SUPER HEROES: Marvel & DC’s Joint Trademark
In 2006, Dan Taylor, the creator of the critically acclaimed Super Hero Happy Hour comic, announced that he had to change the name of his comic. The reason behind the change? Taylor had received a cease and desist letter from trademark attorneys for both DC and Marvel Comics, claiming they jointly owned the trademark SUPER HEROES and any variations of the word.
It turns out that DC and Marvel own U.S. trademark registrations for the mark SUPER HEROES for toys (US Reg. No. 1140452 – Oct. 14, 1980) and comic books (US Reg. No. 1179067 – Nov. 24, 1981) jointly. What is a jointly held trademark, and should SUPER HEROES qualify?
Joint trademarks are a rare occurrence; however, the Trademark Trial and Appeal Board (“TTAB”) has stipulated in certain situations that a mark held by two entities can be acceptable.
SWISS ARMY
In 2003, the TTAB released an opinion in Arrow Trading Co., Inc. v. Victorinox A.G. and Wenger S.A., discussing the possibility of two companies filing for a trademark jointly. Both Victorinox and Wenger manufactured “Swiss Army” pocket knives. The two companies wanted to jointly own the trademark for SWISS ARMY.
Trademark trademark practitioners are taught that a trademark is intended to indicate a single source of origin of goods. In the SWISS ARMY case, the two companies did not manufacture a single product, but instead competed against each other. Nonetheless, the TTAB ruled that “[w]here two entities have a long-standing relationship and rely on each other for quality control, it may be found, in appropriate circumstances, that the parties, as joint owners, represent a single source.” The Board found certain facts especially important in granting the joint trademark, including the following:
- For over 100 years, the two companies had not disputed the shared rights in the mark SWISS ARMY;
- For over 50 years, they had been the only sources of SWISS ARMY brand pocket knives in the US;
- They both used the same suppliers of materials to make the pocket knives and made them to the same specifications and with the same quality control;
- They cooperated in enforcing their trademark rights against third parties.
The Board ultimately found that SWISS ARMY is a trademark essentially indicating a single source in these joint applicants.
Getting Back to SUPER HEROES
The theory is that DC and Marvel should enjoy joint rights in the mark SUPER HEROES for similar reasons. DC and Marvel have been cooperating in enforcing their trademark rights in the term SUPER HEROES (and various versions of the mark) against third parties since 1983 through joint trademark opposition proceedings. In fact, DC and Marvel often do not wait for a competitor to use the words “Super Hero” in commerce. Instead, they carefully monitor trademark applications. DC and Marvel typically contact the applicants and begin confidential settlement discussions. The common result is that the application is abandoned, and the public doesn’t hear anything else about it.
This strategy has worked well for DC and Marvel. In every case but one, DC and Marvel has managed to obtain an abandonment or settlement. There has not been a single TTAB opposition proceeding deciding on the merits of infringement or dilution of the jointly held mark. The only time DC and Marvel were not successful in this strategy, it was for technical reasons – apparently, they failed to complete a filing before a deadline had passed. Presumably, the two companies’ cooperation in enforcing their jointly held trademark rights against third parties would be helpful in the future if a matter was to progress beyond the settlement phase.
Many commentators (see here, here, and here) have objected to DC and Marvel’s joint claim, generally arguing that “Super Hero” is a generic term for a type of character, not a trademark. It seems that these arguments don’t really attack the joint trademark claim in and of itself, but rather, the underlying nature of this particular trademark. Does “Super Hero” really indicate the source of products or services? I’d argue that if a consumer came across a comic book with “Super Hero” in the title, they wouldn’t necessarily assume that Marvel or DC was behind the product. Clearly, Marvel and DC are the two biggest brands in the business, but that doesn’t mean the term should be protected as a trademark and unavailable for anyone else to use. Nintendo, Sony, and Microsoft produce what are by far the three biggest-selling video game consoles – should they have the right to jointly protect “Video Game Console” as a trademark and prevent any competitors from entering the market and using that term?
