Marvel, DC Super Hero Trademark Loss Shows Danger of the Generic

It didn’t take a Legion of Doom to strip Superhero trademarks of their powers—only a cancellation petition. But the loss for Marvel and DC Comics offers an instructive look at the strategy for challenging a mark as generic or abandoned, as well as a cautionary tale for trademark owners seeking to maintain rights in their trademark registrations.

The Trademark Trial and Appeal Board of the US Patent and Trademark Office canceled the federal trademark registrations Sept. 26 for Super Hero and Super Heroes. The TTAB agreed with petitioner Superbabies Limited, the owners of “The Super Babies” comics, finding that the marks had become generic and the trademark rights in the marks were abandoned.

First, genericness is an inquiry related to a trademark’s descriptiveness. Generic terms are those that the target consumer market primarily understands as the common or class name for goods or services, and they aren’t provided trademark registration or protection.

The two-part inquiry of genericness asks what goods or services are at issue, and does the target consumer market understand the mark primarily to refer to those goods or services? If the answer to the second question is “yes,” then the mark is generic.

Famous examples of one-time trademarks that lost their trademark powers and became generic words—free for all to use to describe the category of their products—include aspirin, elevator, escalator, yo-yo, kerosene, and zipper.

Microsoft fought back in the 1990s to regain trademark control over Windows after the TTAB declared the mark was generic. Brand owners of Xerox, Kleenex, Rollerblades, and Q-Tip face a constant battle to stop non-trademark, descriptive use that could cause what the trademark world refers to as “genericide.”

Second, in asserting trademark abandonment, Superbabies claimed that US trademark law doesn’t allow two competitors to jointly own a single mark, and that the two entities encouraged consumers, competitors, and retailers to use the terms as generic labels.

Offering a flurry of evidence, Superbabies alleged Marvel and DC “did not invent the concept of super heroes, 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 petition went on to describe Marvel and DC’s use of their registrations to stifle competition and exclude others from the marketplace. The evidentiary feat on the part of Superbabies was quite profound. It’s noteworthy that Marvel and DC didn’t respond to the petition, leading to default judgment in favor of Superbabies.

So, what of Super Heroes? Is the mark dead? Has the Fortress of Solitude crumbled? Not entirely.

While Superbabies succeeded in canceling the US federal registrations for Super Hero (Reg. No. 825835) and Super Heroes (Reg. Nos. 1140452, 1179067, and 3674448), the Super Heroes (Reg. No. 5613972) registration is still active for now. This remaining mark is for animated movie production and distribution, whereas the canceled marks were for toy figurines, masquerade costumes, T-shirts, and publications (including comic books).

The case offers the following lessons to trademark owners that want to protect their marks from the threat of genericide:

• Select a strong mark from the start. Fanciful or arbitrary and suggestive marks are the goal when choosing a trademark. The stronger your foundation, the more leverage when enforcing or defending your mark.
• Use the trademark correctly every time. Ensure the association of the mark with goods and services aligns with its registration.
• Use the trademark with an appropriate notice. Affix ®, TM, or SM in all relevant places, including marketing material, packaging, and internal documents.
• Create awareness campaigns. Teach the public how to use the trademark correctly while emphasizing that the trademark represents a specific product or service. The mark isn’t for an entire category.
• Act against incorrect use. Inform others of the correct use of your mark and confront misusers via take-down requests and internal notices to staff. You can be polite. Just be forceful.
• Create clear brand guidelines. Document and inform those using your mark of the guidelines and parameters around its use and enforcement.
• If the mark is at risk of becoming generic, consider creating a new product category—e.g., in-line skates for Rollerblade or cotton swabs for Q-Tip.
• Proactively monitor and police the trademark. Take legal action if necessary.

With its trademark win, Superbabies may try to liberate the creative market surrounding super heroes and comic books. Whether you love the colorful, dynamic genre itself or are just a passive observer of the fantastic, the Super Hero saga provides a window into the trademark landscape and the narrative of “genericide.”

This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law and Bloomberg Tax, or its owners.

Author Information

Michael D. Hobbs Jr. is partner at Troutman Pepper focusing on intellectual property, including trademark, copyright, false advertising, and unfair competition law.

Di’Vennci Lucas, an associate at Troutman Pepper, contributed to this article.

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