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Superhero Trademark FAQ

Recently, in the comments for Comic Book Urban Legends Revealed #9, a commenter asked about the trademark Marvel and DC have on the word superhero, and I went to link to a FAQ I did on the topic, but noticed that I did not have it up on the new blog. So, well, I figured I’d put it up on the new blog.

Enjoy!

Q: What does it mean that Marvel and DC have a trademark on the word “Superhero”?

A: It means that companies cannot enter certain areas of commerce with the word/phrase “superhero” as part of their product name.

Q: What products does this apply to?

A: Publications, but basically comic books and magazines. Also, cardboard stand-up figures, playing cards, paper iron-on transfers, erasers, pencil sharpeners, pencils, notebooks, stamp albums, and costumes

Q: Does this affect our ability to use the word superhero?

A: Only if you want to make a product that fits into those categories and sell it. So, if you want to sell (you can make it for your own personal pleasure) a comic book called “Star Spangled Superhero Stories,” you would not be able to. But if you want to refer to your characters as superheroes within the comic, you can do so. This is what allows DC to refer to their character Captain Marvel as Captain Marvel within the comic, but they cannot use the name Captain Marvel in advertising or as the name of the comic, because Marvel holds a registered trademark of that name.

Q: When did Marvel and DC do this?

A: 1979. They recently re-filed the trademark.

Q: How can Marvel and DC jointly own a trademark?

A: Essentially, what it came down to was that Marvel and DC both realized the amount of money that the mark “superhero” was worth. Therefore, they decided to trademark the word. However, both companies understood that they wouldn’t have a chance by themselves, as both companies were using the term. A battle between the two would likely result in neither of them being granted a trademark. So, they decided to instead work together against any other company out there trying to use the term, and file for a trademark together.

Q: How do you get a trademark on the word superhero?

A: Besides filing for a trademark, what Marvel and DC had to demonstrate was that, when consumers thought of the word “superhero,” that they thought of DC or Marvel. Surveys would have proven this. Therefore, it was considered to be reasonable that if some other product called itself “Superhero,” that a consumer would think the product came from DC or Marvel, which, in my opinion, is a reasonable claim.

The original basis for trademarks were to protect consumers from bogus products that they were confused into thinking came from a more famous company. Over the years, it seems like it is instead protecting companies from their competitors, but the basic premise is “Would a consumer think this product came from Company A if it uses this name?” and if the answer is “You betcha,” then it is likely that Company A will get a trademark on that word.

Q: Can’t Marvel and DC just let some minor companies get away with the use? Does it really matter?

A: One of the problems with trademarks is that companies have to defend the use of the term, or else risk the term being considered generic, and thereby losing the trademark protection. So, if Marvel and DC began letting companies call their comics “Superhero ____,” they would risk a court ruling that the term was no longer associated with only Marvel and DC, and then the term would be declared “generic,” and would no longer be protectable, which was the case for such famous words as cellophane and kerosene, both once product names, but ultimately became known as generic words that any company could use (The most famous example of a company who vigorously defends their trademark is Xerox, who love to insist that you “use a Xerox copy machine to make a copy, not make a xerox!”). Other companies who constantly have to make this distinction include Roller Blade brand in-line skates and Band-Aid brand bandages.

Q: Isn’t superhero just a descriptive word? I thought you couldn’t trademark a descriptive word?

A: Under normal trademark law, a descriptive mark would not be granted a trademark, but I believe that Marvel and DC can demonstrate (and, I believe, have demonstrated it to the Trademark office, leading to the granting of the registered mark) that the term has acquired distinctiveness, which would allow it to still become a registered trademark.

I believe (and I think that it is an accurate belief) that the term “superhero” has achieved the required “Secondary meaning” in the United States to be eligible for a trademark.

When someone thinks of a superhero, they undoubtedly (which, as I said, would be proven via the use of surveys) think of a product from either DC or Marvel. The term “superhero” has become distinctly known as coming from DC or Marvel, just like how Band-Aid describes a bandage, but it has acquired secondary meaning as a brand of bandages, even though Band-Aid certainly is a descriptive term.

Q: Could someone get around the trademark by calling their product “super-hero”?

A: Not likely. The insertion of a hyphen would not be enough to separate the product from the word superhero. Just like you would not be allowed to use a mark like Ree-bok Sneakers.

Q: Are Marvel and DC evil corporations, trying to keep the little man down?

A: Perhaps, but their use of the trademark laws are really quite standard operating business for corporations. Now, that doesn’t mean corporations aren’t evil, but that’s a whole different FAQ.

Thanks to Greg Schnieke, who posted an excellent reply on this topic on the Digg website. It said all the things I always tell people when this topic comes up, and the framing of his response heavily influenced how I framed this FAQ. Check out his blog here.

If there are any other questions, feel free to ask them in the comments section, and I (or other) will try to address your questions.

9 Comments

Great writeup. As a side note, I’m gonna call my next comic “The Adventures of Orehrepus” – if anyone asks, I just can’t spell Orpheus.

How does Robert Kirkman get away with using “superhero” on the cover of Invincible?

There are three “fair use” exceptions carved out in trademark law.

Two of them do not apply here, which are “Comparisons” (Coke can use Pepsi’s trademark if it is doing an advertisement comparing the two) and “Parody” (which, I think, is self-explanatory).

The third, which DOES apply here, is when someone is using a trademarked word as simply a descriptive word, and not highlighting the word as if it were a mark of trade.

For example, Ocean Spray has advertisements for their cranberry juice where they refer to it as having a “sweet-tart” taste. This was allowed, even though “Sweet-TART” is a registered trademark, because Ocean Spray was using the term in the descriptive sense.

Now, if Kirkman were to highlight the word superhero – and make it more noticeable, or jump out on its own, then I think it WOULD be considered a mark of trade.

But here, though, it seems like Kirkman fits within the “descriptive” exception. He is merely describing his work – and please note, as I mentioned above, “superhero” IS a descriptive phrase – it’s just one that has achieved secondary meaning, and therefore eligible for trademark protection. Words/phrases like that are much more likely to allow the “descriptive” exception.

How does this apply or not apply to:

Who Wants To Be A Superhero?

It only applies to products within the categories mentioned above.

Publications, but basically comic books and magazines. Also, cardboard stand-up figures, playing cards, paper iron-on transfers, erasers, pencil sharpeners, pencils, notebooks, stamp albums, and costumes.

So TV shows are okay. Novels and non-fiction books are, too. You’ll find quite a number of books with superhero in the title.

Glad I’m safe – my band (The Franchise) just released a CD with a song called “superhero” as the 1st track…

Oh yeah, totally.

Heck, look at Five For Fighting. That guy had a hit with a song called Superman!!

Which countries does this apply to? Can’t imagine anyone except the US accepting this trademark application.

how can you find out if there is a trandemark on a comic book hero

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