Claire Kuo
The U.S. Trademark Office, by default judgment, recently stripped Marvel & DC of their “Super Hero” trademark[1] which they have owned since 1967 (TTAB Cancellation No. 92085201).[2] The challenge was brought by S.J. Richold’s Superbabies Ltd.[3]
Richold creates comics about a team of super-hero babies called the Super Babies and attempted to trademark “Super Babies.” Richold alleged that DC accused Super Babies of infringing upon DC’s “Super”-related trademarks. DC argued that they had the exclusive right to use the prefix “Super” followed by a generic term for a human being. In an attempt to stop Richold, DC then filed an opposition (TTAB Trademark Opposition No. 91290757) to Super Babies’ trademark applications.[4] In response, Richold filed a cancellation petition for the trademark “Super Hero” on the grounds that the term was generic and therefore no longer a valid trademark.[5]
For a mark to receive trademark protection, it needs to have “distinctiveness” so that it can “quickly and clearly [identify someone/an entity] as the source of [the offered] goods or services.”[6] When a mark is “generic”[7] or has undergone “genericide,”[8] it can no longer receive protection. The standard for determining whether a mark is “generic” is when it is not used to describe one product or service, but is instead used to describe an entire set of products or services.[9] As such, it does not indicate the source, but is absorbed into everyday use.[10]
In this particular case, Richold argued in his cancellation petition that Super Hero was a generic trademark and that “consumers do not associate SUPER HEROES with any single brand, company, or character.”[11] As evidence, he cites dictionary definitions of “superhero,” DC and Marvel leadership’s definitions of “superhero,” and examples where the term “superhero” appeared on non-DC and non-Marvel comic books or products.
He further contended that DC and Marvel have used their “Super Hero” trademarks to squash competition in the marketplace in a strategy that was “ripped straight from their own supervillains’ playbook.”[12] Richold discussed how the companies have not consistently enforced their trademark, but have done so in cases with low-resourced opponents. These opponents are then forced to abandon their use of “super hero” in the face of DC and Marvel lawyers. The alternative outcome is that the parties settle. As such, no proceeding had determined whether the “Super Hero” mark was generic.[13]
However, this proceeding too was not ruled on the merits of the arguments, but rather on procedure. The USPTO’s Trademark Trial and Appeal Board (TTAB) rendered a default judgment for Superbabies as DC and Marvel failed to file an answer.[14] Richold’s lawyer, Adam Adler of Reichman Jorgensen Lehman & Feldberg, has heralded this ruling as “a victory for creativity and innovation” by putting “super hero” into public domain.[15]
It is not entirely clear why DC and Marvel failed to file an answer, especially after holding onto and enforcing these trademarks for decades. Though they can continue to use the term “Super Hero,” they no longer own the right to the term.[16] In this particular battle, the babies won.
[1] Blake Brittain, US Trademark Office cancels Marvel, DC's 'Super Hero' marks, Rᴇᴜᴛᴇʀs (Sept. 26, 2024), https://www.reuters.com/legal/litigation/us-trademark-office-cancels-marvel-dcs-super-hero-marks-2024-09-26/ [https://perma.cc/XV3M-YFGP].
[2] United States Patent and Trademark Office records https://tsdr.uspto.gov/#caseNumber=72243225&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch [https://perma.cc/NZR2-DR9T][ https://web.archive.org/web/20250101171756/https://tsdr.uspto.gov/#caseNumber=72243225&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch].
[3] Brittain, supra, note 1.
[4] Cancellation Petition dated May 14, 2024, U.S. Trademark Office, Proc. No. 92085201. https://fingfx.thomsonreuters.com/gfx/legaldocs/myvmamnnavr/MARVEL%20DC%20SUPER%20HERO%20TRADEMARK%20petition.pdf [https://perma.cc/559Y-ATZR][ https://web.archive.org/web/20250101221031/https://fingfx.thomsonreuters.com/gfx/legaldocs/myvmamnnavr/MARVEL%20DC%20SUPER%20HERO%20TRADEMARK%20petition.pdf].
[5] Id. at 2.
[6] Strong Trademarks, USPTO (last visited Nov. 5, 2024), https://www.uspto.gov/trademarks/basics/strong-trademarks [https://perma.cc/K7TN-4DJV][ https://web.archive.org/web/20250101221650/https://www.uspto.gov/trademarks/basics/strong-trademarks].
[7] Generic, Cᴏʀɴᴇʟʟ Lᴀᴡ Sᴄʜᴏᴏʟ Lᴇɢᴀʟ Iɴғᴏʀᴍᴀᴛɪᴏɴ Iɴsᴛɪᴛᴜᴛᴇ (last visited Nov. 5, 2024) https://www.law.cornell.edu/wex/generic [https://perma.cc/B6XN-ZK7G][ https://web.archive.org/web/20250101222409/https://www.law.cornell.edu/wex/generic].
[8] Genericide, Cᴏʀɴᴇʟʟ Lᴀᴡ Sᴄʜᴏᴏʟ Lᴇɢᴀʟ Iɴғᴏʀᴍᴀᴛɪᴏɴ Iɴsᴛɪᴛᴜᴛᴇ (last visited Nov. 5, 2024) https://www.law.cornell.edu/wex/genericide [https://perma.cc/BRQ7-JJPB][ https://web.archive.org/save/https://www.law.cornell.edu/wex/genericide].
[9] Generic, supra note 7.
[10] Strong Trademarks, supra note 6.
[11] Cancellation Petition, supra note 4, at 9.
[12] Cancellation Petition, supra note 4, at 2.
[13] Id. at 17–18.
[14] Superbabies Limited v. Marvel Characters, Inc. and DC Comics, Thomson Reuters, (T.T.A.B. 2024), https://fingfx.thomsonreuters.com/gfx/legaldocs/zgvoawwzdvd/MARVEL%20DC%20SUPER%20HERO%20TRADEMARK%20default.pdf [https://perma.cc/49WM-NQWQ][ https://web.archive.org/web/20250101223037/https://www.law.cornell.edu/wex/genericide].
[15] Brittain, supra, note 1.
[16] Unmasking the "Super Hero" Trademark: A Win for Superbabies, Fᴇɴᴡɪᴄᴋ (Oct. 16, 2024), https://flex.fenwick.com/publications/unmasking-the-super-hero-tra demark-a-win-for-superbabies#.