Marvel and DC Enforce "Superhero" Trademark

An anonymous reader writes "GeekPunk is announcing that their flagship comic book title featuring superheroes patronizing their favorite bar & grill during their off-hours will now be entitled Hero Happy Hour beginning with the fifth issue of the ongoing series. According to creator Dan Taylor, "The decision to change the title was brought upon by the fact that we received a letter from the trademark counsel to 'the two big comic book companies' claiming that they are the joint owners of the trademark 'SUPER HEROES' and variations thereof." " Read the recent boingboing post for more background as well.

Comments

Holy ruined comics Batman!

[Paperghost]

Look, up in the sky, its a shattered childhood.

Ones and Zeroes

[a_nonamiss]

Reminds me of the old Onion article "Microsoft to patent zeroes, ones." Isn't the term "Super Hero" pretty generic?

Re:Ones and Zeroes

[Mercano]

"Just because everyone uses it to refer to Superman and Aquaman doesn't mean that "everyone" invented the term."

Well, Superman, at least. Aquaman's heroics don't extend much past the shore.

Since 1967

[Grrr]

http://tess2.uspto.gov/bin/showfield?f=doc&state=7 7m69u.2.87

Registration Date

March 14, 1967

Owner

(REGISTRANT) BEN COOPER, INC. CORPORATION NEW YORK 33 34TH ST. BROOKLYN NEW YORK

(LAST LISTED OWNER) DC COMICS, INC. CORPORATION ASSIGNEE OF NEW YORK 666 FIFTH AVENUE NEW YORK NEW YORK 10103

(LAST LISTED OWNER) MARVEL ENTERTAINMENT GROUP, INC. CORPORATION ASSIGNEE OF DELAWARE 387 PARK AVENUE SOUTH NEW YORK NEW YORK 10016

<grrr />

Unenforced?

[Tiger Smile]

Is it my imagination or has this never before been enforced? If this is the first time that it has been enforeced, can their hold on this generic term be great?

    This really does seem as silly as a PB&J parent, but it sure might be legel in the eyes of the current system.

Re:Is it really so crazy?

[Otter]

But isn't the coined word "Superman" just as generic as the coined word "Superhero?" Aren't they both merely the concatenation of two relatively common words in the English language?

If anything, "superhero" is more novel. "Superman" comes from Nietzsche, and the subsequent abuse of his terminology by the Nazis.

Re:Is it really so crazy?

[Vthornheart]

The shady part to me is that Marvel and DC claim co-ownership of it. Not to say that I'll point a stiff finger at them and accuse them of wrongdoing (though in an above post I poke some fun for the sake of humor), but I would like to know how they managed to "co-create" the term. Did they both happen to create it at the same time, or are they merely claiming co-creation as a way of allowing each other to have exclusive rights to an obvious term, at the detriment of smaller comic companies?

Perhaps someone has some insight into the history of the word "superhero" that might be helpful to this discussion?

This was TWO YEARS AGO!

[1u3hr]

The posts linked are dated 01-30-2004.

WTF? A "news" site generally deals with current events. Or at the very least, mentions the rather relvant fact that this is history, not news. Of course, that would be assuming that the Slashdot editors actually RTFA.

Well then

[hey!]

If they have a valid trademark should use their trademark properly.

For example, the following use (from Marvel's web site) in it's correct adjectival sense:

Throughout World War II, Captain America and Bucky fought the Nazi menace both on their own and as members of the superhero team the Invaders, which after the war evolved into the All-Winners Squad.

You see here, that the use "superhero" adjective could in theory at least be used to differentiate their "team" product from similar products of their competitors. On the other hand, the following is clearly an improper use of their own presumed mark as a noun (and despite the capitalization, a common noun):

If you've ever wanted to hear your voice come out of a Marvel Superhero's body-or if you are looking for a chance to break into the world of voice acting-then this is your chance!

This should read:

If you've ever wanted to hear your voice come out of a Marvel Superhero character's body-or if you are looking for a chance to break into the world of voice acting-then this is your chance!

Using it as a common noun (which they do throughout their web site, although it is sometimes capitalized) is tantamount to admitting the term is generic.

Re:"Superhero" as a trade mark?

[gaj]

While I certainly don't condone what Marvel and DC appear to be trying to do, please don't further confuse the issue, if you can at all help it.

This had nothing at all to do with copyright. Nor is the concept being claimed here.

It is the word "Superhero" that is being claimed as protected by trademark law. Within the letter of the law, they may have a vaild claim.

That doesn't make them any less foul, though.

Also, I think that much argument can be made that they have long since lost any claim to the trademark. They've not been defending it at all until now. If you don't defend a trademark, you lose it.

TFA doesn't say but Marvel/DC jointly filed...

[Hamster Lover]

for trademark of the word "superhero" and variations thereof back in 1981. Apparently, there is some controvesy over the joint filing of this shared trademark as trademark law has a "single source" requirement. However,
there is precedent of two companies sharing a trademark, but is supposed to be quite quite rare.

I am not sure how accurate this information as a lot it is from disparate sources, so someone please correct me if I am wrong.

