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G1 Transformers trademarks and their current status with Hasbro

Written by Nevermore
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Introduction: Name reuses within the various Transformers toylines

Index by years

Alphabetical index

Part 1: Overview - copyrights, patents and trademarks

Part 2: Names Hasbro never lost (1)

Part 3: Names Hasbro never lost (2)

Part 4: Names Hasbro managed to get back (1)

Part 5: Names Hasbro managed to get back (2)

Part 6: Names Hasbro had to modify

Part 7: Names Hasbro had to find a substitute for

Part 8: Names of characters which were originally not released as toys

Part 1: Overview - copyrights, patents and trademarks

Oftentimes when the topic of a Transformers toy's name comes up, many fans confuse the terms "trademark" and "copyright" (in rare instances, even the term "patent" gets thrown in). However, those are two totally different subjects, which I would like to clear up before discussing the current status of our beloved G1 characters' names.

The term copyright (not "copywrite", which is something else entirely - copyright is the right to copy something; likewise, the past tense is "copyrighted", not "copywritten") affects original works. When you write a text, or draw a piece of art, or design a toy, the work is automatically copyrighted to you as the author under US law. The only exception to this rule is when you're working under a work-for-hire contract that contains a clause which specifically grants the copyrights to everything you created in the context of your contract to your employer. Imagine an artist suddenly decided to sell copies of a comic book he originally drew as an assignment for a publisher by himself! The publisher obviously wouldn't be particularly happy about it.

When the work created is a piece of engineering, a toy or something else that fulfils a specific function, you can also patent it in addition to the copyright protection (Takara usually file for design patents for all Transformers toys they create). Patents aren't limited to actual products, but can also cover mere ideas, concepts or inventions that fulfil a specific purpose. The idea behind a patent is the acquisition of exclusive rights in exchange for public disclosure, so you can prevent someone else from using a technology if you decide you don't like it. Unlike copyright protection which automatically applies from the moment you created your work, you have to actively file for a patent. Also, patent protection expires after 20 years in the USA, whereas copyright protection lasts a lot longer.

Names, meanwhile, can't be "copyrighted". If that was possible, you'd commit copyright infringement everytime you "copy" (i.e. write down) or "perform" (i.e. say out aloud) a name. Imagine that! Five years in jail for saying the name "Optimus Prime" without Hasbro's permission! It should be obvious that this would be difficult to enforce. As I said before, copyrights only apply to original works. A name hardly meets the threshold of originality required for a work to be considered copyrightable, especially not when the name in question is merely an everyday term, or composed of several of such. For a name to be considered copyrightable, it would have to be a rather long and unusual name. Nothing that would easily fit on a toy's packaging for sure. In addition, a work is only copyrightable if it expresses something. "Optimus Prime" doesn't express anything per se. "Optimus Prime goes to the store" is slightly different, although it most certainly still wouldn't qualify for the threshold of originality required for copyright protection. A longer story about Optimus Prime going to the store, buying some stuff and meeting other people there would already get closer to what's required for copyright protection.

When you create an original work (a story, a film, or a toy), you usually want to sell it (that is, unless you're one of those idealistic artists to whom money means nothing). In order to sell it, you need a name to market it under. And this is where the term trademark comes into play. A trademark is a mark (a name, or a complete phrase, an advertising slogan, a logo, or even a smell etc.) used in trade (i.e. in advertising, in commercials, in catalogs or on the product's packaging itself). Several factors come into play here that have an influence on whether you are able to use a specific trademark, or not:

First of all, the name has to be trademarkable to begin with. Granted, in theory, you could use an everyday term like "car" or "shoe" and use it as a trademark; however, this would be rather undesirable, since everyday terms are difficult, if not outright impossible to defend in court, and thus there would be hardly any trademark protection. You obviously don't want to call your product by a name which everyone else could use as well, and which in turn you couldn't do anything about! In addition, a trademark can't be anything that's purely descriptive of the product in question. A piece of fruit called "Apple" would be virtually impossible to defend in court.

That brings us to the second factor: The name should be something that's not already used by someone else. If a huge fast food restaurant chain is called "McDonald's", you'd better not open your own restaurant under than name if you don't want to be sued for trademark infringement. This isn't limited to exact terms, but could also apply to names that are considered confusingly similar to a name someone else already holds the trademark for. For example, in a theoretical case where Mattel held the trademark for "Sound Warps", Hasbro better shouldn't use the name "Soundwarp" for a Transformers toy, or Mattel's lawyers could deem this a case of trademark infringement. The idea behind this is that trademarks serve as an "identifier of source", and thus a confusingly similar trademark could mislead the target audience into believing a product was from a different manufacturer. Hasbro obviously don't want Transformers fans to buy other transforming toys from their competitors, especially not when they have names that could fool the target audience into believing that the toy in question was a real Transformers toy. Therefore, "Transformers" and all related trademarks, including confusingly similar ones such as "Trans Farmers", "Optimal Prime" or "Scarstream", are off-limits for anyone who doesn't want to make the acquaintance of Hasbro's legal department.

