US Trademark Office Cancels Marvel, DC's 'Super Hero' Marks

218 pointsposted 9 months ago
by h2odragon
(reuters.com)

94 Comments

tape_measure

9 months ago

Interesting points from https://fingfx.thomsonreuters.com/gfx/legaldocs/myvmamnnavr/...

5. In 1980—decades after the birth of super heroes—DC and Marvel jointly registered SUPER HEROES as a trademark.

6. DC and Marvel claim that no one can use the term SUPER HERO (or superhero, super-hero, or any other version of the term) without their permission. DC and Marvel are wrong. Trademark law does not permit companies to claim ownership over an entire genre. SUPER HERO is a generic term that should not be protected as a trademark.

7. Trademark law also does not allow competitors to claim joint ownership over a single mark. The purpose of a trademark is to identify a single source of goods and services.

20. DC has accused Superbabies of infringing DC’s “SUPER”-related trademarks, has filed an opposition to Superbabies’ trademark applications (TTAB Trademark Opposition No. 91290757), and has threatened further legal action. DC has asserted the exclusive right to use “the prefix SUPER followed by a generic term for a human being."

There's also some examples of SUPER HERO used as a generic term by DC and Marvel. I know of some companies being famously strict about trademark use (example https://www.velcro.com/original-thinking/the-velcro-brand-tr...), and yet these uses seem benign. For example, a splash at the top of a comic book "DCs BOLDEST new super-hero" (without TM, with dash). Now I have to be careful about using any of my company's trademarks. I'm not sure I fully understand how this example is generic and harmful.

hn_throwaway_99

9 months ago

> 7. Trademark law also does not allow competitors to claim joint ownership over a single mark. The purpose of a trademark is to identify a single source of goods and services.

I'm baffled how this was ever allowed in the first place. It's like Marvel and DC went to the trademark office and said "Yes! We'd like to collude to prevent any other competitors from using these terms." and the trademark office was like "Collusion it is! Have a nice day!"

greatgib

9 months ago

I'm not surprised that you can pretend to do that in a trademark office, but I'm more surprised that it does not trigger an antitrust investigation by authorities as it is clearly the 2 dominant players colluding to prevent having any competition!

thaumasiotes

9 months ago

What would happen if DC and Marvel established a body of organizations concerned with comics, which just happened to consist of the two of them and nobody else, and that body was the one holding the trademark?

As far as I'm aware, that's a completely normal set of events, but the effect is the same.

hn_throwaway_99

9 months ago

What you've described is essentially what led to the Sherman Antitrust Act in the first place ("trusts" in this case were exactly the kind of body of companies in the same industry that you describe). The two most dominant companies in the industry are simply not allowed to collude like this to the exclusion of competitors.

thaumasiotes

9 months ago

But there's nothing stopping them from jointly holding a trademark through a trade association. The United Negro College Fund holds a trademark on the phrase "a mind is a terrible thing to waste". It's a group with closed membership. This is just the normal, intended functioning of the system.

The problem with the SUPER HERO trademark is that it's descriptive, not that it's held by a trade association.

hn_throwaway_99

9 months ago

> The problem with the SUPER HERO trademark is that it's descriptive, not that it's held by a trade association.

No, that's wrong, because the court clearly specified both problems as being reasons for invalidating the mark:

> 6. DC and Marvel claim that no one can use the term SUPER HERO (or superhero, super-hero, or any other version of the term) without their permission. DC and Marvel are wrong. Trademark law does not permit companies to claim ownership over an entire genre. SUPER HERO is a generic term that should not be protected as a trademark.

> 7. Trademark law also does not allow competitors to claim joint ownership over a single mark. The purpose of a trademark is to identify a single source of goods and services.

acdha

9 months ago

I think that’d lead to the same challenges: it’d be trivial to show that usage of the term predated that organization by decades, and anyone making an argument about collusion or antitrust would be able to point to the existence of a closed group created by the top two competitors as evidence rather than a defense.

thaumasiotes

9 months ago

> it’d be trivial to show that usage of the term predated that organization by decades

So what? How is that relevant?

