Trademark Office Cancels DC and Marvel Superhero Trademarks

The Trademark Trial and Appeal Board (TTAB) canceled four SUPER HERO trademarks jointly owned by Marvel and DC after a challenge by a comic writer.

As TechDirt explains,

Scott Richold is a British comic artist who produces the Superbabies line of comic books. Richold applied for a trademark for his comic only to find it opposed by both DC and Marvel. The two companies jointly held 4 trademarks to the term “superhero” and variations of that term.

The four trademarks, dating back to 1967, are:

• 1179067 for the use of SUPER HEROES in connection with “publications, particularly comic books and magazines, and stories in illustrated form.”
• 1140452 for the use of SUPER HEROES in connection with “toy figures.”
• 3674448 for the use of SUPER HEROES in connection with “t-shirts.”
• 825835 for the use of SUPER HERO in connection with “masquerade costumes.”

Richold petitioned the USPTO to cancel those four trademarks, arguing that the term “super hero(es)” has become generic.

15 U.S.C. § 1064(3) allows for the cancellation of registered marks that “become[] the generic name for the goods or services, or a portion thereof, for which it is registered.”

The process of a former trademark becoming a generic term for a product or service is sometimes known as “genericide.” Some examples are the formerly trademarked terms linoleum, bubble wrap, thermos, and taser.

Richold argued that consumers don’t associate SUPER HERO or SUPER HEROES with any single brand, company, or character. Instead, consumers view SUPER HERO and SUPER HEROES as generic labels for types of stories, characters, and products in the superhero genre or using the character archetype.

The entertaining petition includes numerous art clips from comic books, comparing DC and Marvel to comic book villains.

As the petition states,

We live in a world of superheroes. For the better part of a century, superheroes and the superhero genre have ruled the imagination and inspired millions to achieve greatness.

Superheroes are ubiquitous. They are featured on products of all shapes and sizes, appear in countless stories, and have a presence in every major storytelling medium.

The petition also noted that

Marvel and DC did not invent the concept of superheroes, superheroes, or the superhero genre. The term, in its varied spellings, has origins dating back to at least 1909—decades before DC or Marvel even existed. The first comic book characters to receive the superhero label were not affiliated with DC or Marvel.

In the petition, Richold asserted:

DC and Marvel claim that no one can use the term Super Hero (or superhero, super-hero, or any other version of the term) without their permission,” the petition said. “DC and Marvel are wrong. Trademark law does not permit companies to claim ownership over an entire genre.

The petition also argued that

SUPER HERO is a generic term used in connection with superhero stories, characters, and products. The term refers to a stock character archetype (superheroes) and a genre of stories that features that archetype and its associated tropes (the superhero genre).

Consumers do not associate SUPER HEROES with any single brand, company, or character. Instead, consumers understand that the term refers to a broad category of stories and characters tied together by common themes and conventions and products that relate to or feature superhero stories or characters.

Consumers view and understand SUPER HEROES the same way they view other genre labels (e.g., Western, Spy) and character archetypes (e.g., cowboys, secret agents).

The petition pointed out that

Trademark law also does not allow competitors to claim joint ownership over a single mark. The purpose of a trademark is to identify a single source of goods and services.

As explained by the United States Patent and Trademark Office, “a trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.” (Emphasis added.)

So how did two rival companies end up SHARING a trademark?

According to an article in The Escapist,

The phrase “superhero” was first registered as a trademark in 1967 by Ben Cooper, Inc., in connection with a line of superhero Halloween costumes that featured both DC and Marvel characters. In 1972, Mego Corporation attempted to register “World’s Greatest Super Heroes” in connection with a line of action figures. When Cooper opposed that registration, Mego assigned its interest in the trademark jointly to DC and Marvel. Rather than opposing that powerful duo, Cooper withdrew its opposition and subsequently assigned its interest in the superhero mark to DC and Marvel.

Richold accused DC and Marvel of bullying “low-resourced opponents” into abandoning their proposed SUPER HERO marks.

For example, according to the petition, Reinaldo T. Felix filed a trademark application for the word mark CUP O JAVA STUDIO COMIX A WORLD WITHOUT SUPERHEROES.

DC and Marvel opposed the registration. According to Felix,

I have had several communications with DC/Marvel[’s] lawyer ... who has made several misleading promises. [DC/Marvel’s lawyer] repeatedly gave me the impression that an out-of-court settlement could be reached. The reality is that he doesn’t call the shots and is there to waste my time. With each ... court extension[], they literally gave me the run around by dangling a variety of offers/carrots that ended up being a bill of false goods and outlandish promises. ... I would get such responses until a following court extension would be granted ... and then they would repeat the cycle to wind me down towards hopelessness. ... I can’t afford a lawyer. No lawyer is willing to take this case without $10,000 upfront. ... I have no choice but to represent myself. I’m “David” pitted to fight against “Goliath,” except in the 21st century, “Goliath” wins.

According to a 2010 article called The “Amazing Adventures” of SUPER HERO, as of that date, DC and Marvel had filed three dozen TTAB oppositions based on the SUPER HEROES marks.

However, according to the article, “Not a single TTAB opposition proceeding was decided on the merits of either infringement or dilution of the opposing mark.” Instead, DC and Marvel “managed to obtain an abandonment or a settlement” in each case.

Rather than fighting Richold’s petition, DC and Marvel failed to respond to the petition.

Richold then moved for a default judgment, which the TTAB granted.

According to Reuters, “Spokespeople and attorneys for Marvel and DC did not immediately respond to requests for comment” on the failure to respond.