What exactly qualifies as "confusingly similar" is often a matter of debate that would ultimately decided by a court. As a result, Hasbro's legal department prefers to stay on the safe side and rejects everything they believe another company's lawyer in his worst mood could possibly consider "confusingly similar" to one of his company's trademarks.

On the upside, trademarks are specifically limited to the fields they are intended to be used in. For example, the Beatles' old record company "Apple Music" can perfectly coexist with Steve Jobs' "Apple Computers" as long as both keep out of each other's territory. If you want to use a trademark in more than one field, you'd either need to specifically file for all those fields in one fell swoop, or file an additional trademark application for the other fields later if you decided that you want to use the trademark in more fields other than the ones you already hold it for. However, in that case you'd have to make sure that no-one else is already holding a trademark in those fields (see "Apple Music vs. Apple Computers").

In order to keep a trademark, you are required to constantly police it. Essentially, you have to regularly fulfil several criteria in order to, simply put, qualify for being "worthy" of keeping it. First of all, you have to use the trademark continuously. You can't simply file for a trademark, then sit on it for years and make a quick buck from suing other people for infringing your trademark, while not actually doing anything with it yourself. At least every two or three years, you have to use the trademark in commerce (generally by putting out a product using that name as an identifyer). If you can't prove consistent use, a competitor of yours could try to secure the trademark for using it himself, arguing that you had failed to use the trademark in commerce and therefore effectively lost your claim to it.

Trademark uses are not limited to names printed on the front of the packaging. A small name on the back of the packaging or even just in the instructions used to identify an individual toy from multi-pack also applies. Even a name not included in any of the materials included with the product itself, but featured in an official catalog or on the manufacturer's website used to identify a product could qualify as a trademark use under certain circumstances. It's even possible to outsource a product to a licensee which then uses the trademark under license. As long as the licensee explicitly identifies the mark in question as your trademark that's used under license, that actually counts as a trademark use for you! For example, Hasbro hold the trademark for "Transformers" in the "comic books" field, even though they don't release any comic books themselves. However, by licensing the name to IDW Publishing, who identify "Transformers" as a Hasbro trademark that's "used with permission" on the inside covers of their comic books, Hasbro can still retain the trademark through consistent use.

Furthermore, you also have to actively defend your trademark if someone infringes it. Now, trademark law is different from copyright law. On the one hand, trademark infringement is only possible in commerce. If you write the name "Optimus Prime" on an internet message board, that doesn't qualify as trademark infringement. A prime example to demonstrate what trademark infringement is and what isn't would be the case of "Captain Marvel". For decades, Marvel have been holding the trademark "Captain Marvel", with the name being used by various individuals within the comics themselves. However, by far the more well-known Captain Marvel character is the one originally published by Fawcett Publications, who is now owned by DC Comics. Simply put, DC are free to have characters refer to their Captain Marvel as "Captain Marvel" in the dialogue within the pages of their comics; however, as Marvel own the trademark, DC can't use the name in advertising, hence they have to use a substitute term, "The Power of Shazam!", on their covers (technically, DC could probably get away with using the name "Captain Marvel" on one of their covers if it's just part of a longer text featured in a speed bubble or a caption; however, any kind of fanciful graphic rendering of text that looks like it could be a trademark is off-limits).

In cases where a company is officially made aware of an infringement of one of their trademarks, the trademark holder is required to take legal action in order to stop the competitor from continuing to use the trademarked name. If the company failed to do so, one of two things could happen: Either the other company could claim that the original trademark holder hadn't taken any steps to defend the trademark, and thus they would lose the trademark to the company that had commited trademark infringement; or, worse yet, the name could end up in the public domain and be considered an "everyday term", hence being exempt from any further trademark protection just like words such as "car" or "football".