Anyway, I don't see how Marvel/DC can claim a trademark on a word that has been in the popular lexicon for over fifty years.

Look up in the sky. It's a flying bull. Ewwwww.

[rs79]

" Isn't the term "Super Hero" pretty generic"

Trademark laws exist to protect the consumer, not the producer.

If you buy a brown fizzy beverage, and if it says "cocacola" you should have some sort of confidence you're buying CocaCola brand of fizzy soft drink.

Is there some consumer confusion that your "superhero" is not a DC or Marvel brand of superhero? To say nothing of the fact if don't activly protect your mark you lose it.

Goog sez: "Results 1 - 50 of about 7,330,000 for "superhero""

If Marvel and DC jointly own the trademark on "superhero" I'd be saying the words "Anti trust". A LOT. And ignoring the C&D letter.

Re:Look up in the sky. It's a flying bull. Ewwwww.

[Intron]

Except they didn't coin the term. Earliest cite is 1942, Supersnipe Comics.

Re:Look up in the sky. It's a flying bull. Ewwwww.

[DRJlaw]

Trademark is not copyright. Trademarks do not have to be coined words.

Coined words are generally inherently distinctive, and prima facie registerable as trademarks, because they did not exist prior to the creation of the mark. Escalator did not "mean" moving stairs before the Escalator company created and trademarked the term. However, that it not the end of the discussion.

You can also take preexisting works and use them arbitrarily, like using Apple as a brand for computers. You can use them suggestively, like using AutoMeter as a brand for after market gauges for cars, like speedometers, tachometers, etc. You can also use them descriptively, if you can show that the use has acquired distinctiveness in association with the goods that you are selling. McDonald's is a famous example where the use was initially descriptive, acquired distinctiveness, and ultimately became a famous mark.

Re:"Superhero" as a trade mark?

[mausmalone]

They haven't trademarked the concept of a super hero, just the term. What I don't get is how one could trademark a classification or genre. The way it seems to me (and please let me know if I'm way off base), it's like if one record company could trademark a genre (let's say "punk") and then prevent all other companies from releasing music using the genre name, regardless of the fact that that's the correct classification... and also preventing people from making a "punk hour" at a bar even if they'll be having a live performance and the term is applicable. Does that seem like a good analogy?

Re:Yes, it is.

[dougmc]

Anyway, the OED first lists the term being used in 1917 by Greenhill Press, so they would hold the trademark if anyone.

That's not how trademarks work. It's not like copyright, where it's automatic -- you have to file for a trademark, and if you don't, somebody else can. I think a lot of companies file for trademarks for every little catch phrase and slogan they use or think they'll use, not because they really want to `own' it, but because they don't want anybody else going after them for using it. Seems a big waste, but if that's what the system requires to protect yourself ...

I still think that the term `super hero' is so generic (or has become so) that any trademarks on it should be invalid, but that's another issue. Trademark law (unlike patent or copyright law) has a provision that a company must protect it's trademarks or they'll lose them, and in this case I'd say the phrase was or is so commonly used that they should lose it, if they even have it.

I saw `if they even have it' because I did a search on the US Trademark site for a trademark on `super hero' or `superhero' and didn't find any on just those two words that applied to comics. I did find a few for things like `Marvel Super Heros', but nothing just on `super hero' related to comics. Perhaps I was looking in the wrong place or something?

Re:Is it really so crazy?

[Supurcell]

Nietzsche coined the term "Übermensch", which translates to "Overman" not "Superman". I'm pretty sure no Nazi every used the english word "Superman" either.

Re:Is it really so crazy?

[DrSkwid]

Man and Superman,
play in four acts by George Bernard Shaw, published in 1903 and performed (without scene 2 of Act III) in 1905; the first complete performance was in 1915. The Superman of the title is derived from the writings of Friedrich Nietzsche.

http://www.britannica.com/nobel/micro/733_84.html

Re:"Superhero" as a trade mark?

[AlterTick]

"The concept of superheros"

Nobody said anything about 'concepts'.

When they claimed trademark on the term "superheroes" they sure as heck did say something about "concepts". Unlike "Superman", or "Batman", or "Spiderman", the term "superhero" doesn't refer to anything in particular, but rather a generic set of things. Trademark is not like a patent, where the holder can use it to stake out a market segment and keep competitors out. THe purpose of trademarks is entirely for consumer protection, to prevent confusion in the marketplace. The fact that the term "superhero" exists in the common vernacular as a generic concept that nobody (other than a handful of jackass lawyers and executives at DC & Marvel) associates with any particular company's or companies' products, combined with the fact that their defense of said trademark over the last 40 years has been practically nil, obviously raises huge questions as to the validity of the trademark.

Re:"Superhero" as a trade mark?

[dpille]

If you don't defend a trademark, you lose it.

Only kinda. The parent post clarifies a fair amount (as in steering you away from patent or copyright claims) but misses the right question:

Does the relevant class of potential consumers (that is, the comic-book-purchasing public) understand the term "SUPERHERO" to function as an indicator of source, origin, sponsorship, or affiliation when used in association with comic books, and do any consumers that have that understanding believe that the source/origin/sponsorship/affiliation is with DC and Marvel?

