The Fall of DC and Marvel’s Joint “Super Heroes” Trademarks

In a surprising turn of events, comic industry giants DC Comics and Marvel Characters, Inc. (collectively the “Registrants”) have lost their long-held trademark registrations for several SUPER HERO and SUPER HEROES marks. Be aware, however, that the proceeding was decided by way of default judgment rather than the merits.

 Background

On May 14, 2024, Superbabies Limited, a UK-based children’s comic book publisher, filed a petition to cancel four trademark registrations jointly owned by Marvel and DC:

- Registration No. 1179067 for “SUPER HEROES” (comic books and magazines)

- Registration No. 1140452 for “SUPER HEROES” (toy figures)

- Registration No. 3674448 for “SUPER HEROES” (t-shirts)

- Registration No. 825835 for “SUPER HERO” (masquerade costumes)

Some of these registrations date back to the 1960s, representing decades of joint trademark ownership between the two comic book publishers.

 The Petition’s Arguments

Superbabies’ filed its Petition for Cancellation with the USPTO’s Trademark and Trial Appeal Board (TTAB). The petition presented several detailed arguments, focusing primarily on genericness and abandonment.  

Regarding genericness, the petition asserted that “SUPER HEROES” has become a generic term. It cited dictionary definitions from major sources, all of which define “superhero” as a category of character rather than a brand. The petition pointed to widespread use of the term as a genre category by retailers like Amazon and Netflix, and its common usage by non-Marvel/DC publishers to describe their own characters and stories. Notably, the petition highlighted Marvel and DC’s own generic use of the term in their comics and marketing, along with statements from industry leaders, including Marvel’s Stan Lee and DC executives, using “superhero” as a generic descriptor. The petition also emphasized that the term’s origins dated back to 1909, long before either Marvel or DC existed.

The petition’s abandonment arguments were multi-faceted, beginning with a challenge to the fundamental validity of trademark co-ownership between competitors. Trademarks, the petition argued, are meant to identify a single source of goods, making Marvel and DC’s joint ownership arrangement inherently problematic. Building on this unusual arrangement, the petition alleged three distinct types of abandonment. First, it argued that by allowing each other to use the marks, Marvel and DC caused the terms to lose their significance as source identifiers. Second, the petition contended that the companies’ own use of the terms as generic labels rather than trademarks contributed to their loss of trademark significance. Third, it claimed that neither company had used the terms as trademarks (as opposed to generic descriptors) in the last three years, constituting prima facie evidence of abandonment under 15 U.S.C. § 1127.

To support these claims, the petition presented evidence of the companies’ fierce market rivalry and public competition, their encouragement of brand distinction in other areas, their failure to police widespread generic use of the terms, and their own generic use in comics and marketing materials. The petition also cited numerous statements from company executives using the terms generically, further undermining their trademark status.

The Default Judgment

The case did not reach a decision on the merits. In TTAB proceedings, defendants (aka applicants and registrants) must file an answer or other responsive pleading (e.g., motion to dismiss) to the claims against them within a specified timeframe.

After receiving one extension of time to respond, neither DC nor Marvel filed an answer to the petition by the July 24, 2024 deadline. On August 9, 2024, Superbabies filed a motion for default judgment, which was granted by the TTAB.

A default judgment is essentially a victory by forfeit. When one party fails to take required action (in this case, filing an answer), the other party can win the case by default without having to prove their arguments. The TTAB may rule against the Registrants simply because they were not there to defend themselves, regardless of the strength of their case.

This procedural outcome is particularly surprising given the resources presumably available to Marvel and DC. It is also interesting that attorneys had entered an appearance in the case and secured an extension of time to respond, suggesting they were initially preparing to defend the registrations. Their subsequent failure to file an answer is interesting.

Analysis and Implications

While the cancellation of these long-standing registrations is significant, it is important to note that the TTAB did not rule on the substantive arguments regarding genericness or abandonment. The cancellation resulted from the Registrants’ failure to defend their marks, not from a finding that “SUPER HEROES” is generic or that the Registrants abandoned their marks.

This outcome leaves at least one question unanswered: Has the term “SUPER HEROES” become generic through widespread use in the industry?

This question may remain open for future litigation. The case also serves as a reminder of the importance of meeting procedural deadlines in trademark proceedings—even for major corporations with significant intellectual property portfolios.

Looking Forward

While Marvel and DC have lost these particular registrations, this may not be the end of the story. The companies could potentially:

·       File a motion for relief from the final judgment (asking the TTAB to set aside the default judgment)

·       Appeal the default judgment

·       File new trademark applications

·       Pursue common law trademark rights

·       Develop new branding strategies

These strategies have pros and cons and several of these options have deadlines.

For the broader comic book industry, this development might lead to more widespread use of “super heroes” terminology without fear of trademark claims from DC and Marvel. However, given the procedural nature of the decision, the larger questions about genericness and joint trademark ownership in the entertainment industry remain unresolved. For what it is worth, default judgments of the TTAB generally do not have preclusive effect in future TTAB proceedings.

If you would like to discuss a TTAB proceeding with an experienced trademark lawyer, please schedule a consultation here.

Lastly, I would be remiss if I did not share the following:

·       I was not aware that anyone (including the Registrants) owned trademark registrations for these marks.

·       The TTAB recently considered another Super Hero battle. See Laverne J. Andrusiek v. Cosmic Crusaders LLC and Lewis J. Davidson, Cancellation No. 92064830 (September 6, 2022) [not precedential] (Opinion by Judge Frances S. Wolfson).