Joint Marvel, DC Trademark of 'Super Hero' Canceled Amid Challenge by Creator of 'Superbabies'
Attorney Adam Adler petitioned for cancellation of Marvel and DC Comics' trademarks, contending the "super hero" terms were generic. "What Marvel and DC were doing is really just the opposite and contrary to the values of their own heroes," he said.
September 30, 2024 at 03:25 PM
By Michelle Morgante
What You Need to Know
- London-based Superbabies Ltd. challenged the comic giants' "super hero" trademark.
- The cancellation came as part of a default judgment from the USPTO.
- A challenge over "super" as a trademarked prefix is still pending.
It's been said that superpowers aren't required to be a superhero. Now, a trademark challenge brought on behalf of a children's book author means that permission from Marvel or DC Comics is no longer required, either.
The U.S. Patent and Trademark Office's Trademark Trial and Appeal Board in Alexandria, Virginia, last week canceled Marvel Characters and DC Comics' joint registrations on the terms "super hero" and "super heroes." The board issued a default judgment after the respondents failed to file an answer to the petitioner's motion.
Adam Adler, an intellectual property attorney with Reichman Jorgensen Lehman & Feldberg in Washington and a longtime comics fan, successfully challenged the trademark registrations on behalf of SJ Richold, an author and artist whose book series featuring characters called "the Super Babies" prompted the clash.
Jonathan Reichman of Hunton Andrews Kurth in New York, who represented Marvel and DC in the dispute, did not respond to a message seeking comment. Messages sent to the two Burbank, California-based entertainment companies were not answered.
Adler filed a petition of cancelation on behalf of Richold's London-based company Superbabies Limited.
"Superhero stories teach us to stick up for the little guy, so it's only fitting that the liberation of SUPER HEROES would come at the hands of The Super Babies — the littlest of them all," Richold said in a statement to The Recorder. "My hope is that this victory will encourage smaller companies to share their stories with the world and to stand up for what they believe in."
DC and Marvel's co-ownership of the marks dates back decades, when they bought the "super hero" term from a costume manufacturer, Adler told The Recorder. After Richold, who lives in Australia, attempted to register his Super Babies books in the U.S., he received a cease-and-desist letter in July 2021 asserting Marvel and DC's rights to the terms.
"To most people, including myself, this is crazy talk," Adler said. "You don't own the idea of super heroes. The idea of super-powered people is a trope in comic books. If you look around the comic space, you see 'super' everywhere."
Adler said he joined the case in early 2022 after Richold spotted an article he'd written about Marvel and DC's unusual arrangement to share trademark registrations despite being competitors. In a 2018 column for Escapist Magazine, Adler noted a "powerful challenger" was needed to free superheroes "from their (registered trademark symbol) shackles."
The joint ownership of the trademarks was "very peculiar," Adler said in an interview Friday, "because DC and Marvel are the biggest competitors in the space." By co-owning a mark "they are claiming that Marvel and DC can use 'superheroes' and nobody else can, which is baffling when you consider that the purpose of a trademark is to be a sole source identifier."
The petition contended that, as competitors, the two could not jointly own a trademark.
"The fact that Marvel and DC both use and claim ownership over SUPER HEROES confirms that neither company uses the term as a trademark, but rather as a generic description for a category of goods offered by both companies," it said.
In his petition, Adler also argued that "super hero" is a generic term describing a character archetype and a genre of stories.
"Consumers do not associate 'super heroes' with any single brand, company or character," it said. "Instead, consumers understand that the term refers to a broad category of stories and characters tied together by common themes and conventions."
The petition pointed to multiple examples of works by creators unrelated to Marvel or DC. It also contended that, by failing to use the terms as trademarks, the companies had abandoned the registrations.
Over the years, the companies had pushed back on multiple creators who wished to use a variation of the superhero terms, Adler said. But, he noted, such opposition was not consistent. Marvel and DC were selectively enforcing their trademarks against independent creators and small operations that were unlikely to have the resources needed to engage in a legal fight—"only against the people who they had good reason to think wouldn't fight back," he said. By doing so, the disputes ended in default judgments.
Richold had the "tenacity and courage" to push back on Marvel and DC because he saw it as something bigger than just standing up for his own work, Adler said. Among the creator community, he added, many artists felt pressured to use euphemisms such as "supers" or "capes" to describe the heroes or risk legal problems or even being blacklisted in the industry.
"He saw the impact it was having, not just on him, but on other creators," Adler said of Richold, "and it's like, enough is enough."
A related matter is still pending: DC claims to have the exclusive right to use the word "super" as a prefix, such as in "Superman" and "Supergirl." DC is using this purported "super family" of marks to block Richold's efforts to promote "Superbabies." Adler believes cancelation of the "super hero" marks strengthens his client's position.
"We're confident about our chances for this one. I'll say that," he said.
As a longtime fan of comic super heroes, Adler said he was excited the case gave him the opportunity to stand up for a fight that he believes would align him with the Marvel and DC heroes, pointing to several comic book plotlines where villains attempted to claim ownership of "super hero" language and likenesses, such as an issue where the villain Kingpin told Peter Parker he could no longer be a superhero because he'd secured ownership of Spider-Man's likeness.
"What Marvel and DC were doing is really just the opposite and contrary to the values of their own heroes," Adler said.
Cancelation of the trademark, he said, could encourage artists to create the works they wish to create.
"Hopefully other people will see it and say, 'Yeah, you've got a big bark and they're a big corporation with a lot of machinery behind them. But if you're right, you can still compete,'" he said. "You don't have to be a billion-dollar multinational conglomerate to tell a superhero story, right? You just need a pencil, some ink, a spark of creativity, and then you can go out there and do it."
Editor's Note: This story was updated on Oct. 1, 2024 to add Richold's statement to The Recorder.