December 6, 2024

We’re All Super Heros Now

December 6, 2024

On September 26, 2024, the United States Trademark and Patent Office (USPTO) cancelled various trademark registrations for the SUPER HERO and SUPER HEROS (often used interchangeably) owned jointly by Marvel and DC Comics. As recently as 2022, Marvel and DC filed the declarations required to maintain the incontestable status of their registrations, one of which dated from as early as 1967. However, an incontestable registration can be cancelled on the basis of genericness. A mark is generic if in the mind of the purchasing public it does not distinguish products on the basis of source but rather refers to the type of product.

On July 11, 2022, SuperBabies Limited (“SBL”), a limited corporation based in the United Kingdom filed for trademark registration of             SUPER BABIES for comic books. On April 4, 2024, DC Comics filed an opposition to the registration of SUPER BABIES under the theory that the prefix “SUPER” when used to identify a character such as Superman, Super Girl, or Super Dog, is the protected property of DC, and that registration of SUPER BABIES as a trademark would cause a likelihood of confusion as to the origin of SUPER BABIES.

In turn, SBL filed a petition for cancelation of the SUPERHERO marks owed by Marvel and DC. Chief among SBL’s arguments for cancelation was that the registrations for SUPER HERO and SUPER HEROS are owed by two separate entities which are competitors in the market and, therefore, do not indicate a single originating source.  SBL further argued that the marks themselves represent an entire genre of a particular character type, namely, characters who have powers above the normal human experience. SBL also contended that neither Marvel nor DC ever used the term SUPER HERO for source identifying purposes as required under the Lanham Act but instead use the term as a reference to a particular type of character, thereby making the term generic and inappropriate for trademark protection.

Marvel and DC failed to respond to SBL’s petition for cancelation within a timely manner. Accordingly, the USPTO cancelled all trademarks jointly owned by Marvel and DC for the term SUPER HERO due to Marvel’s and DC’s default. Because the default judgment is not a judgment on the merits and because Marvel and DC elected not to take a position in the cancellation action, it is unclear whether the former registrants have decided to abandon their claim in SUPER HERO marks or instead intend to litigate the issue in another forum. Either way, their registrations no longer serve as impediments to the registration of other “SUPER”-marks.

Article by Ashley Pendleton 

 

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