Marvel and DC Lose “Super Hero” Trademark battle

It may come as no surprise that, since the 1980s, the publishing giants Marvel and DC Comics have jointly owned trademarks over the terms “Super Hero” and “Super Heroes.” What is surprising, however, is that the fall of these marks came at the hands of none other than Superbabies—a comic created by London artist S.J. Richold. The giants sought to stop Richold’s attempts to market his work, but as it turns out, the Super Babies are no pushovers. And when the dust settled, only the babies were left standing—albeit in diapers.

The History

It may seem irregular to hear of joint ownership in a trademark, but it does happen. And despite the contentious relationship between Marvel and DC, both parties understood that, due to the requirement that trademarks be distinct and not generic, neither would ever successfully obtain a trademark in the phrase over the other.

After beginning their association, the two giants then expanded the use of the marks, even filing for use in connection with cake pans. They further opposed any attempts from others to file for applications that contained the term. And usually, such opposition was enough to send any would-be challengers running.

Superbabies Triumph

Despite Marvel and DC’s ownership, the phrase “Super Hero” has become an undeniably generic term, and may have been so originally, referring to a genre rather than any specific subset of characters. Because of this, Marvel and DC knew their mark could not withstand any serious challenge or risk of invalidation. Their enforcement strategy, rather, was to scare small competitors away with the risk of serious legal fees or offer a settlement agreement.

But when it came time for Superbabies to advocate for itself, it rose to the challenge, much like a hero. Superbabies’ petition for cancellation of the marks argued the phrase “Super Hero” is generic, referring to a genre, and further that Marvel and DC use their trademarks not to prevent confusion as to source—the point of trademarks—but instead to stifle competition from small competitors. The petition refers to the publication giants as “villainous,” even showing ironic instances from Marvel and DC’s very own comics where the trademark and legal system is used as a weapon by infamous villains. It seems the touters of superheroes themselves became the bad guys, giving credence to the concept that “you either die a hero, or live long enough to see yourself become a villain.”

Marvel and DC failed to respond to this petition, resulting in an automatic invalidation of their trademarks by the USPTO, registered under Nos. 1179067, 1140452, 3674448, and 825835. Given their history of intensive enforcement, one can’t help but speculate as to the reasoning behind Marvel and DC’s silence.

Understanding Your Rights

The fact that Marvel and DC failed to respond was no accident. They asserted their rights over Richold, believing their status as giants would intimidate him into folding. However, Richold stayed in the game and refused to quit, instead calling their bluff and raising the ante by escalating the dispute to the USPTO. When it came back around to Marvel and DC, their bluff was beat, and they simply folded and walked away.

Often, powerful names will attempt to intimidate would-be creators who tread into their waters. And no one can be shamed for backing down. The threat of major corporations instigating potentially devastating legal actions is real. But a party who knows its rights can stand tall against the odds. This is why it is so vitally important to consult qualified counsel when faced with a trademark issue. With the right help, even David can beat Goliath.

Klemchuk PLLC is a leading IP law firm based in Dallas, Texas, focusing on litigation, anti-counterfeiting, trademarks, patents, and business law. Our experienced attorneys assist clients in safeguarding innovation and expanding market share through strategic investments in intellectual property.

This article is provided for informational purposes only and does not constitute legal advice. For guidance on specific legal matters under federal, state, or local laws, please consult with our IP Lawyers.

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