How long do you think the term "apple" predated Apple Records?

dragonwriter

9 months ago

The preexisting use unrelated to Apple Records products wasn't affected by their trademark, whereas with superhero it is the preexisting generic use that is directly targeted.

thaumasiotes

9 months ago

Preexistence is still fully irrelevant. The generic use can come into being 50 years after the trademark does and it will still make the trademark invalid. Or it can die 50 years after the improper grant of a trademark and cause that trademark to become valid.

A descriptive term can't be trademarked, and using "super hero" to refer to stories about superheroes is descriptive. But there is no chronological consideration.

s1artibartfast

9 months ago

It is still relevant. The fact that it is preexisting is obvious evidence that it shouldn't have been granted or was immediately overturned on challenge.

The trademark office would not give me a trademark for "computers", "the internet", or "AI" if I walked in tomorrow

thaumasiotes

9 months ago

> The trademark office would not give me a trademark for "computers", "the internet", or "AI" if I walked in tomorrow

Again, so what? Would they give you a trademark on "The Bawdy House" for your chain of brothels? The problem with "computers", "internet", and "AI" is current usage, not former usage.

s1artibartfast

9 months ago

I don't understand what distinction you're trying to make between current and former.

Pre-existing and continuous usage is strong evidence that the current usage is not exclusive to your product.

acdha

9 months ago

How many of those uses of “Apple” were for sales of recorded music? Trademarks aren’t a flat namespace and in this case a court would be looking at the use of that term by multiple companies to refer to similar things prior to creation of our hypothetical organization by those companies with a history of litigation against earlier users, all of which would suggest that this is a generic term they’re trying to close off.

thaumasiotes

9 months ago

No, you've confused trademarks with patents.

acdha

9 months ago

No, I haven’t. Since multiple other people have needed to correct you, there’s clearly a communications failure here. The U.S. PTO has a good background page discussing how they assess the strength of a claim:

https://www.uspto.gov/trademarks/basics/strong-trademarks

This helps us understand that “Apple records” can be a trademark because even though “apple” is an old, generic term for agriculture it wasn’t generic in the context of selling music and only that one company was using it there. Similarly, their examples note that “app store” is generic which is why you always see it referred to as the “Apple App Store”, and Apple’s suit against Amazon’s for use of the term failed.

In this case, the trademark for “superhero” as opposed to “Marvel superhero” involves questions about how strongly consumers identify that term with those companies. That’s where the history comes in, and why it doesn’t change matters if they created a shell organization. The question would involve both prior use by other companies and how over that time popular usage has shifted – has it specialized to mean only the DC/Marvel characters, or do consumers think of any over-powered character as a superhero regardless of whether it’s a DC/Marvel property. Transferring ownership to an organization controlled by the two current holders is a legal maneuver which doesn’t control whether the public usage is descriptive or generic instead of referring to products specifically made by those two companies.

thaumasiotes

9 months ago

> In this case, the trademark for “superhero” as opposed to “Marvel superhero” involves questions about how strongly consumers identify that term with those companies. That’s where the history comes in, and why it doesn’t change matters if they created a shell organization. The question would involve both prior use by other companies and how over that time popular usage has shifted – has it specialized to mean only the DC/Marvel characters, or do consumers think of any over-powered character as a superhero regardless of whether it’s a DC/Marvel property. Transferring ownership to an organization controlled by the two current holders is a legal maneuver which doesn’t control whether the public usage is descriptive or generic instead of referring to products specifically made by those two companies.

Here's your earlier comment:

>> it’d be trivial to show that usage of the term predated that organization by decades

I pointed out that that wouldn't be relevant, and you're agreeing with that here. What kind of "correction" is this?

Assume, as you do, that "super hero" was originally in common use to refer to any benevolent character with supernatural abilities, and over time, subsequent to the grant of the trademark, it specialized to the point that the public now understands it only to refer to characters owned by DC or Marvel.

That would tell us that (1) as a historical matter, the trademark was improperly granted; and (2) as a legal matter, the trademark is currently valid. The preexisting use doesn't matter to anyone. The current meaning of the term matters.

acdha

9 months ago

> I pointed out that that wouldn't be relevant, and you're agreeing with that here. What kind of "correction" is this?

