Super Hero No More: How Marvel and DC Lost Their Trademark on a Genre

I distinctly remember purchasing the Superman/Spiderman team-up when it came out in 1981. It was an oversized comic book, with heavier than usual pages and a vibrant color scheme, and that made it perfect for laying it out on my floor as I read it cover to cover more times than I could count. Worlds collided, and it blew my mind that DC and Marvel could produce a team-up along these lines.

At the time, I thought this was the first time that Marvel Comics and DC Comics had teamed up, but a few years later I learned that Superman and Spiderman had first met back in a 1976 comic, entitled “Superman vs. the Amazing Spider Man”. I eventually added that issue to my collection, and even though the 1981 team-up held a special place in my heart, I thought it was important to own what I thought was the first modern superhero crossover.

It was only this week that I learned that the 1976 crossover was not in fact the first time these companies had worked together. Since 1972, Marvel and DC have owned a shared interest in the trademark ‘Super Hero’, which phrase was originally registered with the United States Patent and Trademark Office in 1967. The USPTO defines a trademark as “a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.” For those paying attention to the myriad world of superhero products over the years, whether it be through film, television, books or other media, you may have noticed the lengths all non-Marvel or DC creators went through to avoid using the particular phrase ‘Super Hero’.

In fact, Marvel and DC are both notorious for their heavy-handed approach to intellectual property preservation over the decades. DC had engaged in protracted litigation with the estates of Jerry Siegel and Joe Shuster (the creators of Superman) and Bob Kane (the creator of Batman) as those families sought to obtain credit and compensation for their creation, while just last year, Marvel settled a longstanding dispute with the estate of Steve Ditko (co-creator of Spider-Man, among others) as his heirs sought to reclaim the copyright to the characters he had a hand in creating. From the publishers’ perspective, vigorous IP protectionism accomplished multiple goals. Ceding any claim to copyright and trademark protection would run the risk of diminishing returns to the stockholders of those companies (DC Comics is now a subsidiary of Warner Brothers, while Marvel is wholly owned by Disney) as profit participations and shared contract rights would mandate a bigger piece of the pie being paid to creators, and owning a trademark for what many might consider standard classifications of the genre such as ‘Super Hero’ had the additional benefit of making it more difficult for would-be entrants into the field, forcing them to develop an alternative vocabulary that potential purchasers might not otherwise recognize.

As it relates to the trademarked phrase ‘Super Hero’, Scott Richold, through his company Superbabies Ltd, argued to the USPTO that “Super Hero” is a generic term and should not be exclusively controlled by Marvel and DC Comics. This action came after DC Comics accused Richold’s company of infringement for attempting to trademark “Super Babies,” a name for his comics featuring infant superheroes.

Richold’s argument was based upon the concept of genericide, defined as the process pursuant to which an intellectual property right is deemed generic. It occurs when a brand name or trademark becomes so commonly used that it loses its distinctiveness and turns into a generic term for a product or service. When this happens, the trademark can no longer be protected under trademark law. Essentially, the public begins to use the trademarked term to refer to the entire category of products or services, rather than just the specific brand or company that owns the trademark.

Ironically, DC’s and Marvel’s success in bringing the concept of the ‘Super Hero’ into the mainstream has undoubtedly contributed to the almost universal perception that the term now implies in everyday use. It was for perhaps this reason, among others, that neither DC nor Marvel ultimately responded to Superbabies’ petition, thereby restoring the phrase ‘Super Hero’ to the public domain.

Don’t feel too bad for DC or Marvel, however. They each hold thousands of well-established trademarks for all the characters and creations within their respective catalogs, guaranteeing us all years of entertainment going forward, perhaps another crossover or two, as I think we can all agree that one is long overdue, and hopefully, a quality Superman movie next year. For the rest of us, however, the reversion of the ‘Super Hero’ trademark should serve as a cautionary tale that the USPTO can and will pay attention to both existing trademarks that have evolved from their original purpose to become an excessive restriction on the marketplace as well as trademark applications that potentially run the same risk by stifling competition above and beyond the standard protections which a trademark is designed to provide.

The Intellectual Property and Technology Practice Group at DarrowEverett diligently serves clients by handling an extensive array of intellectual property & technology services. We have a deep understanding of both specialized technologies and the intricate dynamics of global distribution, all while focusing on our clients’ entrepreneurial priorities. Not only do our Intellectual Property & Technology attorneys counsel clients in addressing complex transactions and structuring new business models, but they work closely with our Business Litigation attorneys to manage complex copyright, trademark, and trade secret cases. It is crucially important in today’s market that owners of intellectual property rights remain engaged and aware of the changes, pitfalls and challenges of preserving these privileges, and our attorneys pride themselves on staying up to date on all of these developments to provide clear and comprehensive guidance in this area as needs arise.

P.S.: This in no way diminishes the significance of the New Teen Titans/Uncanny X-Men crossover from 1982, which remains to this day the best use of shared resources between the companies. To quote the late Stan Lee, “Nuff Said”.

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