A New Age of “Super Heroes”: Marvel and DC Lose a Trademark
Like many kids, I idolized super heroes. Of course, our collective dream was to be one, playing with friends as our favorite characters, imagining great battles between larger than life figures across untold planets and universes. We connected with them through comics, radio, TV shows and movies, toys, games, and so much more. We did everything besides fighting crime ourselves, including creating our own heroes. Unfortunately, none of my creations ever achieved fame outside of my own friends and family, but there were others that did. However, even if someone’s creation did see success and notoriety, it could be the subject of litigation if it was called a “super hero.” But due to a recent ruling from the United States Patent and Trademark Office (USPTO), that has changed and we can now, without fear of litigation, call our creations super heroes!
For over 50 years, Marvel Characters and DC Comics jointly held the “super hero” trademark. But what is a trademark? Trademarks are a word, phrase design, or combination of them that identifies goods or services, distinguishing them from others in the same marketplace. They protect those goods or services, allowing companies to build and defend their products and reputations and avoiding consumer confusion. Marvel and DC used their “super hero” trademark to establish and cement their brand, you can read these two articles to learn more about the history behind Marvel and DC’s joint trademark and steps the companies have taken to guard that ownership over the years. But now, that trademark has ended.
This story centers on Scott Richold, who writes comics featuring a team of superhero babies called the “Super Babies”. This “crisis” began when DC first accused Superbabies Ltd. of trademark infringement through using DC’s “Super”-related trademarks when it became aware of the company’s own application for U.S. trademarks covering the Superbabies name. Pushing back against this claim, in May of this year, Richold’s counsel filed a petition in response. The petition called for the cancellation of the trademark registrations for “super hero” and its variants with the USPTO. In Superbabies’ petition, counsel argued
“[t]rademark law does not permit companies to claim ownership over an entire genre. SUPER HERO is a generic term that should not be protected as a trademark.”
This petition was brought in front of the USPTO Trademark Trial and Appeal Board (TTAB), where the respondents (Marvel and DC) were given a set period of time to reply. Marvel and DC then asked the TTAB for an extension of time in which they could answer the petition. They were granted this extension, however, the window closed July 24 and there was no answer from the respondents. Simply put, Marvel and DC failed to respond to this claim. Because of that failure to respond, on Thursday September 26, the TTAB ruled in favor of Superbabies in Superbabies Limited v. Marvel Characters, Inc. and DC Comics.
The TTAB’s ruling granted Superbabies’ petition for the cancellation of specific trademarks held jointly by Marvel and DC. And so, Marvel and DC, the biggest comic book companies on the planet, lost—at least for now—their joint trademark on the term “super hero”.
And, in a fortuitous manner so at home in comics, the individual who authored the two articles discussing the history of this trademark and wishing for its challenge, Adam Adler, represented Superbabies in this case. Commenting on the TTAB ruling, Adler noted
“[b]y establishing SUPER HEROES’ place in the public domain, we safeguard it as a symbol of heroism available to all storytellers”
That brings us back to today, with the term “super hero” now free for all to use. Marvel and DC may attempt to regain this trademark through appealing the TTAB’s decision but they haven’t taken any steps in that process yet. Further, it’s unknown how this development will affect the comic book market, or the many markets superheroes are present in through both physical and digital offerings. We’ll all just have to wait with baited breath and pick up the next issue in this story.
