It may interest some to know that the US Trademark Office recently cancelled four ‘Super Hero’ trademarks jointly owned by Marvel and DC Comics. The cancellation was the result of a petition brought forth by S.J. Richold, a comic book artist based in London, England, and author of the comic series entitled ‘Super Babies,’ which aptly features a team of super-hero babies. According to a Reuters report,¹ Richold found himself in a Red Alert situation with the comic book giants when he applied for US trademarks for the ‘Super Babies’ name. Reuters reported that according to Richold, DC Comics accused his company, Superbabies Ltd., of infringing the ‘Super Hero’ marks and threatened legal action.

Despite being rivals, Marvel and DC joined forces to trademark the term ‘Super Hero’ in singular and plural form, in connection with various goods (collectively, the Marks),² effectively creating a duopoly in comic book commerce. According to Reuters, the United States Patent and Trademark Office records reveal that the Dynamic Duo™³ has opposed dozens of superhero-related trademark applications over the years.

However, the comic book goliaths met their match in Richold, who petitioned in May of this year to cancel the Marks on the following grounds:

1. The Marks are generic:⁴ The term ‘Super Hero’ (in its singular or plural form) is widely recognized as a generic label for a particular genre of stories, character, and character archetypes, and is not associated with one single character, brand or company. The petition cited 15 U.S.C. § 1064(3) for its cancellation request, under which a registered mark may be cancelled “[a]t any time if the registered mark becomes the generic name for the goods and services or a portion thereof, for which it is registered […].”

2. The Marks have lost their significance:⁵ Counts II and III of the petition stated that the Marks have lost their significance in the marketplace on account of (i) Marvel and DC have allowed the use of the Marks by a competitor (i.e., each other), and (ii) Marvel and DC have used the Marks as generic labels for their respective stories, characters and genre, rather than as distinguishable marks in commerce.

With respect to the use of the Marks by a competitor, the petition highlighted that the Lanham Act⁶ does not allow two competitors to jointly own a single mark. 15 U.S.C. § 1052 states the following: “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration…[emphasis added]”, specifying that a single applicant only may register a mark in connection with its goods if such goods are distinguishable from the goods of others in the marketplace. The petition further argued that concurrent use of the Marks by Marvel and DC has resulted in the weakening of the trademarks in commerce. Consumers are unable to use the Marks to differentiate Marvel products from DC products, effectively rendering the Marks inoperative for the purposes of trademark law. Moreover, the petition declared, by concurrently using the Marks, Marvel and DC have each assented to competitor use, which under 15 U.S.C. § 1127 constitutes abandonment of the Marks.

Further, the petition asserted that Marvel and DC have caused the Marks to lose their significance in commerce by using the Marks as generic labels for their respective stories and characters rather than as trademarks. The petition stated:

[t]hrough their generic use of SUPER HEROES and SUPER HERO, Marvel and DC have encouraged consumers, competitors, and retailers to use the terms as generic labels, rather than as a mark that identifies the source of goods. Neither Marvel nor DC has taken meaningful steps to enforce the Challenged Marks or to curb the widespread usage of the mark as a name for a category of goods.⁷

The petition insisted that the generic use of the Marks coupled with a failure to enforce them in commerce constitutes abandonment under 15 U.S.C. § 1127.

3. Marvel and DC have abandoned the Marks by failing to use them as trademarks:⁸ Following from the previous arguments above, the petition closed with the fact that Marvel and DC have never used the Marks as trademarks; rather, the pair has only used the Marks as generic labels for their goods and the super hero genre more broadly. Moreover, Marvel and DC’s joint ownership of the Marks runs contrary to the objectives of trademark law, that is, to distinguish a good or service in the marketplace from those of a direct competitor. In the case of Marvel and DC, these competitors co-own the Marks, which, as emphasized in the petition, is “antithetical to the foundational purpose of trademarks, which is to associate a mark with a single source of goods.”⁹ For these reasons, the petition stated that this failure to use the Marks as trademarks constitutes a prima facie abandonment under 15 U.S.C. § 1127.

Richold’s petition was filed on May 14, 2024, and according to the notice of cancellation issued by the Trademark Trial and Appeal Board,¹⁰ Marvel and DC had until July 24, 2024, to answer the petition to cancel, but failed to do so. Superbabies Ltd. filed a motion for default judgment in August and the petition for cancellation was granted on September 26, 2024.

One interesting fact about this case is that neither Marvel nor DC responded to the petition to cancel. One can’t help but ask (in Joker’s voice): why so silent? Marvel (owned by Disney) and DC Comics (owned by Warner Bros’) have not hesitated to enforce their respective intellectual property rights in the past, so some keen observers may want to know: what prompted this decision to remain silent and effectively surrender their Marks? After decades of jointly reigning over the ‘Super Hero’ trademark, could this be the dawning of a new day for the public domain? Or, is there more to come?

TO BE CONTINUED…

For more information on this topic, please reach out to the author, Lindsay E. Paquette.

1. Blake Brittain, US Trademark Office cancels Marvel, DC’s ‘Super Hero’ marks (2024), Reuters online: . ↩
2. The earliest ‘Super Hero’ trademark jointly owned by Marvel and DC was registered on March 14, 1967, US registration no. 1179067 in connection with masquerade costumes. See also the followings trademarks: registration no. 1140452 (toy figures, 1980); no. 1179067 (publications, particularly comic books and magazines and stories in illustrated form, 1981); and no. 3674448 (t-shirts, 2009). ↩
3. Pending trademark of DC Comics in connection with various goods and services. ↩
4. Petition to Cancel SUPER HEROES Trademark Registrations, Superbabies Ltd. (Petitioner) v. DC Comics & Marvel Characters, Inc. (Registrants) (the “Petition”) at 30. ↩
5. Petition at 30 -32. ↩
6. Lanham (Trademark) Act, 15 U.S.C. § 1051-1141n (2012). See Petition at 30. ↩
7. Petition at 31-32. ↩
8. Petition at 32-33. ↩
9. Petition at 29. ↩
10. Trademark Trial and Appeal Board, Cancellation No. 92085201, United States Patent and Trademark Office, online: . ↩