You are a Superhero!

"On Thursday, September 26th, 2024, a tribunal of the US Patent and Trademark Office (USPTO)’s Trademark Trial and Appeals Board issued a single decision canceling four separate trademarks.  The trademarks, all featuring variants of the word “superhero” and owned jointly by comics colossi DC and Marvel, have been in force since 1967.

Now, the tribunal’s decision may change how we view, consume, and create superheroes forever. Where do these tribunals get their power, and are there any limits on it? What made the tribunal decide to cancel four trademarks with such a huge cultural resonance? How much of an impact might this decision have on the landscape for comics and broader entertainment? Can DC and Marvel fight the cancellation, and would it do them any good to do so?

Act I: Trademark Trouble

“Enjoy your reign while you may, Superman. For surely as night follows day, there comes a time when even gods must die.” –Lex Luthor (James Marsters), Superman: Doomsday

In 1967, DC Comics and Marvel Comics filed a set of joint trademark applications in the United States, each one concerned with a specific iteration of the term “super hero.” By itself, that would be strange enough; a trademark is intended to identify a singular source of products, goods, or services, so sharing a trademark, especially with one’s biggest competition, is a choice seemingly not just asking for raised eyebrows, but demanding them. Nevertheless, the application set was filed–and against all sense, reason, logic, and regulations, was subsequently approved by the USPTO.

For the next 57 years, DC and Marvel enforced their mutual trademarks governing superheroes against potential encroachment, sometimes robustly or even overenthusiastically, sometimes more in the breach than the observance. All the while, they borrowed, loaned, parodied, swapped, swiped, produced crossover editions with, and mixed and matched one company’s characters with the others, with frequently hilarious results. In short, they generally gave the public the impression that these bitter rivals were two very large fish trying very hard to play nicely with each other in a very small pond.

Despite their sometimes good-natured, sometimes not rivalry, the two companies nevertheless made it their business to ensure that when people thought of superheroes, they thought specifically and exclusively of Marvel or DC characters. Their overall diligence ford a number of smaller competitors to either join them, sell their own superhero entries to the hybrid entity, or find new descriptors for their creations.

At that time, UK comic artist S.J. Richold, the creator of the comic Superbabies, had just finished arguing before the USPTO’s TTAB tribunal that the DC/Marvel trademarks were invalid because:

1. The trademarks in question are considered common words and generic descriptors which are not beholden to either company in the public mind, but can exist conceptually unmoored from either company. One example is Watchmen, by writer Alan Moore, comic artist Dave Gibbons, and colorist/inker John Higgins, which went to great pains not to use the word “superhero” anywhere but nevertheless portrayed “according to Hoyle” superheroes as they are when they’re at home, so to speak.

2. The trademarks do not indicate a singular source of goods, products, or services, and therefore do not fulfill the most basic intended function of a trademark filed and exercised in good faith.

3. A trademark demonstrates sourcing and ownership of the creation and/or delivery of goods and services, not the entire industry in which that mark is intended to be used. Richold argued that DC and Marvel have employed these marks for decades to subsume, eliminate, or quash any and all competition to their own ends and create a de facto monopoly (diopoly?) within the comic book community and especially in the superhero genre.

The USPTO’s TTAB tribunals are essentially three-judge panel courts with exceedingly narrow scope, jurisdiction, and discretion. Tribunal mechanics are similar to those of a standard civil proceeding, but the tribunal can only offer judgment on whether a given trademark is valid or not and/or can be filed or exercised by a given person or entity or not. They cannot award monetary damages and they cannot assess claims of improper usage, which are the proper province of federal circuit courts.

Their limitations aside, TTAB tribunals can approve an application or cancel an existing trademark, putting the mark holder at potentially significant expense, time, and effort if they wish to appeal the tribunal’s decision–and ultimately putting them in front of a federal court judge anyway. Outside of matters within the USPTO’s scope and discretion, tribunals have very little power; within the purview of such matters, their authority is nearly absolute and seldom contested successfully.

One of the ways in which a TTAB tribunal functions in precisely the same way as a civil court is the ability to contact and request or require information or the presence of either or both parties to a trademark dispute. If one of the parties fails to respond, the tribunal must find in favor of the other, no matter how elegantly presented or legally accurate the case might be. In the superheroes case, Disney/Marvel and Warner/DC failed to respond to Richold’s petition to cancel the trademarks in question by the court-assigned date. Thus, we could argue that Marvel and DC canceled the marks themselves, on the grounds that judges really, really don’t like to have their directions ignored or modified without a very compelling reason and prior judicial approval."

The lesson is that ignoring issues, the Court, those papers served on you can have serious implications.  Give Winslow Law a call at 843-357-9301 if you need some help finding solutions to those problems - instead of ignoring them.

 May God Bless You, Your Business, and the United States of America, 

Written by:

Tom Winslow

and

John Rizvi is a Registered and Board Certified Patent Attorney, Adjunct Professor of Intellectual Property Law, best-selling author, and featured speaker on topics of interest to inventors and entrepreneurs (including TEDx).
His books include "Escaping the Gray" and "Think and Grow Rich for Inventors" and have won critical acclaim including an endorsement from Kevin Harrington, one of the original sharks on the hit TV show - Shark Tank, responsible for the successful launch of over 500 products resulting in more than $5 billion in sales worldwide. You can learn more about Professor Rizvi and his patent law practice at www.ThePatentProfessor.com
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