USPTO Snaps Six-Decade “Superhero” Stranglehold

On Thursday, September 26th, 2024, a tribunal of the US Patent and Trademark Office (USPTO)’s Trademark Trial and Appeals Board issued a single decision canceling four separate trademarks.

The trademarks, all featuring variants of the word “superhero” and owned jointly by comics colossi DC and Marvel, have been in force since 1967.

Now, the tribunal’s decision may change how we view, consume, and create superheroes forever.

Where do these tribunals get their power, and are there any limits on it? What made the tribunal decide to cancel four trademarks with such a huge cultural resonance?

How much of an impact might this decision have on the landscape for comics and broader entertainment? Can DC and Marvel fight the cancellation, and would it do them any good to do so?

Let’s take a closer look at this watershed decision and how it might affect one of the biggest genres in modern entertainment!

Act I: Trademark Trouble

“Enjoy your reign while you may, Superman. For surely as night follows day, there comes a time when even gods must die.” –Lex Luthor (James Marsters), Superman: Doomsday?

In 1967, DC Comics and Marvel Comics filed a set of joint trademark applications in the United States, each one concerned with a specific iteration of the term “super hero.” By itself, that would be strange enough; a trademark is intended to identify a singular source of products, goods, or services, so sharing a trademark, especially with one’s biggest competition, is a choice seemingly not just asking for raised eyebrows, but demanding them. Nevertheless, the application set was filed–and against all sense, reason, logic, and regulations, was subsequently approved by the USPTO.?

For the next 57 years, DC and Marvel enforced their mutual trademarks governing superheroes against potential encroachment, sometimes robustly or even overenthusiastically, sometimes more in the breach than the observance. All the while, they borrowed, loaned, parodied, swapped, swiped, produced crossover editions with, and mixed and matched one company’s characters with the others, with frequently hilarious results. In short, they generally gave the public the impression that these bitter rivals were two very large fish trying very hard to play nicely with each other in a very small pond. Oh, there were a few notable exceptions, such as the mere existence of Wade W. Wilson, aka Deadpool, aka maybe the biggest metaphorical middle finger ever raised by Stan Lee to anyone professionally. Deadpool’s meteoric rise to the top of Marvel’s A-list had to rankle DC, because Slade Wilson, aka Deathstroke (seen below in the reflection on the rifle scope), was the template for Marvel’s Deadpool and yet is barely a blip on anyone’s radar, diehard comic geeks and hardcore fans of the CW show Arrow aside.

?

Despite their sometimes good-natured, sometimes not rivalry, the two companies nevertheless made it their business to ensure that when people thought of superheroes, they thought specifically and exclusively of Marvel or DC characters. Their overall diligence ford a number of smaller competitors to either join them, sell their own superhero entries to the hybrid entity, or find new descriptors for their creations. I’ve detailed much of the backstory in this article, so I won’t rehash the whole thing now. Instead, we’ll skip ahead to where that article left off.

At that time, UK comic artist S.J. Richold, the creator of the comic Superbabies, had just finished arguing before the USPTO’s TTAB tribunal that the DC/Marvel trademarks were invalid because:

1. The trademarks in question are considered common words and generic descriptors which are not beholden to either company in the public mind, but can exist conceptually unmoored from either company. One example is Watchmen, by writer Alan Moore, comic artist Dave Gibbons, and colorist/inker John Higgins, which went to great pains not to use the word “superhero” anywhere but nevertheless portrayed “according to Hoyle” superheroes as they are when they’re at home, so to speak.?
2. The trademarks do not indicate a singular source of goods, products, or services, and therefore do not fulfill the most basic intended function of a trademark filed and exercised in good faith.
3. A trademark demonstrates sourcing and ownership of the creation and/or delivery of goods and services, not the entire industry in which that mark is intended to be used. Richold argued that DC and Marvel have employed these marks for decades to subsume, eliminate, or quash any and all competition to their own ends and create a de facto monopoly (diopoly?) within the comic book community and especially in the superhero genre.

Act II: Tribunal Tale

The USPTO’s TTAB tribunals are essentially three-judge panel courts with exceedingly narrow scope, jurisdiction, and discretion. Tribunal mechanics are similar to those of a standard civil proceeding, but the tribunal can only offer judgment on whether a given trademark is valid or not and/or can be filed or exercised by a given person or entity or not. They cannot award monetary damages and they cannot assess claims of improper usage, which are the proper province of federal circuit courts.

