It might surprise you to learn that, until very recently, “super hero” was not just a popular genre of entertainment and one of the most recognizable types of characters in fiction, but also a trademark owned, jointly, by bitter comic rivals Marvel and DC. A trademark serves to designate the source—a single source—of goods and services. You would think, then that a generic term that describes an entire genre—the concept of superheroes—could not function as a trademark. Nor would you expect that something that is supposed to distinguish one person’s goods and services from another’s could be owned by two different people, let alone direct competitors.
As it turns out, the U.S. Patent and Trademark (USPTO) agrees that no one can claim the exclusive right to SUPER HERO and SUPER HEROES. Instead, citing liberally from Marvel and DC’s own comics and fictional villains, the USPTO characterized Marvel and DC’s trademarks as an attempt to stifle competition. Beyond the pop culture appeal of the subject matter of this case, it stands as a reminder of some fundamentals of trademark law: a trademark must identify a single source of goods and services, and no one can claim sole ownership of a generic term.
Marvel and DC Claim to own SUPER HEROES
Since 1980, Marvel and DC have jointly held a trademark for the term SUPER HERO (and claim exclusive rights to its variations, such as superhero, super-hero, and super heroes). They claim trademark rights over the terms in connection with goods and services including comic books to action figures and costumes. This registration led the two companies to assert exclusive use of the term, albeit rarely taking legal steps.
However, a petition filed with the USPTO by Superbabies Limited, a UK-based company, challenged Marvel and DC’s ownership claims, arguing that the term “super hero” is generic and should be free for all to use. Moreover, the petition argued that Marvel and DC’s joint ownership violated fundamental principles of trademark law—that a trademark identify a single source.
The (Pre-Marvel, Pre-DC) Origins of the Term “Super Hero”
Unlike many trademarks that were originally coined by their owners and have since fallen into common usage (like escalator or cellophane), “super hero” predates even the formation of both Marvel and DC Comics. Indeed, the concept of a “superhero” can be traced back to the early 20th century. One of the earliest documented uses of the term appeared in 1909, decades before the birth of iconic Marvel and DC characters like Superman (1938) or Spider-Man (1962).
In fact, ever since then superhero characters have appeared in numerous stories outside the DC and Marvel universes. Early superheroes like The Phantom (1936) or The Shadow (1931) set the stage for future generations of heroes, many of whom are not owned by the future comic book titans. In short, neither Marvel nor DC created or exclusively used the term.
Generic and Descriptive Terms Make Poor Trademarks
Not only did the USPTO take notice of the long history of “super hero”, it also noted how widespread the use of the term is, and how its use is generally descriptive of a genre or character type (and not indicative of a particular source). Indeed, the term appears in the dictionary.
Numerous examples were cited in the case where the term is used generically and descriptively. For instance, the comic book Invincible, published by Image Comics, is often described as “the best superhero comic book in the universe.” Similarly, the comic series The Ambassadors refers to itself as “the world’s greatest superhero comic.” Neither series is affiliated with Marvel or DC. In fact, both Marvel and DC use the term descriptively themselves, describing their own comics as “super-hero” stories, for example. They also failed to try to stop these other uses. (Rather than taking meaningful steps to limit or restrict others’ use of the term, the companies used their registrations to “mislead[] low-resourced opponents into abandoning their mark”. In other words, they avoided any legal fight that might bring the validity of their registrations into question).
In addition to comics, the term “super hero” is widely used as a genre label in other mediums. For example, on Amazon, “Superhero” is listed alongside other genres like “Science Fiction” and “Fantasy”; Netflix includes the genre category “Superhero Movies,” many of which are not produced by Marvel or DC. These examples served to reinforce the common descriptive nature of the term.
Joint Ownership is Counterintuitive and Anti-Competitive
The joint ownership by Marvel and DC not only undermines the exclusivity of the term but is entirely antithetical to the purpose of a trademark. Marvel and DC have a historic rivalry and compete directly, including in respect of comics, toys, and the other categories of goods covered by the registrations at issue. The USPTO noted that the companies have spent decades differentiating themselves, often with little restraint. As a result, consumers would not view them as a single source of goods. As set out in the case, Marvel and DC have each expressly sanctioned and authorized the use of the marks by their most significant competitor (each other). Thus, as a trademark, SUPER HERO effectively serves no purpose.
Conclusion
Neither Marvel nor DC responded to Superbabies’ petition, possibly recognizing that any defence might have been doomed, or the public relations implications of being seen to be trying to claim popular generic terms as their own. In any event, the USPTO’s decision is a wholesale repudiation of any claims laid by the comic giants to what is effectively the name of an entire genre of fiction. It confirms what most people would have guessed anyway, “super heroes” is a term in the public domain, free for anyone to use, even with comics.
For brand owners, this case is an important reminder that the best trademarks are coined, without generic or descriptive meanings, and that it is important to police the generic use of a trademark, lest it lose its ability to identify you as its source (as has happened to many a trademark before: think trampoline, laundromat, flip phone, or dry ice, for example).
The decision itself, replete with illustrated examples, is a worthwhile read, and is available here.
If you have any questions or require assistance with your trademarks, please contact Sebastian Beck-Watt at info@pckip.com.
PCK IP is a leading North American intellectual property firm based in Canada, specializing in the preparation, prosecution, and strategic management of patent and trademark portfolios for global markets. Our team of seasoned patent agents, engineers, scientists, and IP lawyers supports clients across diverse technologies, with expertise in coordinating cross-border IP strategies. Contact us today to explore how we can help secure and manage your intellectual property.
The contents of this article are provided for general information purposes only and do not constitute legal or other professional advice of any kind.