Daily Bugle Exclusive: Super Heroes Defeated in Epic Trademark Battle
Spoiler alert: At the end of the movie Avengers: Infinity War, the villain Thanos snaps his fingers and suddenly several popular Marvel® super heroes begin to disappear.
Something similar just happened in the U.S. Patent and Trademark Office. But this time, instead of an intergalactic warlord, the Super Heroes (trademark registrations) were defeated by Super Babies.
But first, the origin story: Comic book and movie giants – and competitors – Marvel and DC Comics have long jointly owned trademark registrations for the mark SUPER HEROES and SUPER HERO as used to identify comic books, magazines, and illustrated stories; toy figures; and t-shirts, as well as a registration for SUPER HERO for masquerade costumes. (Note that there have been some changes in the specific entity names, but for our purposes we’ll call them Marvel and DC.)
Over the years, Marvel and/or DC used the registrations to vanquish foes (other trademark applications) like SUPER HEROES for food products; SUPERHERO MARKETING.COM for advertising, marketing, and promotional services; and SUPERHERO CHALLENGE for personal training.
But trademark law is a hero in its own right. Its purpose is to prevent consumer confusion. While U.S. trademark law permits joint ownership of registrations, the mark must represent to consumers a single source of origin. Joint ownership requires careful consideration of how the mark is used to avoid confusion.
Enter the SUPER BABIES. In 2020, Superbabies Limited applied to register SUPER BABIES in stylized form. DC Comics opposed the application. Superbabies eventually abandoned the application, though it contested DC’s conduct in settlement negotiations.
In 2022, when this opposition to SUPER BABIES was pending, Superbabies filed additional SUPER BABIES-related marks for goods such as computer games, comics, and toys. DC Comics, in turn, opposed those additional applications. Interestingly, DC Comics did not use the SUPER HEROES registrations as the basis for the oppositions. Instead, it relied upon its other trademark registrations for SUPER-formative marks (e.g., SUPERMAN, SUPERGIRL, SUPER FRIENDS, etc.).
In May 2024, Superbabies filed a petition for cancellation of DC and Marvel’s registrations for SUPER HEROES and SUPER HERO. Superbabies claimed that SUPER HERO is an unprotectable generic term for “a stock character archetype (super heroes) and a genre of stories that features that archetype and its associated tropes (the superhero genre).” Superbabies also claimed that both companies have abandoned any exclusive rights they had in the mark by allowing the other to use it.
Marvel and DC did not answer the complaint. Superbabies requested default judgment in its favor, which the Trademark Trial and Appeal Board granted. As a result, Marvel and DC’s SUPER HEROES and SUPER HERO trademark registrations are now cancelled.
DC and Marvel faced an uphill battle had they attempted to disprove Superbabies’ claims. Rather than challenge cancellation in a time-consuming and expensive legal battle, DC and Marvel took a seat by abandoning their long-held rights in the mark to let the general public use SUPER HEROES without fear. That makes them heroes in our (comic) book. Plus, it was probably a good public relations move in a commercial environment where overly-aggressive trademark enforcement is frowned upon (see our articles on CHILI CRISP and MOCHI MUFFIN).
But like a post-credit stinger, that is not the end of this story. SUPER HEROES might have disappeared from the USPTO trademark universe, but Marvel and DC still jointly own a registration for SUPER-VILLAINS, which is due for renewal in 2025. Also, the opposition to SUPER BABIES by DC based upon its registrations for SUPER-formative marks is ongoing.
Looks like a sequel is coming soon to a trademark office near you.