claims of breach of contract, confusion, deception, and false description among others.  Many of these claims arose out of Defendant’s marketing scripts for use in future television series, movies, and merchandising.  In response, Nowlan filed a motion to dismiss on various grounds, among them that Plaintiff failed to a identify a “good” in relation to use of the BUCK ROGERS mark in interstate commerce.

Under the Lanham Act (i.e., U.S. trademark law), to state a claim for confusion, deception or false description, a plaintiff must show among other factors that  defendant’s “use of the mark to identify goods or services is likely to create confusion.” Interestingly, the Lanham Act does not define “good.”   For that definition we look to the U.S. Supreme Court decision in Dastar Corp. v. Twentieth Century Fox Film Corp., in which it defined “goods” as wares, merchandise, and tangible products.  Trademarks themselves are not, however, tangible goods, which, as the court in The Dille Family Trust case wrote, is consistent with their purpose of protecting consumers from confusion about the source of goods and services.  The court concluded that the BUCK ROGERS scripts that Defendant allegedly marketed were certainly goods under the Supreme Court’s decision but future movies or television series – because they are intangible – are not.

So, there you have it.  To state a claim for “confusion” under the Lanham Act, you must allege confusion of the trademark as it occurs in relationship to tangible products or services.  By the way, in case you were wondering, digital products may be considered goods if, from the consumer’s perspective, he or she sees a tangible product in the digital media.

— Adam G. Garson, Esq.