It’s the kind where multiple people are trying to help you understand something. Trademarks are intended to avoid confusion in the marketplace, so my point was that later shifting ownership to a different organization doesn’t change the question. They’d still be asking whether consumers think of the term as specific or generic because consumers rarely care about the distinction between a company and an organization controlled by that company.

user

9 months ago

[deleted]

em-bee

9 months ago

you can license others to use your trademark. so one of them could have trademarked it and licensed it to the other in an exclusive deal.

hn_throwaway_99

9 months ago

But that seems to be clearly not what happened in this case, at least by the explanations in the court's ruling.

em-bee

9 months ago

i didn't mean to imply that it did, just that the idea of sharing a trademark is not as ridiculous if you consider that licensing a trademark i possible and the result would mostly have been the same.

user

9 months ago

[deleted]

MBCook

9 months ago

I would never have guessed the term was trademarked. It seems far too generic.

And if it was granted in the late 60s, that’s what 30 years after Superman? Shouldn’t it have been common by then?

bawolff

9 months ago

Trademarks do not expire ever.

The intended point of a trademark is essentially to prevent scams. E.g. nobody is allowed to sell something called an "apple computer" except apple. The interest doesnt change with time. (In contrast the theoretical point of copyright and patents is to allow people to recoup r&d costs. Eventually at some point the holder has had a fair shot at recouping the cost, so there is a time limit)

amelius

9 months ago

> The intended point of a trademark is essentially to prevent scams.

This is why I think that companies should lose their trademarks in case of scandals, e.g. privacy infringements or security breaches. This is a much better punishment than fines which are often just a slap on the wrist. And to the consumer, a scandal often feels similar to being scammed.

A trademark is a symbol of trust. And companies who are not trustworthy should not be able to use it.

MereInterest

9 months ago

And why trademarks should be dissolved in bankruptcy, not treated as a transferable asset. If there’s a break in continuity of the provider, then the public has no guarantees about the quality after such a break.

j-bos

9 months ago

Oh that's good. I would love to see someone pursue this as a legal claim.

redwall_hp

9 months ago

They should also not extend to works of fiction, or individual products. Preventing other companies from impersonating your company is one thing, but I don't care if six companies make a Thinginator-o-Matic 9000.

username332211

9 months ago

What sort of a break of continuity do you think happened in General Motors in 2009?

xyzzy123

9 months ago

I don't think this would work. Trademarks would be shifted to holding companies and licensed to operating entities so as to avoid legal exposure.

Dylan16807

9 months ago

The comment was not about expiration in any way, it was surprise that the trademark was granted long after the term had started being in wide use.

Imagine if "PC compatible" got trademarked in 1997.

bawolff

9 months ago

Ah, you are right, i misread.

tourmalinetaco

9 months ago

It was. However trademarks, much like patents, are made as generic as possible in order to give the company as much control and value as possible. Tech Dirt is filled with articles of trademark trolling.

user

9 months ago

[deleted]

lupire

9 months ago

Tech Dirt is an equally generic Trademark as Super Hero!

tourmalinetaco

9 months ago

Not really? There’s not an entire genre of fiction titled “techdirt”, nor is it utilized by literally any other media company to market their goods.

The only way for a trademark to be generic is if its utilized by large swaths of the market for advertising (i.e “Taco Tuesdays”) or is overly generic and descriptive (i.e. “crab fries”). Techdirt is neither utilized by large parts of the market nor is it generic and/or descriptive.

fph

9 months ago

Friedrich Nietzsche's Übermensch is from 1883.

ezfe

9 months ago

Marvel and DC were not the original holders of the term

user

9 months ago

[deleted]

snowwrestler

9 months ago

> The USPTO's Trademark Trial and Appeal Board ruled for S.J. Richold's Superbabies Ltd after Disney's Marvel and Warner Bros' DC did not file an answer to Superbabies' request to invalidate the marks.

So, canceled after the companies declined to defend them.

lolinder

9 months ago

> Marvel and DC have cited their marks in opposing dozens of superhero-related trademark applications at the USPTO, according to the office's records.

It's not like they haven't been using them, they just knew that at this point they'd have lost if they tried to actually fight it. Most previous groups probably folded immediately under pressure from the giants.

