The Details of the Case
The case began when Scott Richold, a comic book writer and the creator of a series called “Super Babies,” found himself in a legal battle with DC Comics. Richold’s company, Superbabies Ltd., was producing stories about a team of superhero infants, and his company had applied for its own trademarks in the United States to protect its intellectual property.
DC Comics accused Richold of infringing on their “Super” trademarks. They argued that the use of the word “Super” in “Super Babies” could potentially confuse consumers and dilute the distinctiveness of their own “Super Hero” trademarks, which they shared ownership of with Marvel. In response to this, Richold’s legal team fought back, filing a petition in May 2024 to have the “Super Hero” trademarks canceled, arguing that the term was too generic to be exclusively owned by any company.
Marvel and DC's "Super Hero" Trademarks: A Historical Background
Neither Marvel nor DC coined the term "Super Hero," but this did not impact their ability to secure the trademark for it. The history of the "Super Hero" trademark begins in 1967 when Ben Cooper, Inc., a company known for selling Halloween costumes of popular comic book characters, became the first to register the term as a trademark specifically for costumes. Ben Cooper recognized the potential commercial value of the word and wanted to protect it early on.
In 1972, Mego Corporation, a leading toy company at the time, attempted to register the phrase "World’s Greatest Superheroes" for its line of action figures featuring characters from both Marvel and DC. Ben Cooper, Inc. opposed Mego’s application, asserting its own prior rights to the "Super Hero" trademark. As the legal dispute dragged on, Mego eventually decided to withdraw from the fight, passing the burden onto Marvel and DC, who had by then recognized the financial opportunities associated with owning the trademark.
Rather than continuing the dispute, Ben Cooper, Inc. withdrew its opposition in exchange for an arrangement that saw the rights to the "Super Hero" trademark transferred to Marvel and DC in the late 1970s. This transfer occurred during the time when both Marvel and DC, facing declining comic book sales, had shifted their focus to profiting from licensing intellectual property, including registered trademarks like "Superman."
By 1979, Marvel and DC secured joint control over the "Super Hero" trademark and continued to expand their rights to other related terms, such as "Superhuman," across multiple categories. This rare collaboration between the two rival publishers gave them exclusive control over the "Super Hero" trademark, making it difficult for other companies and creators to use the term without risking legal action.
Implications of the Ruling
In practice, the ruling means that in an entertainment industry in which the super hero theme has been booming for the last fifteen years, now any individual and business is free to use the term “super hero” in any creation - or merchandise.
Prior to the decision, only DC and Marvel had the right to use “super hero” in connection not only with books and comics, but also with clothing, costumes, toys, candies, and even bedsheets. Now, any company or individual is entitled to explore the term commercially, including in comic books or any products related or unrelated to them.
It is important to note, however, that this permission is limited to the expression “super hero” itself, and it does not extend to any DC or Marvel characters, stories, or settings - which are protected by copyright, not trademark law. The distinction is relevant, as copyright legally protects expressions of human creativity, while trademark law aims to protect words, expressions and images that identify the commercial origin of a product and service.
What that means is that before, DC and Marvel could not, in theory, prohibit the use of “super hero” in the middle of a story or in a song - think of The Chainsmokers and Coldplay’s Something Like This, for example. However, only products, merchandise or publications coming from DC or Marvel could use “super hero” in its label, advertising or name. Now, this restriction has been lifted.
Whether this decision by the USPTO will breathe new life into the super hero industry and inaugurate an ample “super hero” genre or be one more nail in the coffin of the struggling DCU and MCU, however, remains to be seen.
