The Fall of SUPER HERO: When Trademarks Become Generic

For more than half a century, Marvel Comics and DC Comics have jointly owned the trademark ‘Superhero.’ However, the Trademark Trial and Appeal Board recently granted a petition to cancel that mark because it became generic. Scott Hervey and James Kachmar discuss this case and how marks become generic on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel.

Show Notes:

Scott:
Since as early as 1967, Marvel Comics and DC Comics have jointly owned the trademark ‘Superhero’, covering a variety of goods, including comic books, action figures, and T-shirts. Most people, myself included, didn’t know that Marvel and DC owned this trademark, and their reaction to this tends to be the same. How could Marvel and DC own a trademark for Superhero? Well, that reaction is essentially the reason why the Trademark Trial and Appeal Board granted a petition to cancel that trademark because that mark became generic.

I’m Scott Hervey from Weintraub Tobin, and I’m joined today by frequent Briefing contributor James Kachmar. We’re going to talk about this case, what are generic trademarks, and what happens when a trademark becomes generic on today’s installment of The Briefing? James, welcome back to the briefing. It’s good to have you back to talk about generic trademarks.

James:
Thanks for having me, Scott. I think this is going to be a really interesting discussion, especially since it’s involving heroes.

Scott:
No, I agree. Let’s get some background on this super dispute. There are a few interesting factual tidbits that I haven’t seen out there in this widely reported case. The case is Super Babies limited versus Marvel Characters, Inc. Super Babies Limited is a comic book publisher, and they petitioned the Trademark Trial and Appeal Board to cancel the trademark superhero. But this isn’t the first time that Super Babies and Marvel or DC have squared off. It seems that since 2021, DC comics had filed numerous petitions with the Trademark Trial and Appeal Board to oppose the registration of the Trademark Super Babies on the grounds that the mark conflicted with with various other DC trademarks, including Superboy, Superman, Supergirl, Super Friends, but interestingly, not superhero. It appears that Super Babies found some kryptonite and decided to go after the SuperHero and Superheroes trademark registrations. In all seriousness, Super Babies legitimately argued that it’s next to impossible to publish comic books about heroes without Baby being able to refer to as Superheros.

James:
Right, Scott. The key argument in the Super babies petition was that the superhero marks have become generic. The petition alleges that superhero is a generic term used in connection with stories about heroes, their characters and products, and that the term refers to a stock character archetype, Superheros, in a genre of stories that features the archetype and its associated tropes, i. E. The Superheros genre. Super Babies argues that consumers do not associate Superheros with any single brand, company, or character. Instead, consumers understand that the term superheroes refers to a broad category of stories and characters tied together by common themes and conventions, as well as to products that relate to or feature superhero stories or characters. Super Babies introduced evidence showing that superhero, as understood by consumers, refers to a general category of stories and characters rather than a particular or specific source of goods.

Scott:
Yeah, it was a very well-drafted and interesting petition to read. As a matter of fact, creative, I would say, too, because it included excerpts to certain DC comic issues that that help them make their point. But let’s take a step back and let’s talk about what a generic trademark is. In US trademark law, a generic mark refers to a term that the public primarily understands as the common name for a product or service rather than a name that identifies its source. For example, if I call my brand Apple and I sell apples, well, that’s a generic use. The term is already widely associated with a specific type of product, in that case, the fruit apple. I can’t claim exclusive rights to the trademark apple for apples as a trademark. The USP EBTL will refuse to register a generic trademark on both the principle and the supplemental register.

James:
Right, Scott. A mark can’t be protected under trademark law if it’s considered generic because generic terms can’t function as trademarks because they don’t distinguish the products or services of one company from another. They simply describe the product itself. On the other hand, if you were to, instead of selling Apple, sold computers or phones and called them Apple, that could be subject to trademark protection because the term is no longer generic. It doesn’t necessarily describe the product you’re selling.

Scott:
Right. Agreed. That mark would be probably considered a distinctive mark and highly protectable. So let’s talk about what happens if a trademark becomes generic over time because a trademark can start off strong. You and I were talking before we started taping about this superhero’s trademark. And way back in 1967, it probably wasn’t widely used. And at that point in time, maybe it was distinctive of the DC comic books and the products and services that they filed the trademarks for. A trademark that was once strong can lose its protection. This is called genericide. James, you wrote an article about this back in 2017 when you reported on Google successfully fending off a genericide attack against its trademark, Google.

James:
That’s right. Genericide is one of the biggest risks for a well-known brand. When the public starts using a trademark as the generic name for a product category or service, the brand risks losing its trademark protection. Classic examples of this include the words like aspirin, escalator, or thermos. These started out as trademarks but became generic over time because the public used them to describe the entire category of products rather than a specific company’s product. Could you imagine if Google loses its trademark rights as to its mark Google due to the prolific use of googling as a verb to describe the act of searching the internet?

Scott:
Yeah, that would be horrific for Google. I guess we can add now superhero to the list of Mark that have become generic over time. Given that the risk of having a trademark become generic is the loss of its trademark rights, the loss of the exclusive right to use the mark in connection with goods or services, and the ability for competitors to use that mark in connection with their goods as describing the function of their goods, it’s a big deal. Once a trademark is deemed generic, it’s no longer enforceable. As I said, competitors can start using that same term to describe their products, and that can dilute a brand’s identity and value. It can be incredibly damaging, especially for companies that have invested millions of dollars in building their brand.

James:
Yes. Imagine spending years and millions of dollars building brand recognition, only to lose it because your trademark has become so ubiquitous that it becomes generic. Let’s talk about steps that companies can take to prevent this from happening, Scott.

Scott:
Sure. That’s a good idea. There’s a few key strategies companies can implement to prevent genericide. First, they need to consistently remind the public that their trademark is a brand name and not a product category or a verb. This can be done through proper use in marketing and advertising. For example, you’ll often hear companies say things like, Use Kleenex brand tissues instead of just Kleenex.

James:
Right. Second, companies should actively monitor how their trademark is being used by consumers, the media, and even competitors. If they notice misuse of their trademarks, like people using the brand name generically, they need to take some type of action, sometimes even just issuing a public correction.

Scott:
Another important tactic is using trademarks with a generic descriptor. Instead of saying, as I said, use Kleenex alone, you would say, Use Kleenex Tissues. This helps separate the brand name from the product category.

James:
Right. Companies can also educate consumers through marketing campaigns, in some cases, seeking court orders to enforce the proper use of their trademarks. In extreme cases, some companies even engage in litigation to prevent competitors from using their brand name in a generic sense. It takes a lot of effort to safeguard a trademark, but the downside of losing trademark rights would seem to justify that effort in most cases, especially the amount of money and time companies spend in building their brands.

Scott:
Yeah, I agree with you on that, James. One last point, in addition to educating the general public, it’s also important to educate your internal team, your marketing department, your customer service reps, and even the legal team. They need to be vigilant about proper trademark usage.

James:
Totally agree, Scott.

Scott:
James, thanks for joining me to talk about this super important trademark case and shedding light on the risks of generoside and how to prevent it. I’m sure our listeners will appreciate these insights.

James:
Thanks for having me, Scott.

Scott:
That’s all for today’s episode of The Briefing. Thanks to James Kachmar for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share the episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.