The recent decision by the Trademark Trial and Appeal Board (TTAB) to cancel the federal trademark registrations for “Super Hero” and “Super Heroes” held by Marvel and DC Comics underscores the ongoing challenges faced by trademark owners in protecting their intellectual property from becoming generic. This development serves not only as a cautionary tale for Marvel and DC but also provides a broader lesson on the vulnerability of trademarks.
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Genericness and Trademark Vulnerability
The TTAB’s ruling was based on the claim that the trademarks had become generic. Under US trademark law, terms understood by the target consumer market primarily as the common or class name for goods or services cannot enjoy trademark protection. The two-part test for genericness involves determining the goods or services in question and whether consumers primarily understand the trademark to refer to those goods or services. If so, the mark is deemed generic.
In this case, the TTAB found that the terms “Super Hero” and “Super Heroes” were too generic, as argued by the petitioner, Superbabies Limited, the owners of “The Super Babies” comics.
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Trademark Abandonment
Additionally, the claim of abandonment suggested that Marvel and DC had relinquished their rights by encouraging a generalized use of these terms in commerce, further eroding the distinctiveness of the marks. The failure of Marvel and DC to respond to the petition led to a default judgment in favor of Superbabies Limited.
One famous precedent includes terms like aspirin, elevator, and escalator, which once held trademark status but became generic over time. Microsoft, on the other hand, successfully fought to retain trademark control over “Windows” after its initial classification as generic by the TTAB.
The case against Marvel and DC highlights the critical steps that companies must take to avoid “genericide”—the process by which a trademark becomes generic. Key strategies include:
- Choosing a strong and distinct mark initially.
- Ensuring consistent and correct usage of the trademark.
- Using appropriate trademark notices like ®, TM, or SM.
- Educating consumers on proper trademark usage.
- Vigilantly policing and addressing improper use.
- Maintaining clear brand guidelines and actively monitoring the trademark’s market presence.
The outcome for Marvel and DC could lead to increased creativity within the superhero genre, as more creators find themselves free to use terms once shielded by trademark registrations. Meanwhile, this case adds another chapter to the ongoing narrative about the importance of trademark vigilance, offering valuable lessons to other trademark holders.
More details on this development can be found in the original report by Bloomberg Law.