IG_Semmelweiss

9 months ago

So they sued others into folding. But superbabies did not.

Was it overconfidence, or a a gigantic blunder in not doing their diligence ? (by the DC legal dept team)

biorach

9 months ago

I imagine that the DC legal team were well aware that the trademark was indefensible but figured that the expense of counter suing a well funded industry giant would cause most small players to fold immediately. Their luck ran out in the end but they got a few decades out of it.

IG_Semmelweiss

9 months ago

I feel like you missed my point

If the DC legal team knew their TM was indefensible, they ought to have picked their battles FAR more carefully. Because sending a demand letter to a target likely to contest the TM, would be the end of the TM. Which is exactly what happened.

They could have literally kept their TM - to sue another day - if they had chosen to look the other way with superbabies.

So, my point was whether it was hubris that led to the decision to go after superbabies, or failure instituting unsexy (but necessary) internal dilligence checklists.

dragonwriter

9 months ago

> If the DC legal team knew their TM was indefensible, they ought to have picked their battles FAR more carefully. Because sending a demand letter to a target likely to contest the TM, would be the end of the TM

One special aspect of trademark law is that you can also lose a trademark by failing to protect it.

lolinder

9 months ago

I think their point is that they already effectively lost the trademark—they only had it on paper. That paper was enough to scare a lot of people into paying, but now even those who were cowed into paying a license fee in the past are free to stop.

Letting one more usage slide would not make "Super Heroes" more generic.

terribleperson

9 months ago

If they looked the other way, it would become obvious to other players that the trademark was indefensible, and they would lose the trademark in practice even if it was not revoked.

IG_Semmelweiss

9 months ago

Other players may not have had the resources or foresight to stumble upon superbabies.

A trademark is not infringed if its infringement is not known to others accused of the same thing.

biorach

9 months ago

Maybe there's some context missing? Was there something about superbabies that made them more likely to contest the TM?

martyvis

9 months ago

A quick search on the Australian National Library archive finds an article titled "A British Super Hero" in a 1918 newspaper. https://trove.nla.gov.au/newspaper/article/129947369

fsckboy

9 months ago

>an article titled "A British Super Hero" in a 1918 newspaper

trademark does not work like patents, prior art is not a thing. The question is whether anyone else uses the mark in trade, exchanging money for goods/services. Usage outside of that context does not matter.

you get diluted and lose your trademark when the public uses the term generically in trade, in your line of business, and not in reference to your product, not just because they use the term.

for example, the automobile Mercury Comet is named after two generic things, a Greek god and an space body. So what, they are used in trade for particular automobiles.

Comet is also the name of a cleaning product. The two are not in the same line of business, so they don't get confused, and there is no conflict, but you can't start selling another Comet cleaner, or Comet car.

While there is no prior art, there is prior use, in trade. But in that case, the trademark belongs to the prior user, not to the world at large. If the prior user stops using it, like Aunt Jemima is no longer used for pancake syrup, then the term becomes free for anybody to use for pancake syrup. (I'll bet that company still uses that name for some pancake syrup product, like for institutional use, so they can stop anybody else from using it.)

em-bee

9 months ago

I'll bet that company still uses that name for some pancake syrup product

a related story: in many european countries the product "twix" was named "raider", until some day they decided to unify the brand and rename it to twix. but apparently, every few years they sell a batch under the old name "raider" presumably just so they can keep the trademark.

prmoustache

9 months ago

I think it is more to trigger some nostalgia induced sales from those who were kids in the 80's.

Despite the renaming we used to call the raiders for years as teenagers in the 90's

acdha

9 months ago

I think that’s the other side of the same theory: the reason it’s worth owning as a trademark is that millions of people remember it. Keeping it alive is cheap as long as the cost of printing labels is lower than the profits from a limited run.

bigstrat2003

9 months ago

> If the prior user stops using it, like Aunt Jemima is no longer used for pancake syrup, then the term becomes free for anybody to use for pancake syrup.

