SUPER HERO® my foot

Originally posted 2006-03-27 16:08:22. Republished by Blog Post Promoter

UPDATE: Our NPR interview on this topic was on NPR’s “All Things Considered” just before 6 tonight.

We blogged on this topic last week. Today the LA Times weighs in, writing, confusingly:

TICKETS TO THE California Science Center’s latest exhibit, “Marvel Super Heroes Science Exhibition,” sell for $6.75 and up. But there’s one lesson the exhibition offers free of charge to anyone who wanders by the museum, and it’s not about science.

The lesson is in the giant sign looming over the center’s entrance archway: “Marvel ® Super Heroes(TM) Science Exhibition.” The “TM” stands for trademark, signifying that Marvel is claiming exclusive rights to use the term “super hero” as a marketing term for, well, superheroes. The company and its largest competitor, DC Comics, jointly obtained the trademark from the federal Patent and Trademark Office in 1981.

The government’s action means that any company wishing to market a comic book, graphic novel or related item with any variation of “super hero” in the name or title must get permission from Marvel and DC. Dan Taylor, the Costa Mesa-based creator of the “Super Hero Happy Hour” comic, learned about this absurdity two years ago when he was contacted by lawyers for Marvel and DC, prompting him to rename his series to the more pedestrian “Hero Happy Hour.”

What government action? What happened in 1981? (See below — someone else found the answer.) Nor does a claim of a valid registration make any sense in light of the claim in the editorial that the sign says:

Marvel ® Super Heroes(TM) Science Exhibition

If SUPER HEROES were a bona fide registered mark, it should say “Marvel ® Super Heroes ®,” not “Super Heroes(TM).” “TM” signifies the assertion of common-law trademark rights — not a registered mark and, as a practical matter, that a mark was either refused registration or that legal counsel advised against seeking registration (because the refusal would harm a future common law claim).The editorial argues that SUPER HEROES is a generic term not entitled to any trademark protection, which is correct. Genericness is the only way to defend against a registered and incontestible trademark, which presumably one registered in 1981 would be.

Even if it were true that two competing companies could own a trademark jointly in an area where they compete — thereby violating the axiom that trademarks indicate a single source of a good or service with which they are used — they seem to be succesfully avoiding the issue of their absurd joint registration, even as their giant signs claim only a “TM” common-law mark.

I guess that’s some super-heroic PR / legal spin job by the comic book fiends, but why journalists aren’t “getting this” — or why I [couldn’t] for the life of me find the source that does indicate a registration — leaves me pretty confused at the very unlikelihood of it all.

UPDATE: Attorney Robert J. Sinnema points me to registration number 1179067:

SUPER HEROES (“PUBLICATIONS, PARTICULARLY COMIC BOOKS AND MAGAZINES AND STORIES IN ILLUSTRATED FORM [(( ; CARDBOARD STAND-UP FIGURES; PLAYING CARDS; PAPER IRON-ON TRANSFER; ERASERS; PENCIL SHARPENERS; PENCILS; GLUE FOR OFFICE AND HOME USE, SUCH AS IS SOLD AS STATIONERY SUPPLY;] NOTEBOOKS AND STAMP ALBUMS )).

He adds:

If you look at the owner/assignment information it appears to show joint ownership between DC and Marvel. (I’m with you, though–I don’t know how the mark can be a valid indicator of source.)

And why the plural? Believe me, there’s a reason for everything, including the companies’ continued non-use of the ®. They simply don’t want to draw attention to preposterous joint ownership (again — by competitors!) of the registration of a generic term. Ah, but utilizing the joint assignment — when a joint application would never have passed muster — is diabolically clever. It’s still not an enforceable trademark, however — registration, assignment or not.

UPDATE: Via (and according to) aTypical Joe, I have discovered my inner (trademark – protected) self!

Your results:
You are Spider-Man
Spider-Man
90%
Iron Man
70%
Green Lantern
65%
Catwoman
55%
Superman
55%
Hulk
50%
Robin
47%
The Flash
45%
Batman
45%
Wonder Woman
32%
Supergirl
27%
You are intelligent, witty,
a bit geeky and have great
power and responsibility.

Click here to take the “Which Superhero am I?” quiz…

UPDATE: Marty disagrees on the “single source indicator” point, brings a counter example, and alludes to others. Whether they are factually apt, I do not know. (He must know more about the SWISS ARMY trademark than is obviously discernable.) But he does not address the genericness issue.

email

Tags: , , , ,

Author:Ron Coleman

I write this blog.

Subscribe

There are all kinds of social media formats to subscribe or otherwise follow the adventures of LIKELIHOOD OF CONFUSION®. Or see the posts-by-email option below.

Trackbacks/Pingbacks

  1. QuizLaw - March 29, 2006

    No superheroes allowed!…

    Since 1981, comic book companies Marvel and D.C. have jointly owned a registered trademark for the term “super heroes” in connection with goods and services including, among other things, comic books, iron-on transfers, pencils and notebooks. Some ar…

  2. More intel on genericness, or a parody of trademark rights | LIKELIHOOD OF CONFUSION® - December 17, 2013

    […] But when your trademark is built around words that start out as plain old words, the road can be even tougher.  That’s something to think about when choosing whether or not to use such a word mark as your trademark — all the more so when, like the Harvard Lampoon, owners of the LAMPOON trademark, you weaken your rights by sharing them with another outfit (something I still don’t really understand). […]

  3. Best of 2013: The superheroes of trademarks | LIKELIHOOD OF CONFUSION® - December 26, 2013

    […] think I’m talking about the SUPERHERO “trademark”?  No, not that again!  (Not for […]

  4. SUPER HEROES: Marvel & DC's Joint TrademarkDavid Lizerbram & Associates - May 7, 2014

    […] commentators (see here, here, and here) have objected to DC and Marvel’s joint claim, generally arguing that […]

Leave a Reply