Posts by Rachael Dickson

Quick Question: Which of these words are currently federally registered trademarks in the US?

Here’s a hint. All of these words WERE federally registered trademarks at one point, but only eight of them still have active trademark registrations (you can find the full answer to this at the bottom of the post).

What’s going on here? Sometimes, when a company’s product becomes extremely popular and dominates its industry, consumers begin to use the product’s trademark as a generic term for the product itself. This can  give a trademark owner an aspirin-worthy headache, as they can lose their legal rights to the trademark itself if generic use of the trademark becomes common enough. Nobody wants their trademark rights to be thrown in a dumpster!

Trademarks are intended to distinguish and identify a *single* source of goods; if that term is being used by consumers to refer to any products of that type, then it’s clear as cellophane that it’s no longer being used as a trademark. This makes the trademark registration vulnerable to a cancellation action at the Trademark Trial and Appeal Board on the basis of its loss of source-identifying ability. If a trademark registration ceases to be a trademark due to widespread generic use, it’s considered the victim of “genericide.” This has happened in the past with trademarks such as Escalator, Trampoline, and Dumpster.

Trademark Owners can reduce the risk of their trademarks taking an escalator ride down in source indicating value in a number of ways: 

First, trademark owners can avoid using their marks in a generic manner. Instead of referring to their products as a noun (“Kleenex”) or a verb (“Go Xerox this document”), they can use their product names as adjectives and include the registered trademark symbol (“Kleenex® tissue” and “Xerox® copier”). Many trademark owners take this further by adding “brand” after their trademark as well. Johnson & Johnson, the owners of the Band-Aid trademark, changed the words of its 1975 jingle “I’m stuck on Band-Aid” to “I’m stuck on Band-Aid® brand” in the 90s.

Second, trademark owners can educate the public as to the appropriate use of their trademarks. Velcro IP Holdings, the owner of the Velcro trademark, did this humorously back in 2017 when they released a “We are the World” style video called “Don’t Say Velcro,” which told customers “if you call it ‘Velcro,’ we're gonna lose that circled ‘R.’” Kleenex also played with this concept in an Instagram post stating “The lawyers of Kleenex thank you for saying Kleenex® Brand Tissue.”

Finally, trademark owners must enforce their trademark rights against others using their trademarks generically. Google has done this by challenging internet domain names incorporating the word “google” in them as a form of cybersquatting and objecting to the Swedish Language Council’s addition of the word “ogooglebar” (meaning “ungoogleable”) to its lexicon.

All of the above actions can help a trademark owner keep their trademark flying high as a Frisbee branded flying saucer! 

Having a great trademark team can help too. Reach out to Lloyd & Mousilli if you need help.

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Answer:

All the marks on Lines 2 and 4 are still federally registered trademarks.
All the marks on Lines 1 and 3 were federally registered trademarks that have since lost their trademark protection due to genericide.

1. Kerosene, Teleprompter, Escalator,      Cellophane

2. Thermos, Velcro,       Band-Aid,         Xerox

3. Aspirin,       Trampoline,       Dry Ice,         Dumpster

4. Frisbee,       Google,               Kleenex,           Bubble Wrap

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Fun fact: There’s so much confusion around what “generically” used trademarks are still registered that several lists online are incorrect! I had to double check each one of these on the trademark register to ensure these answers were all correct. Wherever there is a live trademark registration still connected to the term, I’ve linked to the record.

Did you know that SUPER HERO has been a registered trademark for “masquerade costumes” since 1967?

Under US trademark law, you’re not supposed to be able to get trademark protections for generic terms that name a type of product. Merriam-Webster Dictionary defines “Superhero” as “a fictional hero having extraordinary or superhuman powers.” Every costume store out there has a “superhero” section, and consumers clearly perceive the term as referring to a type of character. So all in all, the existence of this registration doesn’t really make any sense.

It appears that even the USPTO itself doesn’t recognize “Superhero” as a registered trademark. Although the trademark office bars the inclusion of a third-party registered mark in a trademark registration’s identification of goods/services, a quick search of the trademark register indicates that there are several trademarks registered with costumes or costume-related goods with “superhero” in the identification.

For example, Reg. No. 5436451 OPPOSITE OF FEAR is registered with “Costumes for use in children's dress-up play or role-playing games, namely, superhero themed and animal themed costumes” in Class 25 and “Toy and novelty masks and costuming accessories in the nature of . . . novelty superhero equipment, namely, masks, headbands, and eyepatches” in Class 28.

