For a business that sold fictional characters with extraordinary or superhuman characters, would you say that SUPERHERO is a brand name or a common name?
Law firm files for SUPERHERO LAWYERS for legal services. Marvel and DC, co-owners of incontestable registrations for SUPERHERO, oppose. Notice of opposition, with funny drawings, reproduced below, as well as applicant’s motion to dismiss. Alas, ridiculousness tends not to be a winning argument for a motion to dismiss. Discussion of applicant’s dog as evidence of good faith here.
Trademark blog references to the SUPER HERO trademark over the years.
HT Ron Coleman.
Los Angeles Times column against claim by Marvel and DC in SUPER HEROES trademark.
I’ve discussed the potential issues re the SUPER HEROS trademark here in 2004, the last time the issue made news. In (brief) response to the emails I’m receiving from readers on this: (1) Despite the text book definition of a trademark as a symbol designating a single source, two or more otherwise unrelated entities can own a trademark registration (the SWISS ARMY KNIFE mark being perhaps the best known mark that exemplifies this); (2) Registration 1179067 exists and is more than five years old, which means that various presumptions flow in Marvel/DC’s favor.
According to this release, the judge in the CITY OF HEROES litigation (background here) has dismissed certained trademark claims brought by Marvel against the provider of a multi-player online role-playing game that allowed users to create superhero ‘avatars.’ He also took Marvel to task for certain ‘false and sham’ exhibits and allegations (see here). Hat tip to Kurt.
Bonus free-association: prior Blog post on ownership of the term SUPERHERO.
Here’s the CITY OF HEROES software:
City of Heroes is a “massive multi-player role playing game” that allows the user to create a superhero, using attributes in the software (mutant, fighting style, etc.). It’s unclear just how much the users’ heroes can deviate from the templates supplied by COH. The guy in the front with the helmet is a super hero named Statesman who walks the user through creating their own hero. There’s a bigger picture of Statesman in the flash animation here.
Marvel Comics says that City of Heroes infringes Marvel’s trademarks and copyrights, and has filed this complaint. Marvel says that, for example, Statesman, is just like Captain America, except that COH put the helmet of Magneto (a Marvel villain) on him. Here is Marvel’s Captain America:
And here’s Magneto (the X-Men nemesis) wearing his helmet:
Here is a Greek Helmet from approximately 600 BC:
Marvel also argues that COH has committed contributory infringement by allowing fans to create heroes who are similar to Marvel’s characters (for example, the software allows you to create a character who has claws and regenerative powers, just like Marvel’s Wolverine (and the Phoenix of Egyptian, Greek and Roman myth)).
Here is a Law.com column by Fred von Lohmann discussing this case and Marvel’s contributory infringement theory. In addition to critiquing Marvel’s legal theories, Mr. von Lohmann calls this case ‘an assault on the basic expressive rights of the fans.’
Via Nerdlaw, we find a link to this press release from a comic book implying that it received a demand letter from DC and Marvel, alleging that they jointly own the trademark SUPER HERO (and forced the comic book to remove the term from its title).
I didn’t see the actual demand letter and maybe the press release misstates some of the facts in the case, so I’ll only ‘hmmm’ silently to myself.
But I will add that one element of the definition of a trademark is that it designates a single source of origin. While there is the concept of joint ownership, two unrelated companies holding themselves out as two unrelated companies tend not to meet this definition.
Also, DC disclaimed ‘SUPER HEROES’ in Reg. 2730169 for the mark POCKET SUPER HEROES.
BE THAT AS IT MAY: Cadence Industries, AKA Marvel and DC Comics obtained a registration for SUPER HEROES for comic books back in 1981. It is now assigned to DC and Marvel as separately identified owners. LEGION OF SUPER-HEROES is owned by DC. MARVEL SUPER HEROES was registered by Cadence and assigned to Marvel. Marvel owns MARVEL SUPER HERO ISLAND.
MORE FOOD FOR THOUGHT: NY trademark lawyer Peter Sloane alerts me to the registration for SWISS ARMY KNIFE, which is jointly owned by Wenger and Victorinox, and the TTAB decision that discusses whether two unrelated companies selling competitive products can be joint-owners of the same trademark registration. In pertinent part, the TTAB notes:
“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, represent a single source.”
The SWISS ARMY KNIFE mark, as acknowledged by the TTAB, is a unique mark. The Swiss Army had licensed Wenger and Victorinox to produce, er, swiss army knives, per its specifications, for over 100 years.
I don’t have access to any possible contractual relationship between DC and Marvel regarding quality control of the SUPER HERO mark.
As for genericness, the question is: what is the primary signficance of the term SUPER HERO to the purchasing public?