Transformers v. “Transformer”: Judge denies injunction preventing tablet manufacturer from utilizing franchise trademark
According to media reports, recently, a federal judge denied toy manufacturer Hasbro, Inc.’s request to enjoin Asus from selling its Eee Pad Transformer Prime tablet until a pending lawsuit between the parties is resolved. As you may know, Hasbro introduced Transformers toys into the marketplace back in 1984. Since that time, the Transformers franchise has exploded, culminating in three blockbuster movies in the last five years. So it’s safe to say that the Transformers and their fearless leader, Optimus Prime, are now well-ingrained in most American households. For some reason, Hasbro has a problem with Asus’ choice for the name of its Android-powered tablet.
In December, Hasbro filed suit against Asus in the U.S. District Court for the Central District of California for trademark infringement, dilution, and unfair competition. According to the complaint, Hasbro has lent its name and logo for a number of computer-related products including an educational laptop, USB storage drives, and laptop skins. Asus began marketing a tablet referred to on its website as the “Transformer.” After discovering the tablet, Hasbro sent Asus a cease and desist letter. Asus’ response? It began marketing a second-generation tablet known as the “Transformer Prime,” the exact name of a Transformers television series launched in 2010. Allegedly, Asus has gone so far as to market the “Transformer Prime” by evoking the home planet of the Transformers, Cybertron. At this time, it does not appear Asus has contacted Megan Fox in an attempt to make their tablet more marketable. The case is captioned
Autobots v. Decepticon Hasbro, Inc. v. Asus Computer International, Inc., No. CV11-10437PSG (C.D.Ca. Dec. 16, 2011).
Even though the suit is still pending, the judge’s denial of the preliminary injunction should be viewed as a significant victory for Asus. From some of the reported language of the judge, he has clearly thought this suit through. According to paidContent.org, the judge stated:
The Autobots are led by the virtuous Optimus Prime character, while the Decepticons follow the powerful Megatron. According to Hasbro, Optimus Prime is intended to epitomize honor, duty, leadership, and freedom.
In the third film, an Autobot character known as “Brains” disguised itself as a Lenovo ThinkPad Edge Plus laptop [...] Hasbro developed the “Transformers Prime” animated television series, which began airing in approximately November 2010. The series focuses on the life and story of the Optimus Prime character. “Prime” was added to the “Transformers” mark in the program’s name to emphasize this focus. Thus far, the series has received several Emmy nominations and awards and has been aired in 170 countries.
There is nothing gimmicky about the Eee Pad Transformer or the Eee Pad Transformer Prime, nor can it be said that there is any similarity in the use or function between Hasbro and Asus’s products.
Further, the Court noted that “transformer” was an accurate description of the Asus tablet because the tablet could “transform” into a
As a matter of full disclosure, we here at Abnormal Use must admit that we are slightly biased in this case. As children of the ’80s and huge fans of Megan Fox, the Transformers are near and dear to our hearts. We can’t hear the word “transformer” without suspecting the noted object to be a robot in disguise. Because of this, we must throw our support behind Team Hasbro even if we have no legal basis for doing so.
Sure, the judge is right. No one really believes Asus’s tablet is going to turn into an Autobot or a Decepticon. But who thinks the products actually authorized by Hasbro would? Chevrolet marketed an authorized Transformer Camaro following the release of the first Transformers film, but no one expected their car to turn into Bumblebee.
We won’t go so far as to suggest that Hasbro should have full control over the word “transformer.” In this case, however, Asus had some interest in cashing in on the Hasbro product’s success. Yes, their product “transforms” so to speak, but we are kidding ourselves if we think the Transformers didn’t have some bearing on the name choice? Asus named two successive products with infamous Transformers lingo and used a Cybertron marketing campaign. Coincidence or clever word choice?