Apparently, superheroes don’t always show up for the big battle. At least they didn’t show up at the U.S. Trademark Trial and Appeal Board (TTAB) when the owner of a comic titled THE SUPER BABIES filed a proceeding to cancel the SUPER HERO and SUPER HEROES trademark registrations co-owned by Marvel Characters, Inc. and DC Comics.
Instead of a pitched battle that would have pitted a team of tiny, relatively unknown Super Babies against the combined might of some of the most powerful and iconic characters of all time, there was . . . nothing. No opposition, no arguments, no evidence, and no fight against the efforts of the wee Super Babies to cancel the SUPER HERO and SUPER HEROES trademarks. As a result, the TTAB granted the Super Babies’ cancellation request on default.
Four separate trademark registrations co-owned by Marvel and DC were canceled by the Super Babies proceeding. Three registrations were for the trademark SUPER HEROES, and covered product categories that included publications, such as comic books, toy figures, and t-shirts. The earliest of these registrations was from 1980. The fourth registration for the trademark SUPER HERO covered costumes and was even older, dating all the way back to 1967.
The cancellation petition was filed by Superbabies Limited, a UK company, the owner of the THE SUPER BABIES comic books. Superbabies claimed that DC had accused it of infringing both of the existing SUPER trademarks, had opposed Superbabies’ pending trademark application for the mark SUPER BABIES, and had threatened additional legal action. The main argument raised by Superbabies was that the term “SUPER HERO” is a generic term, one that consumers do not associate with a single particular brand or source. Instead, Superbabies argued, the term “super hero” (and variations such as super-hero, super heroes, and superhero) refers to “a category of stories and characters rather than a particular source of goods.” It relied on several arguments in support of its position.
The petition noted that other comics had used the term “super hero” in this generic way, describing a comic in one case as “Probably the Best Superhero Comic Book in the Universe” and “the world’s greatest and most ambitious superhero comic” in another (neither affiliated with DC or Marvel). The petition went on to display dozens of other instances in which the term “super hero” or a variant of that had been used in connection with a range of products that featured, for lack of a better word, super heroes, none of which were affiliated with DC or Marvel.
It also cited other trademark registrations that used the terms “super heroes” and “superheroes” to name a category of goods or services. For example, the petition noted that the trademark VALLATOR is registered with “comic books featuring a superhero,” and IMPERIUM is registered with “books featuring cartoons and adventure stories about super heroes.” It also pointed out that retailers like Amazon.com use “Superhero” as a genre so customers can narrow their searches; the petition argued that Netflix does the same thing.
Superbabies also pointed to some instances where Marvel and DC had used the SUPER HERO in one form or another as a “generic descriptor” and not as “an identifier for a source of goods.”
Finally, Superbabies argued that as “fierce competitors,” DC and Marvel should not be allowed to jointly own trademarks each company uses to compete with the other company. Because consumers don’t consider DC and Marvel “a single source of goods,” the two companies should not be allowed to co-own the SUPER HERO and SUPER HEROES trademarks.
The idea behind Superbabies’ arguments to the TTAB is that the terms SUPER HERO and SUPER HEROES are used so widely to describe a type of fictional character that they no longer serve as trademarks. In other words, consumers who see the words “super hero” or “super heroes” do not associate them with either DC or Marvel, but instead consider the terms to be a sort of label or a common name for any fictional character that has extraordinary powers – and that can come from any number of sources.
Many common generic words were once trademarks. In the US, for example, aspirin, cellophane, dry ice, flip phone, linoleum, and trampoline were all trademarks but were at some point declared generic due to their use to describe a type of product rather than a particular brand of that product.
The battle isn’t entirely over for Superbabies. As noted in its cancellation petition, DC has opposed Superbabies’ attempt to register the SUPER BABIES trademark, and as of this writing that opposition proceeding remains pending. In support of its opposition, DC has cited a number of other “super” marks it owns, among them SUPERMAN, SUPERWOMAN, SUPERGIRL, SUPERBOY, SUPER-PETS, and SUPER FRIENDS. That said, both SUPER HERO and SUPER HEROES are notably absent from DC’s list.
Carrie Ward has years of experience in intellectual property law, including helping clients secure their trademark rights and representing them in trademark disputes before the TTAB. Her work with a wide range of clients, including media companies, filmmakers, and other creatives, and her time spent in-house at ABC and at what is now known as Audacy gives Carrie the depth and the background to understand the importance of intellectual property to growing and established businesses.
If you have questions about your company’s intellectual property, including trademarks, call Carrie today at 856-354-7700 or click here to set up a time to speak with her.
20 Brace Road, Ste. 400
Cherry Hill, NJ 08034
Phone: 856-354-7700
Fax: 856-354-0766
123 S. Broad Street, Suite 1030
Philadelphia, PA 19109
Phone: 215-963-9520
Fax: 215-963-9620