You know, I never thought of that. I kind of wonder why nobody has thought to revive those trademarks and take the market that the company had built up. I don't really believe that you would have enough pushback (because some people find the trademark offensive) to make it not worth one's while to get an instant market for their competing pancake syrup.

olddustytrail

9 months ago

> the automobile Mercury Comet is named after two generic things, a Greek god and an space body

Roman god. The Greek version would be Hermes.

tedunangst

9 months ago

Clearing out the easy stuff before facing the final boss: space marine.

lupire

9 months ago

Do any of these space marine games have beaches?

userbinator

9 months ago

I wonder if this will escalate to fights over trademarking "Ultra Hero" or other superlatives next.

user

9 months ago

[deleted]

CM30

9 months ago

Honestly surprised the trademark wasn't nullified earlier. It's pretty clear the term has become genericised at best, and was in common use before the trademark at worst.

Guess it shows you the dangers of uneven legal resources, since I suspect if the folks whose trademarks were shot down using this had fought back, it probably would have cancelled way earlier.

Ekaros

9 months ago

No one cares until someone cares. If trademark is not used in any actions to supress others, no one really tracks them. So there is no impetus to clean it up.

And I don't think government has resources to iterate over trademark and invalidate generic ones automatically.

bithead

9 months ago

I wrote a role playing game I called 'Heroes' in the 80s. I should file something.

cuddlyogre

9 months ago

Good. Now I hope someone figures out how to abolish software patents.

gjsman-1000

9 months ago

Never going to happen; too much investment. Not without something resetting the whole patent system all at once.

And hey, I’m not actually opposed to all patents. H.265 - if you put tens of millions into compression research, or hundreds of millions into database scaling research at PlanetScale, a temporary exclusivity period makes sense.

95% of software patents don’t reach that level.

I think some of the bad rap also comes from technology advancement. Amazon’s 1-click Checkout patent is notorious; but nobody talks about how much of an accomplishment that technology was in 1997. It actually was very impressive when that patent was granted, particularly in getting the credit card networks to agree to the security design.

AnthonyMouse

9 months ago

> Never going to happen; too much investment.

Because of the nature of software patents the investment is worthless anyway.

One of the biggest problems with software patents is that they're unreasonably broad or ambiguous and then the claims read on arbitrary software the authors of which have never even heard of the patent.

Another is that companies purposely patent interfaces that are needed for compatibility, and then the patent isn't needed because it's so great, it's needed to interoperate with existing systems and thereby offers no ability for competitors to design a better alternative because better is different is incompatible. You have to license H.264 even if you build something better yourself -- or you've already licensed H.265 -- because you still have to be able to interact with media and clients that use H.264.

Then as between large companies, they all need each others' patents and just end up cross licensing everything. All the effort is for nothing because it just cancels out.

As between large companies and small companies, the large companies can sue the small one, but the small company probably doesn't have any money anyway and the suit makes the large company look like a bully and creates PR losses that likely outweigh any benefit from filing the suit. The small companies, on the other hand, can't sue the large ones because the large company would just file counterclaims and (at best) force the same cross-licensing that exists between large companies. So that's worthless.

Which leaves the only entities that really like software patents: Patent trolls. Eliminating them is a major economic benefit of eliminating software patents.

pmontra

9 months ago

> Then as between large companies, they all need each others' patents and just end up cross licensing everything. All the effort is for nothing because it just cancels out.

As you explain in the next paragraph, that creates a moat the protects the large companies from the small ones.

They compete against each other but they also collectively defend their own kind.

AnthonyMouse

9 months ago

You're describing another major benefit of eliminating software patents.

Even large companies don't actually benefit from that because their suppliers and companies in complementary markets do the same thing, and you lose any time any of those companies can maintain a moat with which to extract rents out of your own market.

These are deadweight economic losses. They hurt everybody to benefit the company doing them, but even that company is suffering a net loss because of all the companies doing it back to them. Yet they still do it because it's a tragedy of the commons, unless you remove the mechanism that enables it, i.e. software patents.

ndiddy

9 months ago

H.265 is a great example of software patents going wrong. As it was the first MPEG video standard created after the rise of widespread commercial video streaming, all the patent owners involved wanted to be able to get as much money as possible from the streaming companies. Because of this, we went from the relatively reasonable H.264 licensing terms (pay one patent pool a per-device licensing fee, capped at a total royalty payment of $14 million) to H.265 being covered by three separate patent pools. Between all of them you have to pay royalties on decoding hardware, software, and per-item encoded, and some of the pools don't have caps on royalties. Additionally, some major patent holders aren't in any pools and you have to work out deals with them individually. Here's a summary of the H.265 licensing situation: https://www.slashcam.de/images/news/HEVC-Patent-Pools-14134_...