Their limitations aside, TTAB tribunals can approve an application or cancel an existing trademark, putting the mark holder at potentially significant expense, time, and effort if they wish to appeal the tribunal’s decision–and ultimately putting them in front of a federal court judge anyway. Outside of matters within the USPTO’s scope and discretion, tribunals have very little power; within the purview of such matters, their authority is nearly absolute and seldom contested successfully.

One of the ways in which a TTAB tribunal functions in precisely the same way as a civil court is the ability to contact and request or require information or the presence of either or both parties to a trademark dispute. If one of the parties fails to respond, the tribunal must find in favor of the other, no matter how elegantly presented or legally accurate the case might be. In the superheroes case, Disney/Marvel and Warner/DC failed to respond to Richold’s petition to cancel the trademarks in question by the court-assigned date. Thus, we could argue that Marvel and DC canceled the marks themselves, on the grounds that judges really, really don’t like to have their directions ignored or modified without a very compelling reason and prior judicial approval.?

Act III: The “Post-Superhero” Superhero

Barring a spectacularly effective appeal from DC/Marvel, the superhero marks in question are dead in the water. This means anyone can use the term without fear of a lawsuit, whether they’re describing a character or creating a new comic series of their own; the tribunal effectively booted the word into the public domain when it kicked the relevant marks. What it does NOT mean is that now that “superhero” is largely unencumbered by DC/Marvel, anyone has free rein to misappropriate DC/Marvel characters such as Superman or Wolverine on the basis that they’re superheroes; these are still protected trademarks and will absolutely invite the wholly valid legal wrath of the company owning the character/s in question. Using “superhero” as a descriptor is fine; bogarting a registered and valid trademark to pawn off as one’s own is not.

????One of the biggest benefits, as a writer acquaintance of mine remarked when I told him about this case, is that “Now writers can stop torturing the English language until it screams trying to come up with new euphemisms for the same idea. This is a good thing because it means a lot more cool ideas, expressed in a much more readable fashion without reducing them to mental tapioca pudding.” I can’t help but agree, especially when “superhero” is an apt descriptor for the character in question.

The Bottom Line

The most interesting things about this case are likely to happen in the background, I think. I’d be astounded to learn that USPTO isn’t combing through files that predate many people’s parents to find out how those marks got approved and whether any of the gaps or failures in the process which allowed them to slip through have survived without being addressed. I’d be shocked to find out that there’s no interest within the legislative world concerning taking a long, hard look at both DC and Marvel for malfeasance of all sorts, especially concerning anticompetitive practices and market fixing collusion. And I’d be amazed if we hear much of anything about any of it through the most common news channels.

I strongly suspect that most if not all of the fallout from this case will happen quietly, behind the scenes. Such fallout will only reveal itself fitfully and incrementally, if at all, in the form of new policy and procedure memos from USPTO and maybe some vague references in a forthcoming bill from the Senate floor. To allow otherwise to happen would be to undermine Americans’ confidence in the US’ legal IP protections, at potentially huge cost to our nation. No one’s likely to be willing to risk that–certainly not over spandex-wearing, muscle-bound, freaky-powered people who nevertheless hold up a mirror and offer to let us see who we want or fear to be or become.

The superhero is dead. Long live the superhero!

ABOUT JOHN RIZVI, ESQ.

John Rizvi is a Registered and Board Certified Patent Attorney, Adjunct Professor of Intellectual Property Law, best-selling author, and featured speaker on topics of interest to inventors and entrepreneurs (including TEDx).

His books include "Escaping the Gray" and "Think and Grow Rich for Inventors" and have won critical acclaim including an endorsement from Kevin Harrington, one of the original sharks on the hit TV show - Shark Tank, responsible for the successful launch of over 500 products resulting in more than $5 billion in sales worldwide. You can learn more about Professor Rizvi and his patent law practice at www.ThePatentProfessor.com

Follow John Rizvi on Social Media

YouTube: https://www.youtube.com/c/thepatentprofessor

Facebook: https://business.facebook.com/patentprofessor/

Twitter: https://twitter.com/ThePatentProf

Instagram: https://www.instagram.com/thepatentprofessor/