The basis for DC and Marvel’s challenge comes from their co-ownership of the trademark for “superhero.” While they own the mark chiefly for use in connection with publications, they have challenged other uses of the mark. Notably, however, DC and Marvel have yet to pursue a legal challenge to its end in court. Many legal experts contend that it may have to do with a fear of a precedent judgment against them.
Undoubtedly many small business owners may use the phrase in connection with goods or services Marvel and DC do not care about. Instead, it is the use with goods or services that are reminiscent of DC or Marvel’s most famous superheroes (i.e., intellectual property), that courts the attention of the comic book giants. Using the mark without any attempt at registration may buy them some time, but building goodwill with a mark takes time and money; as such, small business owners should avoid such use. Moreover, if the business owner has interest in using a design mark, they should not rely on designs that are similar or reminiscent of any superhero persona. Many superheroes have signs or symbols that represent them, and to use these symbols (or confusingly similar ones) could be against trademark law and courts would find it to be unfairly profiting off the goodwill built by Marvel and DC.
While some may argue that Marvel and DC may be overstepping by claiming complete ownership of the “superhero” term, others can also argue that it would be unfair for some businesses to use the popularity of superheroes to appeal to kids or a certain niche audiences.
While it remains to be seen how these trademark battles will play out, counsel should advise clients against using “superhero” in a manner that would be deemed confusingly similar to DC or Marvel’s holdings.