The result is that H.265 hasn't gotten much commercial adoption (the one major use is 4K Blu-Ray). Instead, most major streaming and tech companies have been pushing AV1, which doesn't have licensing fees and takes a "mutually assured destruction" approach to patent enforcement (the AV1 patent license states that if any patent holder tries to sue an AV1 user for patent infringement, they automatically lose the rights to all AV1 patents, opening them up to a countersuit).

Dylan16807

9 months ago

There are plenty of people working on video codecs both in and out of patented realms, with patents hindering progress more than they incentivize it.

For PlanetScale, are you sure the patents are necessary when they have copyright on all their code?

I'd say that productivity-enhancing software patents are so vanishingly rare that we barely need to consider them.

Also software is math, it's not supposed to be patentable.

cuddlyogre

9 months ago

As a compromise, I suggest the source code must be made public for patented ideas.

tourmalinetaco

9 months ago

In an ideal world, all intellectual property would become public domain after 10-15 years, including all research, schematics, wire diagrams, source code, marketing materials, etc. When you go to the various offices to get your IP recognized you must also submit various materials and continue to do so for the life of your property rights.

Again though, in an ideal world. In reality any major changes to something like copyright would probably get you killed even faster than judges who are hard on drugs. The most that we, the people, can do until there’s some amount of backbone in our various countries is to remove ourselves from the primary market wherever we can. For instance, I have been on a successful Nintendo boycott for the last 8 years, and it’s been even longer for Disney. I buy anything I want secondhand or pirate it directly, I don’t pay into SaaS but use alternatives, and I feel a lot happier being ungovernable in this way.

gjsman-1000

9 months ago

Patents already require that all information be available, for someone similarly invested in the craft, to be able to completely reproduce the invention.

That doesn’t require an implementation - but that mirrors our regular patent office, which does not require physical functioning prototypes to demonstrate.

yazzku

9 months ago

"All information be available".

Have you filed or read any software patents? Many are so vague that they do not embody any significant "idea" or contribution, and are mostly just a hindrance to actual innovation. And some are just plain stupid, like the patent to average two integers without overflow.

Like the parent said, a compromise could be "source or GTFO". But even that seems of questionable value.

The shit show gets to the point where many companies file patents defensively. They'll file a patent just in case their competition does it first, even if they have nothing to show for it. And this naturally affects smaller companies disproportionately because they do not have the funds to pay lawyers (there is a hilarious interview on Youtube of a small startup CEO that explains how his company spends more on lawyers than engineers.)

So tl;dr, we'd probably be better off without software patents altogether.

rightbyte

9 months ago

> Amazon’s 1-click Checkout patent is notorious; but nobody talks about how much of an accomplishment that technology was in 1997.

How exactly is removing the confirmation prompt for the purchase basket a technical accomplishment?

user

9 months ago

[deleted]

teddyh

9 months ago

I direct your attention hither: <https://wiki.endsoftwarepatents.org/wiki/Why_abolish_softwar...>

gjsman-1000

9 months ago

A wiki specifically on the topic written by non-lawyers is interesting; but I don’t see why it should be considered an unbiased list of ideas. Sometimes the status quo is imperfect but okay.

jgeada

9 months ago

Have you ever wondered why lawyers themselves have nothing in their field remotely similar to patents?

Nevermark

9 months ago

A though provoking question!

But 99.9% of legal arguments are copies. I.e. ideas with precedence. Copying is to be encouraged.

If legal ideas, which are the fallback of all our rights, could be owned, not even a veneer of justice would remain.

teddyh

9 months ago

Why did you specify “non-lawyers”? Did you mean to imply that something written by lawyers would be unbiased? And where did I ever claim that this was unbiased? It’s the “End Software Patents Wiki”; it’s about as biased as it gets. But I thought you wanted arguments, so I linked it. If you want to dismiss them without reading them, that’s up to you.