Marvel and DC Comic’s “SUPER HERO” Marks Unmasked: How Your Trademark Can Avoid the Same Result

Trademark protection is designed to secure a business asset that is unique to your business and your business alone. This prevents consumer confusion by making it easy for a consumer to identify what product is yours versus that of a competitor’s business. Therefore, your trademark is an important business asset.

The stronger your logo or name, the easier it is to trademark it. If your mark is weak, even if the USPTO initially grants trademark protection, you risk losing that protection in the future.

Recently, publishing company giants Marvel and DC learned this lesson the hard way.

SUPER Weak Marks

The UK-based comic book publisher Superbabies Ltd. sought trademark protection of the term SUPER BABIES in July 2022. The USPTO approved the mark for publication in October 2023. The publication period allows third parties to review and challenge a mark’s potential registration. Challengers typically argue that the published mark is too similar to an existing mark that the challenger owns.

Cue Marvel and DC.

These competitors jointly owned the marks SUPER HEROES and SUPER HERO for various product classes. Marvel and DC challenged the SUPER BABIES Mark, arguing that SUPER HEROES, SUPER HERO, and SUPER BABIES could not co-existence in the marketplace without risk of confusion among consumers as to each companies’ respective products.

Superbabies responded that Marvel and DC were living in a cage of their own making. The UK company argued that Marvel and DC had allowed third parties to use the SUPER prefix and had themselves used the prefix “not as a trademark or brand identifier, but as a generic laudatory term or as a label for the superhero genre.”

Marvel and DC failed to respond to Super Babies’ defenses. The USPTO Trademark Trial and Appeal Board subsequently cancelled the SUPER HERO and SUPER HEROES Marks on September 26, 2024.

So, how can your business avoid the same fate? First, ensure your mark is strong from conception. Second, use your mark as a trademark and ensure your use is exclusive.

Strengthen Your Mark at the Outset

• Weak: Generic and Descriptive Marks

In the trademark realm, labeling a term “generic” is the equivalent of handing Superman a stick of kryptonite. A generic term describes the product itself.

For example, a newspaper electing to call itself NEWSPAPER. There is a risk that by granting one newspaper the exclusive right to use that term, no other newspaper could describe itself as a “newspaper” or its products as “newspapers” without risk of infringement claims. This is (a) problematic for a competitive market and (b) confusing for consumers. Whereas terms like The Daily Bugle and The Gotham Gazette are unlikely to create the same problem.

Additionally, avoid terms that are “merely descriptive” of your product. For example, a newspaper company that seeks trademark protection for the term “Informed Newspaper” or “Daily Newspaper” is not technically generic because of the added qualifier, but nevertheless carries the same problems that generic terms do.

You can likely see the problem with just one or two comic book companies having exclusive control of the term SUPER. If this was permissible, Marvel and DC would essentially  have a monopoly on the term.

• Strong: Inherently Distinctive Marks

Instead, your goal is to make your mark inherently distinctive from your product. Inherently distinctive marks fall into three subcategories: suggestive, arbitrary, and fanciful.

• Suggestive: If Peter Parker starts selling web-shooters, he might sell them under STICK ‘N’ SWING. This mark is not purely generic or descriptive but suggestive. Suggestive marks relate to the product but do more than just identify or describe the product.
• Arbitrary: If Captain America starts selling shields, he might conduct business under the name FREEDOM or LIBERTY or some other star-spangled term. These would likely qualify as arbitrary because there is no direct connection between the product and the term.
• Fanciful: Finally, say the Hulk starts selling protein shakes under the term “Smasharoo”. This term, because it is not a word, would likely qualify as fanciful.

Once You have a Strong Mark, Use It! It’s Your Superpower…

Superbabies attacked Marvel and DC (1) for allowing third parties to use the SUPER prefix and (2) for using the prefix not as a trademark. These are avoidable mistakes.

(a) Third-Party Use

It’s crucial to be vigilant in identifying and addressing potential trademark infringement. Ignoring infringements can lead to serious consequences, as demonstrated by the experiences of Marvel and DC. By proactively protecting your trademark, you signal to others that your brand is exclusive to your business. While this may involve additional costs, such as sending cease-and-desist letters, these expenses are likely to be far less than the cost of a complete rebranding if you were to lose the rights to your trademark.

(b) Use as a Trademark

Second, make sure you use your trademark as a trademark. A trademark’s purpose is to serve as a source indicator. Superbabies’ argument was that Marvel and DC were not using their marks to identify their products as belonging to Marvel and DC – but merely to refer to a category of comic books.

How can you avoid this problem? A general guideline is to integrate your trademark into your daily business operations. For instance, if you’ve trademarked your business name, display it on your storefront. Additionally, consider including your trademark on your products, receipts, or letterhead. The goal is to ensure that consumers immediately associate your trademark with your specific business when they see it. By consistently using your trademark in this manner, you are likely using your trademark as a trademark.

Kelly Swartz is both a board-certified intellectual property attorney and a tax lawyer. She practices in the areas of intellectual property, including patents, trademarks, copyrights and trade secrets. If you are seeking guidance on how to register, proactively protect, or defend your business’ trademarks, please contact Kelly at kelly@uslegalteam.com for additional assistance.

Erin Bocinsky is an intellectual property paralegal. Erin’s strong background in marketing allows her to bring a unique perspective to Widerman Malek, and she demonstrates this through her attentiveness and personal touch with clients. For additional assistance, please contact Erin at ebocinsky@uslegalteam.