tape_measure
a year 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
a year 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
a year 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
a year 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
a year 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
a year 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
a year 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
a year 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
a year 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
a year 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
a year 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
a year 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
a year 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
a year 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
a year 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
a year ago
No, you've confused trademarks with patents.
acdha
a year 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
a year 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
a year 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
a year ago
em-bee
a year 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
a year 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
a year 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
a year ago