"SUPER HEROES" Team Up: A Look at Joint Trademark Ownership

Super hero fan or not, you've seen these characters on television, on posters at the cinema, t-shirts, stationary, towels, bedding, and toiletries. You may also be familiar with the two American comic book publishing giants Marvel and DC. Commonly thought of as rivals in the business, Marvel and DC have joined forces outside of the fictional realm to protect and enforce their trademark rights in the trademark "SUPER HEROES" and variants thereof. This article takes a look at their joint-ownership strategy with respect to enforcement, maintenance, and how the companies navigate protecting their individual trademark rights in light of their jointly-owned portfolio of trademarks.

As a general matter, trademarks are source indicators for the goods and/or services identified in an applicant's application/a registration owner's certificate of registration. Trademark law protects the consumer from confusion as to the commercial sources of goods and services and commercial relationships, and protects a senior user of a mark from adverse commercial impact due to use of a similar mark by a newcomer. See e.g. Obe, Inc. v. InSassy, Inc. Opposition No. 91225714 (TTAB June 13, 2018) at 26. Accordingly, the owner of a trademark application/registration is the party that uses the mark and controls the nature and quality of goods and services sold in connection with the mark. See Trademark Manual of Examination Procedure (TMEP) § 1201.05 ("An applicant may claim ownership when the trademark is applied on the applicant's instruction").

Trademark applications and registrations can be jointly owned. See TMEP § 803.03(d); Arrow Trading Co., Inc. v. Victorinox A.G. and Wegner S.A., Opposition No. 103315 (TTAB June 27, 2003) at 32 ("where 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, do represent a single source"). If a trademark application is jointly owned, that should be reflected in the application; for example, if an application owned by joint applicants is filed in the name of only one of the applicants and another party who is not the joint owner, that application is considered void as filed "because the listed parties did not own the mark as joint applicants." TMEP § 1201.02(c). A written agreement between two joint trademark applicant corporations is not required when the corporations have an agreement regarding the quality of the goods and the use of the mark. Arrow Trading Co., Inc. v. Victorinox A.G. and Wegner S.A., Opposition No. 103315 (TTAB June 27, 2003) at 29.

Marvel and DC jointly own several trademark registrations. As seen in the chart below, Marvel and DC have filed applications as joint owners, and have become joint owners through assignment. For example, the companies filed a trademark application as joint owners for "SUPER HEROES," a standard character mark for "production, distribution and exhibition of a series of animated motion pictures" in 2009 (Reg. No. 5613972).

Marvel and DC enforce these marks, for example, by filing Opposition Proceedings to oppose applied-for marks that they believe are likely to cause confusion in the minds of purchasers as to the source of the applied-for goods and services. In some instances, DC or Marvel institutes the proceeding. In others, the Opposition Proceedings are initiated jointly. The companies scrupulously enforce their marks via Opposition Proceedings in applications identifying goods and services closely related to their own marks' goods and services, as well as for applications identifying goods and services that do not appear related.

For example, in March of 2016, an applicant applied to register "SUPER HERO CAPES" for capes. (Application Serial No. 86925162). The mark was published for opposition in September of 2016, and in January of 2017, DC Comics filed a Notice of Opposition asserting its jointly owned marks "SUPER HERO" for masquerade costumes, "SUPER HEROES" for t-shirts, "SUPER HEROES" for "publications...", and "SUPER HEROES" for "toy figures." After the defendant applicant failed to answer, a Notice of Default was entered and the Opposition was sustained in September 2017. (Opposition Proceeding No. 91232461). As another example, in 2007 an applicant filed a trademark application for SUPER HERO for "insecticides for use in agriculture." DC and Marvel filed a Notice of Opposition in 2008. A Notice of Default was entered January 2009, and the Opposition was sustained in March 2009. (Opposition Proceeding No. 91187848).

The companies also maintain these marks by filing the necessary declarations and accompanying specimens. For example, in 1987, Marvel and DC (then owning Reg. No. 1179067 through Cadence Industries Corporation doing business through its Marvel Comics Group division and DC Comics Inc.) filed a combined Section 8 and 15 Declaration declaring continuous use for five consecutive years and still in use, including a specimen showing the same, namely, an issue of Tales of the Legion of Super-Heroes, a DC publication. The first page of the specimen is the front and back cover of the publication:

(Reg. No. 1179067).

Aside from their jointly owned portfolio, both DC and Marvel also individually own trademarks that incorporate the term "super hero(es). Marvel's include:

• MARVEL SUPER HERO ADVENTURES, Reg. 5528188, for "Story books; series of fiction books; children's activity books"
• MARVEL SUPER HERO ISLAND, Reg. No. 2276421, for "amusement park services"
• MARVEL SUPER-HEROES, Reg. No. 1073580, for "publications, particularly comic books and magazines"

DC Comics Inc. individually owns trademark registrations that incorporate the term "super hero(es)" as well, for example:

• LEGION OF SUPER-HEROES, Reg. No. 1242016, for "comic magazines"
• DC SUPER HERO GIRLS, Reg. No. 1335902 (registered January 2019) for "Printed matter and paper goods, namely, books featuring characters from animated, action adventure, comedy and drama features, comic books, children's books, coloring books, children's activity books; notebooks, diaries, greeting cards, pens, crayons; calendars, gilt wrapping paper; paper party decorations, namely, paper napkins, printed invitations"

Under TMEP § 1201.07, an examining attorney will refuse registration when an applicant's mark as applied to the identified goods and services so resembles a mark that is already registered as to be likely to cause confusion. So what happens when one of DC or Marvel alone files a trademark application that is similar to another "SUPER HEROES" mark? Likelihood of confusion refusals are issued, and the companies argue that the likelihood of confusion is obviated by their joint ownership of "SUPER HEROES" and permission given to each other as to their individual marks.

In the instance of DC's "DC SUPER HERO GIRLS" registration Reg. No. 5551280 for "bed linens, namely, bed blankets, bed sheets, pillow cases, comforters," the examining attorney issued a refusal based on a likelihood of confusion with Marvel's "SUPER HERO SQUAD" mark, Reg. No. 3998441 (now dead) for "Bath towels; Beach towels; Bed blankets; Bed linen; Bed sheets; Bed spreads; Blankets for outdoor use; Children's blankets; Comforters; Curtains; Pillow covers; Towels."

To overcome the refusal, DC filed a response including a Letter of Consent signed by Marvel Characters, Inc., a portion of which is below:

About a week later DC's mark was published for opposition.

Similarly, when DC applied to register LEGION OF SUPER-HEROES the USPTO refused the registration based on a likelihood of confusion with Marvel's MARVEL SUPER-HEROES mark, Reg. No. 1073580 for "publications, particularly comic books and magazines."

In response, DC explained that it was joint applicant with Marvel of the "SUPER HEROES" portion of the mark, and had permission to use it:

After several back-and-forths with the USPTO clarifying ownership among the applied for mark and cited jointly owned marks, DC's LEGION OF SUPER-HEROES mark was registered June of 1983.

Joint trademark ownership can pose other challenges, for example, when a mark is challenged and the joint owners are not jointly exercising control over the use of mark. For now, Marvel and DC seem to be working in concert to preserve their jointly owned and individual portfolios.