What’s even weirder about the SUPER HERO registration is that it is jointly owned by Marvel Characters AND DC Comics – noted long-time competitors in the superhero comic, costume, and film business. A trademark fundamentally identifies a single source of goods/services; competitors simply cannot jointly own a trademark, as that would defeat the entire point of even having it. If two such different and competitive companies such as Marvel and DC “jointly” own a trademark for SUPER HERO, that indicates that consumers cannot possibly view SUPER HERO as being a single source indicator for either of them. This only further supports the conclusion that consumers view SUPER HERO as a generic term referring to characters, stories, and related products in the superhero genre.

Astoundingly, Marvel and DC also jointly own:

‍SUPER HEROES for Class 28: “Toy figures” (registered since 1980)

‍SUPER HEROES for Class 16: “PUBLICATIONS, PARTICULARLY COMIC BOOKS AND MAGAZINES AND STORIES IN ILLUSTRATED FORM” (registered since 1981)

‍SUPER HEROES for Class 25: “t-shirts” (registered since 2009)

Incredibly, all of these marks were registered on the principal register without even a 2(f) acquired distinctiveness statement, which is usually required for descriptive marks to register on the Principal US Register. Such a statement declares that the descriptive mark has gained secondary meaning and has become well-known enough that consumers recognize it as a source indicator. The absence of any 2(f) statement on any of the SUPER HERO/ES marks indicates that the USPTO never treated these marks as descriptive. Given the undoubted genericness of the word, this is as unbelievable as most 60s supervillains’ schemes!

How did this happen? Unfortunately, trademark prosecution records are limited for marks which were registered prior to 1984, so we don’t know for sure. Although we can easily see the registration certificates issued in the 1967, 1980, and 1981 SUPER HERO/ES trademarks, we can’t tell just by looking at the US Trademark Register records whether the USPTO ever issued any refusals against the marks before ultimately registering them. The only refusal ever issued in the registration for “t-shirts” related to the merely ornamental presentation of the term on a specimen submission, which the applicant easily overcame.

Regardless of how these trademarks ever registered, the validity of these trademark registrations is now being challenged at the Trademark Trial and Appeal Board by Superbabies Limited, which filed a Petition for Cancellation against the marks based on their genericness and abandonment back on May 14, 2024.

The petition used the registrants’ own creative works against them, stating “DC and Marvel’s strategy is ripped straight from their own supervillains’ playbook,” and including excerpts of storylines relating to use of legal mechanisms to shut down heroic work from Fantastic Four, Ultimate Spider-Man, Batman, and Justice League of America comics. It also includes such mic-drop worthy lines as “It is time for DC and Marvel’s villainous reign to end. SUPER HEROES belong to the people—they do not belong to Marvel or DC, just as they do not belong to Dr. Doom, Kingpin, or the Joker.”

This cancellation is itself an effort to fight DC Comics’ own attempts to shut down Superbabies’s work. In one TTAB opposition action filed April 04, 2024, DC strongly implied that due to its family of “Super” marks, it had the exclusive right to use “the prefix SUPER followed by a generic term for a human being or group of human beings of various ages.”

Although Marvel and DC Comics filed a notice of appearance and a motion to extend their time to answer to July 24, they have yet to file an answer. Thus, on August 09, Superbabies filed a motion for default judgment canceling the marks.

After 60 years of protecting these marks, why are DC and Marvel giving up now? It’s possible that news articles and commentary covering the cancellation effort persuaded them it was better to let the case go than risk further negative publicity. The rise of social media has led to media companies generally being far more sensitive to public outcry than in the past, which in many cases has resulted in a less litigious and more tolerant approach to their intellectual property rights. This can be most clearly seen in the example of Disney, which used to be known as a fierce protector of its IP; however, in recent years, Disney has been far more lenient towards fan-made works and tributes.

Regardless, it appears that Marvel and DC’s “villainous reign” of trademark control of SUPER HERO will soon to come to an end.

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¹ https://ttabvue.uspto.gov/ttabvue/v?pno=92085201&pty=CAN&eno=1

² https://ttabvue.uspto.gov/ttabvue/v?pno=92085201&pty=CAN&eno=7

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