Let me summarize a bunch of what the irrelevant who-used-it-first posters are thinking: no freaking way.

Generic?

[eonlabs]

I think yes, the term is used for a lot of things. Here's what the patent and trademark office shows regarding this:

SUPERHERO is owned by David & Goliath, Inc. for use on clothing
SUPER HERO Oooh, this one's for skin cream
So it isn't reserved across everything, where is it reserved?

SUPER HEROES FOUND IT!!!
Goods and services: " PUBLICATIONS, PARTICULARLY COMIC BOOKS AND MAGAZINES AND STORIES IN ILLUSTRATED FORM [(( ; CARDBOARD STAND-UP FIGURES; PLAYING CARDS; PAPER IRON-ON TRANSFER; ERASERS; PENCIL SHARPENERS; PENCILS; GLUE FOR OFFICE AND HOME USE, SUCH AS IS SOLD AS STATIONERY SUPPLY;] NOTEBOOKS AND STAMP ALBUMS )). FIRST USE: 19661000. FIRST USE IN COMMERCE: 19661000"
So, they technically can ONLY press this against comic book writers (and other publishers).

This is retarded

[ShieldW0lf]

Seriously, this is the dumbest thing I've ever heard. A trademark is a mark of trade. It's so you know who you're dealing with. If you buy Kleenex (TM), you know you're getting it from the same organization you did last time.

So if you hear "Super Hero Comic", do you know which organization you're dealing with? No, you don't. It could be either of two competing organizations that produced it. So it's not a trademark, it's just two big companies trying to keep competitors out. This should not be permitted.

Re:"Superhero" as a trade mark?

[cpt kangarooski]

The definition of a trademark is that it is some designation (e.g. a word, name, symbol) or combination of designations that is distinctive and is used to identify the source from which marked goods or services originate, and to distinguish that source from others.

For example, APPLE is a designation (a word), which is distinctive (arbitrary -- we'll get to what that means in a moment) used to identify the source from which computers (a kind of good) so marked originate (the Apple company) and which distinguishes those good and their source from others (e.g. Dell, IBM, Sony).

So distinctiveness is one of the necessary elements for trademarkability. There is a continuum of distinctiveness. From most to least they are:

• Fanciful (totally made-up marks, such as KODAK)
• Arbitrary (marks without a meaning in the context where they're being used as a trademark, such as APPLE for computers)
• Suggestive (marks that are suggestive of the marked good or service, such as CHICKEN OF THE SEA for tuna fish; basically they require a little mental work to see the connection, but it's not arbitrary)
• Descriptive (marks that describe the good or service, and which, unlike suggestive marks, require no imagination, such as HOLIDAY INN for hotel rooms for people on vacation), and finally;
• Generic (marks that simply refer to the general class of goods or services to which the marked ones belong, such as APPLE for the fruit of the same name).
  
  Fanciful, arbitrary, and suggestive marks are always distinctive. Provided that the other requirements for trademarkability are met, they can make good trademarks.
  
  Descriptive marks can either be merely descriptive, or can have acquired distinctiveness (also known as secondary meaning). The former are not distinctive, the latter are. In order to acquire distinctiveness, it has to be shown that the public associates the mark with the source of the marked goods and services, which is generally shown through various kinds of evidence. Even when a descriptive mark is distinctive, the non-distinctive form of the mark is still not protected.
  
  Generic marks are never able to function as trademarks.
  
  Genericide is what happens when the public stops considering a trademark as distinctive of the goods or services of a specific source, and starts to consider it to be a generic term for the goods or services as a class. Their change in perceptions kills the mark. Often this is the result of overwhelming success by the mark holder. By dominating an entire industry, their mark ends up becoming associated with the industry, rather than with the mark holder specifically.
  
  For example, let's suppose that the proper name for a trampoline is actually a 'bouncing apparatus.' Thus, if you buy one from the Trampoline company, it is a Trampoline-brand bouncing apparatus. If you buy one from WidgetCo, it is a WidgetCo-brand bouncing apparatus. But if everyone thinks that the thing you buy is called a trampoline, regardless of what company you buy it from, then Trampoline loses their mark, and WidgetCo can start to advertise WidgetCo-brand trampolines.
  
  It's kind of like how Honda Civics and VW Jettas are both kinds of cars. If the Civic name became generic for any car, regardless of manufacturer, people would talk about how the VW Jetta is a sort of civic. The word would have become a synonym for car. More specifically, it would be a word that describes the good itself (a car) rather than the origin of the good (a car that was made by Honda).
  
  I went to www.thermos.com and there is a registered trademark symbol next to their name.
  
  Well, first, there is a difference in contexts. Thermos is not generic for a manufacturer; it's generic for insulated flasks. (n.b. how they studiously avoid using the word thermos to refer to the good itself -- they use the term 'beverage bottle' a lot; this helps their case) Secondly, it's actually in a wierd case; some generic uses are allowed, and some aren't, and it's been i