How DC and Marvel lost their “Superheroes” shield

Superbabies Limited (“Superbabies”) creates comics called “The Super Babies,” featuring a team of superhero babies. On May 14, 2024, Superbabies filed a heavily animated petition (“Petition”) to cancel the marks SUPER HERO (U.S. Reg. No. 8,25,835) and SUPER HEROES (U.S. Reg. Nos. 1,179,067; 1,140,452; 3,674,448) jointly owned by DC Comics (“DC”) and Marvel Characters, Inc. (“Marvel”) on the grounds that the marks have been abandoned and have become generic.

Superbabies’ “Comical” Petition

The Petition came in the wake of DC’s opposition to Superbabies’ applications for the design mark SUPER BABIES (U.S. Serial No. 97/490,693), the design mark ICONIC EARTH STUDIOS PRESENTS…THE SUPER BABIES (U.S. Serial No. 97/490,733), and the word mark SUPER BABIES (U.S. Serial No. 97/490,673) for, among other things, “Printed comics; Printed picture books” in Class 16 and “Infant toys” in Class 28.  In addition to opposing Superbabies’ applications, the Petition alleged that DC also “threatened further legal action.”[1] Notably, DC did not assert its SUPER HERO registrations in its opposition, and instead based its likelihood of confusion claims on its prior registrations for SUPERMAN, SUPERWOMAN, SUPER-PETS, and other SUPER-formative names.[2]

The Petition characterized DC and Marvel’s joint ownership of the SUPER HEROES and SUPER HERO trademarks as an attempt “to stifle competition and exclude others from the marketplace.”[3] This strategy, Superbabies argued, “is ripped straight from their own supervillains’ playbook[,]” citing to particular comics featuring Dr. Doom, Kingpin, the Joker, and Headmaster Mind.  “It is time for DC and Marvel’s villainous reign to end[,]” the Petition stated.

Substantively, the Petition argued that consumers understand the terms SUPER HERO and SUPER HEROES to refer 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 super hero stories or characters.”[4]  Superbabies illustrated numerous examples of the use of the term “Superhero” or “Superheroes” in connection with comics, toys, and clothing.[5] Superbabies also alleged that DC and Marvel’s own use of the mark in a non-source identifying manner confirms that it is generic.[6]

The Petition also alleged that, as competitors and rivals, DC and Marvel cannot jointly own trademarks because “[c]onsumers do not view Marvel and DC as a single source of goods, but as distinct companies with ‘different publishing philosophies’ and ‘completely different worldviews.’”[7] Allowing joint ownership by fierce competitors of these marks, the Petition claimed, “is antithetical to the foundational purpose of trademarks, which is to associate a mark with a single source of goods.”[8]

The TTAB unmasks SUPER HEROES

On June 14, 2024, Marvel and DC filed a consent motion to extend their time to respond to the Petition, and entered their appearances a few days later. Despite extending their answer deadline, neither Marvel nor DC answered or otherwise responded to Superbabies’ Petition. On August 9, 2024, Superbabies filed a motion for default judgment against Marvel and DC, requesting cancellation of the challenged SUPER HERO and SUPER HEROES registrations for failure to answer. The TTAB granted the motion on September 26, 2024, and the registrations were cancelled that same day.

In the past, Marvel and DC have cited to their SUPER HERO and SUPER HEROES registrations to challenge a number of SUPER HERO-formative applications before the United States Patent and Trademark Office. Their non-response to the Petition was not only unexpected, but a plot twist worthy of a comic book cliffhanger, and proof that even the mightiest trademarks can lose their superpowers.

[1] Superbabies Limited v. Marvel Characters, Inc. and DC Comics, Trademark Trial and Appeal Board, Cancellation No. 92085201 at 8 (2024).

[2] DC Comics v. Superbabies Limited, Trademark Trial and Appeal Board, Opposition No. 91290757 at 4 (2024).

[3] Superbabies v. Marvel, at 2.

[4] Id. at 9.

[5] Id. at 11-15.

[6] Id. at 19-20.

[7] Id. at 29.

[8] Id. at 29 (emphasis in original).