It’s a not-so-Brave New World for two titans of entertainment following a ruling from the Trademark Trial and Appeal Board (TTAB). This week’s BL Business Branding entry looks into the Board’s decision to cancel various “Super Hero” trademarks owned by Marvel and DC Comics late last year.
Superheroes have dominated the media landscape for decades, drawing in thousands of fans and raking billions of dollars through movies, television, and merchandise. However, it may be a surprise to learn that “Super Hero” has not always been a general descriptor for a genre or character archetype, as Marvel and DC Comics became the joint owners of several different “Super Hero” trademarks starting in 1967.
Comic writer Scott Richold recently applied to trademark his comic book series “Superbabies,” which was opposed by DC Comics and Marvel for infringing on their existing “Super Hero” trademarks. In response, Richold petitioned the USPTO to cancel their trademarks entirely, arguing that “Super Hero” was now a generic term and Marvel and DC could not claim to own an entire genre. DC and Marvel failed to respond to the petition and TTAB issued a default judgment in Richold’s favor and canceled the “Super Hero” trademarks.
In some ways, Marvel and DC Comics are victims of their own success. The appeal of their products has led to genericide, a process where a trademark loses its brand identity and becomes synonymous with the product provided. Despite Marvel and DC’s ownership of the marks, Super Hero media has simply become too commonplace the joint owners were unable to claw back control of the registered mark.
Losing a trademark due to genericide is rare but it does happen. In 1950 the Otis Elevator Company lost its trademark to “escalator” as their branded product had become synonymous with the moving stairways they sold. Other brands have been able to keep their trademarks despite being frequently conflated with the product itself, such as Velcro® branded hook-and-loop fasteners, Kleenex® branded facial tissues, Frisbee® branded flying discs, Aspirin® branded acetylsalicylic acid, and Google® branded search engine.
What Can Be Learned From This?
Like all aspects of running a business, balance is key to successful brand management. All business owners want their brand to be the first thing that pops into a customer’s head when they see a product, but to maintain trademark ownership, the brand cannot become synonymous with the product. This can be especially difficult for first movers and businesses who own a majority of the market share. Consistent enforcement of the trademark is key to avoiding genericide and maintaining the line between brand association and product equivalence.
Read more about the “Super Hero” trademark HERE
Have questions about what you can and cannot trademark for your business? Contact our BL Trademark Team by reaching out to Seth Berenzweig at sberenzweig@berenzweiglaw.com today.