When you own a trademark, you can also combine it with an everyday term to create a new trademark. This is an easy way to circumvene the lack of trademark protection for everyday terms, by adding prefixes that turn them into fully-fledged trademarks. For example, Hasbro hold the trademark "Transformers"; they're going to release a new toyline named "Animated"; however, "Animated" by itself is a pretty generic term that's not trademarkable by itself - so what are Hasbro going to do? They combine the name "Transformers", which they hold the trademark for, and the non-trademarkable name "Animated" and get "Transformers: Animated", a new, perfectly valid trademark. However, this means Hasbro only hold the trademark for the compound term "Transformers: Animated"; everyone else can still call their own TV shows and toylines "Animated" in any other combination that doesn't involve a distinct Hasbro trademark.

Futhermore, you can also release a product under a name that is a combination of several individual trademarks. Ever since the days of Micromasters, Hasbro generally trademark every single name of toys included in a multi-pack individually. As a result, you can get combinations such as "Tankor & Obsidian" from the Universe line, with both "Tankor" and "Obsidian" being distinct trademarks of their own. What you can't do, however, is combining your own trademark, or any other prefix or suffix, with someone else's trademark and call it a new trademark. Otherwise, Bandai could release a "Megazord Optimus Prime" toy tomorrow, and Hasbro couldn't do anything about it.

Instead of simply trademarking a name, a company can also try to register it, which is granted after several years of consistent use and provides a better protection than mere trademarking. These days, Hasbro generally aim for registering all of their trademarks. Trademarked names are signified by ™; registered trademarks by ®; and © refers to copyrights, which, as I explained above, is separate from trademarks altogether.

Now, when it comes to Hasbro trademarks for Transformers toys, there are several things to keep in mind:

1) All names are specific with regards to spelling, spacing and punctuation, i.e. if the packaging sports a trademark claim for "Side Swipe" (two words), it's not identical to "Sideswipe" (one word). In the same fashion, "Scattorshot" (with "o") is not the same as "Scattershot" (with "e").

2) Compound terms are trademarked as compound terms. In other words, if the packaging says "Autobot Jazz™" with both words "Autobot" and "Jazz" in the same font, font color, font size and not divided by different background colors, that means the trademark is for "Autobot Jazz", not for the Autobot named "Jazz". The only exception to this rule are the various "Powerlinx" upgrade names, e.g. "Powerlinx™ Optimus Prime®". The separate ™ after "Powerlinx" indicates that it's a separate mark, not a compound term (albeit "Optimus Prime" is a compound term in itself). Technically, this is not really a proper way to use trademarks; however, Hasbro can get away with it when they can prove consistent use of all the individual components of such a combination as separate trademarks. On a similar note, the Heroes of Cybertron PVC representation of Powermaster Optimus Prime featured the word "Powermaster" in a distinctively smaller font size than the name "Optimus Prime®", which indicates that the "®" only refers to "Optimus Prime" (however, the Commemorative Series II reissue was officially named "Powermaster Optimus Prime™, as a new, compound trademark). The Energon upgrades, meanwhile, were trademarked as "Energon Hot Shot™", "Energon Ironhide™" etc., with "Energon" being part of the trademark. The Energon Mega Dinobot two-pack, on the other hand, had the claim "Grimlock® & Swoop™", which means both names were separate marks.

3) Uses of Transformers trademarks aren't limited to toys released at mass-retail. Store exclusive toys, convention or online store exclusive toys, PVC figures and other merchandise, even merchandise released by a different manufacturer under license counts as a "use", as do the names of combined forms of combiner teams and individual members of multi-packs. What apparently doesn't qualify are the Minibot keychains by Fun-4-All and the re-releases by Basic Fun, since those trademarks appear to be in a different field ("keychains", possibly) as evident from the fact that one of the keychains was called "Bumblebee", even though Hasbro themselves had trouble using the name for quite some time.

4) Repackages of already released toys count if the toy is sold under a new product number. Running change repackages, for example Energon toys released both in standard Energon and "Powerlinx Battles" packaging, only count as one release, since the product number remained the same, whereas the re-releases of Alternators Prowl, Autobot Tracks and Meister have different product numbers than the initial releases and thus count as separate releases. The same applies to things such as the Wal*Mart exclusive repackages of Armada Mini-Con teams in "Energon" packaging, the discount chain exclusive repackages of Energon toys in "Universe" packaging or store exclusive repackages of Cybertron toys, as well as multi-packs that contain toys which had previously been available separately.

Introduction: Name reuses within the various Transformers toylines
Index by years
Alphabetical index
Part 2: Names Hasbro never lost (1)
Part 3: Names Hasbro never lost (2)
Part 4: Names Hasbro managed to get back (1)
Part 5: Names Hasbro managed to get back (2)
Part 6: Names Hasbro had to modify
Part 7: Names Hasbro had to find a substitute for
Part 8: Names of characters which were originally not released as toys


 
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