The Super Hero Trademark Needs a Powerful Challenger

Last week, I explained how DC and Marvel worked together to obtain a joint trademark for the term “super hero.” But that’s not the end of the story. One of the most important aspects of trademarks is that their value is tied directly to how they are perceived by consumers. The more distinctive a mark, the easier it is to enforce, and the more value it has in the marketplace.

Over the years, Marvel and DC have vigorously used and defended their “super hero” trademarks and have often sought to expand the type of products on which it can be used.  Things started off simple enough — as I explained last week, the mark was originally associated with Halloween costumes. A few years later, in 1979, DC and Marvel registered the “super heroes” mark in connection with comic books. That’s when things went off the rails. In the 1980s, DC and Marvel aggressively expanded the scope of the mark by registering it in connection with cookies, belts, and cake pans. In more recent years, DC has used the mark in connection with a “DC Super Hero Cafe” and a line of “DC Super Hero Girls” action figures.  Similarly, Marvel has used the mark in connection with the Lego Marvel Super Heroes video game and the Marvel Super Hero Adventures TV show.  

There are three aspects of DC and Marvel’s strategy that warrant discussion.

First, it is relatively unusual for a trademark to be jointly owned by competitors. While one could envision a theoretical scenario in which a joint trademark could be appropriate, it would almost certainly involve a collaboration between the two companies. For example, if DC and Marvel decided to co-sponsor a comic book convention, it would not be surprising to see a jointly owned trademark registration for something like “DC and Marvel’s Comic Spectacular.” But in that scenario, DC and Marvel would be acting as collaborators rather than rivals. In contrast, the characters and products associated with the “super hero” mark form the basis for the intense competition between the two companies. What’s more, I was not able to find any recent instances in which either Marvel or DC used the mark without explicitly identifying the associated product as “Marvel” or “DC.” It was always “Marvel Super Hero This” or “DC Super Hero That.” That makes sense as a consumer looking for action figures is almost certainly going to be more interested in well-established DC superheroes than they would be in a team of unknowns.

The result is that consumers do not associate the term “super hero” with the partnership between DC and Marvel, but with the abstract idea of a super hero, unmoored from either company.

This leads directly to my second observation regarding the “super hero” trademark, which is that the mark no longer has (or possibly never had) a distinct secondary meaning. The entire point of a trademark is to identify the source of a good, product, or service. The term “super hero” does not serve that function. The general public associates the term “super hero” with comic books as a whole, with a genre, or with one or two particular heroes (the specific identity of which will depend on who you ask). Some might even associate the term “super hero” with non-DC or Marvel characters such as The Green Hornet, Invincible, The Tick, or Kick-Ass.

While I think this conclusion is fairly self-evident, it is not difficult to find supporting evidence. In 2008, Superhero Movie incorporated the “super hero” mark into its title and used the term to communicate that it was a genre-level parody of super heroes generally, just as Scary Movie was a satire of horror movies. Similarly, the Wikipedia entry for “super hero” describes the term as “a type of heroic stock character” rather than as “a type of character featured in Marvel or DC comic books.” These examples show that the prevailing conception of what a “super hero” is relates to a category of characters rather than a subset of specific characters.

The final aspect of the “super hero” mark that warrants discussion is DC and Marvel’s aggressive efforts to defend it. This makes sense. Trademark law incorporates a “You snooze, you lose” feature. If the owner of a trademark fails to prevent others from infringing on or misusing his trademark, they run the risk that the mark will lose its distinctiveness and be unenforceable in the future. DC and Marvel have taken that concept to heart, and vigorously enforce the “super hero” mark. To that effect, DC and Marvel regularly oppose trademark registrations that contain the word “super hero.” In recent years, DC and Marvel opposed the publication of the self-help manual From Business Zero to Superhero, as well as the small-press comic series A World Without Superheroes. At the same time, it appears that DC and Marvel are acutely aware that the “super hero” mark cannot withstand intense scrutiny, and go to considerable lengths to avoid that scrutiny.

Given the size of the two companies as well as their considerable legal resources, their opposition alone frequently causes registrants to withdraw trademark applications. On other occasions, DC and Marvel persuade the registrant to resolve the dispute through a settlement agreement. If those efforts are unsuccessful, then DC and Marvel drop their challenge to the prospective mark. While the outcome varies from case to case, it appears that DC and Marvel have adopted a trademark strategy that seeks to defend their mark to the maximum extent possible while minimizing the possibility that the mark will be invalidated. To that effect, I could not find any cases in which DC and Marvel were ever in a position where the validity of the “super hero” mark was seriously challenged. For a fairly comprehensive discussion of DC and Marvel’s enforcement efforts, check out this article.

Despite their vigorous enforcement efforts, it appears that DC and Marvel have let a few “super heroes” fall through the cracks. I could not find any record of DC or Marvel opposing Superhero Movie, or attempting to prevent Robert Kirkman from placing the phrase “The Best Superhero Comic Book in the Universe!” on the covers of his Invincible comic book series.

What we are left with is something of a quirk in trademark law, and an impressive example of legal advocacy. The “super hero” mark should never have been granted, and certainly should not have been jointly issued to two fierce competitors. Nevertheless, the mark is still presumptively valid, and DC and Marvel can use it to oppose future registrations. But that’s not the end of the story. While the mark is presumptively valid, in truth, the “super hero” mark will only persist for as long as it remains unchallenged. To date, the mark has only been challenged by individuals or small companies who often lack the resources or willpower to see the fight through to the end. Someday — hopefully soon — that will change. Someday, “super heroes” will be free from their ® shackles, and the public will get to enjoy the “super heroes” it deserves.