Credit: Matthew Aguilar
The word “Super Hero” was first used in 1917 to describe a “public figure of great accomplishments.” The previously universal use of this term was limited during the 1960s when Marvel Characters, Inc. (Marvel) and DC Comics (DC) came to jointly own the term by filing trademark registrations in a variety of countries, which was first registered in the United States in 1966.
The original agreement declaring trademark rights to Marvel and DC does not seem to be publicly available. However, their agreement demonstrates that only these two U.S. publishing companies could “hold themselves in public and trade as having the exclusive right to use ‘SUPER HEROES’ and variations thereof as trademarks and service marks for its products and services.” Since these trademarks were registered on the Principal Register of the U.S. Patent and Trademark Office, the trademarks were incontestable per 15 U.S.C § 1065.
This created difficulties for many competing publishers, as “Super Heroes” are common to see portrayed by many different companies. As such, Marvel and DC spent much of their time over the last eighty years combatting and initiating lawsuits to protect their trademark.
These battles, however, have officially come to an end. On September 26, 2024, in Sugarbabies Limited v. Marvel Characters, Inc. and DC Comics, the U.S. Patent and Trademark Trial and Appeal Board ruled that the motion for default judgment would be granted because the Respondents (Marvel and DC) had not timely responded to the petition filed against them.
Trademark Rule 2.127(a) states, “If a Respondent fails to file an answer to a complaint during the time allowed, the Board, on its own initiative, may issue a notice of default allowing the Respondent time to show cause why default judgment should not be entered against it. The issue of whether default judgment should be entered against a Respondent for failure to file a timely answer may also be raised by means of a motion filed by the Petitioner. In such cases, the motion may serve as a substitute for the Board’s issuance of a notice of default.”
As a consequence, Registration Nos. 1179067, 1140452, 3674448 and 825835, which included the term “Super Heroes,” were canceled by the Commissioner for Trademarks. Therefore, this term and its variations are now available for public use, which may include T-shirts, toy figurines, costumes, and publications, such as comic books. Notably, Registration 5613972 is still active, which pertains to animated movie production and distribution. Marvel and DC may try to appeal the decision to regain the trademark but have not taken steps to do so at this time.
This ruling allows anyone to use the term “Super Hero” without the risk of a lawsuit, as the phrase is now essentially in the public domain. This will be especially pivotal for writers seeking to use the mark to describe a character or create a comic series. Writers now have the liberty to clearly describe their creative works without the need to skirt around the term “Super Hero.” The availability of this mark could lead to an influx of the term’s use for marketing and innovation purposes. Additionally, there will likely be an influx of independent creators exploring the superhero genre, resulting in increased competition and creativity in the space. This decision is a win for creatives that have been held back by Marvel and DC’s restrictive trademark. Creatives are now able to explore the genre and further expand the landscape of superhero storytelling.
While Marvel and DC no longer have exclusive rights to the term “Super Hero,” it is not likely either company will alter their use of the term. Both companies are still able to use the mark for comics, merchandise, and movies. The difference, however, is that their rights are no longer exclusive and other companies may use these marks as well. Despite this monumental loss, Marvel and DC’s dominance in the superhero space will still likely reign. In an industry known for complex characters and themes, the distinction between originality and imitation is often hazy.
To be clear, the availability of this mark does not allow for the use of any DC or Marvel characters. These characters are still heavily protected by intellectual property laws. Since distinct characters are still protected trademarks, any use or misappropriation of them will expectedly be met with legal action.
Moreover, this decision will likely impact trademark law, particularly concerning terms that have become widely recognized and generic, and whether companies should exclusively control specific terms. While Marvel and DC’s trademark has been challenged by smaller entities previously, this is the first instance where the challenge succeeded. This decision reiterates that over time, even the most iconic of terms can become fair use. Courts must now decipher how to manage intellectual property rights for terms that have become ingrained in popular culture.
All things considered, the ruling canceling Marvel and DC’s “Super Hero” trademark will greatly impact the entertainment industry. While Marvel and DC will assuredly remain the prominent publishers in the superhero world, the publishers’ duopoly on the term “Super Hero” has ended.
*The views expressed in this article do not represent the views of Santa Clara University.
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