Did you know that the word 'superhero' is a Trademark in the land of the free?
Via: "Vinay Aravind"
quite a shocker, this.....
THE SUPERHERO TRADEMARK FAQ
by Brian Cronin, Contributing Writer
Posted: March 28, 2006
Long time CBR visitors may be familiar with Brian Cronin's name for the
many creator chats he's done on CBR. While by night he may be our chat
moderator extraordinaire, by day he's a lawyer in New York City. Recently,
there have been a couple of articles about the registered trademark on the
word superhero, co-owned by both DC Comics and Marvel Comics. With that in
mind, we approached Brian about republishing a FAQ on the subject that he
originally published here. Brian was happy to share the FAQ with CBR and
updated it with the latest information for our readers.
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.
quite a shocker, this.....
THE SUPERHERO TRADEMARK FAQ
by Brian Cronin, Contributing Writer
Posted: March 28, 2006
Long time CBR visitors may be familiar with Brian Cronin's name for the
many creator chats he's done on CBR. While by night he may be our chat
moderator extraordinaire, by day he's a lawyer in New York City. Recently,
there have been a couple of articles about the registered trademark on the
word superhero, co-owned by both DC Comics and Marvel Comics. With that in
mind, we approached Brian about republishing a FAQ on the subject that he
originally published here. Brian was happy to share the FAQ with CBR and
updated it with the latest information for our readers.
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.