US Trademark Office Cancels Marvel, DC's 'Super Hero' Marks
reuters.com
reuters.com
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.
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!"
As far as I'm aware, that's a completely normal set of events, but the effect is the same.
So what? How is that relevant?
How long do you think the term "apple" predated Apple Records?
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.
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.
Pre-existing and continuous usage is strong evidence that the current usage is not exclusive to your product.
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.
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.
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.
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.
And if it was granted in the late 60s, that’s what 30 years after Superman? Shouldn’t it have been common by then?
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.
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)
Imagine if "PC compatible" got trademarked in 1997.
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.
<https://247wallst.com/special-report/2021/11/04/companies-th...>
<https://www.saturdayeveningpost.com/2023/08/identity-crisis-...>
That said, your stripping suggestion is interesting.
That's also happened: Aspirin, escalator, cellophane, laundromat, kerosene, thermos, and zipper are all former trademarks now considered generic terms.
So, canceled after the companies declined to defend them.
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.
Was it overconfidence, or a a gigantic blunder in not doing their diligence ? (by the DC legal dept team)
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.
A trademark is not infringed if its infringement is not known to others accused of the same thing.
One special aspect of trademark law is that you can also lose a trademark by failing to protect it.
Letting one more usage slide would not make "Super Heroes" more generic.
Apparently Charles Lindburgh was known in the USA as a "super-hero". http://nla.gov.au/nla.news-article95784232
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.)
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.
Oh, I wonder if that's why Mars are doing a limited run of "Snickers" named as "Marathon".
https://www.theguardian.com/business/2024/sep/20/mars-brings...
Despite the renaming we used to call the raiders for years as teenagers in the 90's
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.
Roman god. The Greek version would be Hermes.
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.
And I don't think government has resources to iterate over trademark and invalidate generic ones automatically.
https://en.wikipedia.org/wiki/List_of_generic_and_genericize...
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.
That doesn’t require an implementation - but that mirrors our regular patent office, which does not require physical functioning prototypes to demonstrate.
That's not always the case. For example, patents around nuclear technology:
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.
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.
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.
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.
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.
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.
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.
How exactly is removing the confirmation prompt for the purchase basket a technical accomplishment?
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).