If I Can’t Be a Superhero, Can I Use It As a Trademark?

Brooklyn. 1967. Ben Cooper, Inc. registers SUPER HERO for masquerade costumes.[1]

Meanwhile, in neighboring Manhattan . . .

Mego Corporation tries to register WORLD’S GREATEST SUPER HEROES for dolls.

Kablam!!!!!!

Ben Cooper leaps into action to oppose Mego’s application.

Weakened and unable to fend off Ben Cooper, Mego transfers its application to Marvel Comics Group.

Kerpow!!!!!!

Marvel emerges victorious and receives a registration.

Chicago. September 1982. Someone laces Tylenol tablets with potassium cyanide. Seven people die. With Halloween approaching, parents across the country fear tampering with treats and keep their kids home. Ben Cooper suffers as sales of costumes plummet. Weakened and close to death, Ben Cooper assigns its SUPER HERO registration to Marvel and DC Comics.

Recognizing that they are stronger sharing their SUPER HERO trademark rights, Marvel and DC transfer registrations they each own for SUPER HERO to joint ownership.[2]

Today, they continue to jointly own six live registrations for SUPERHERO for T-shirts, comic books, production services, and toy figures.[3]

The Trademark Office is strewn with the corpses of 200+ SUPER HERO applications and registrations for everything from slot machines and legal services to explosives and insecticides.

It seems nothing can stop the combined might of Marvel and DC.

But wait . . .

More recently, applications have been slipping through without even an opposition from Marvel and DC. There are now registrations for marks containing SUPER HERO for chiropractic services, fortunetelling, and even one for capes and T-shirts.

Have Marvel and DC lost their will to fight? Will Marvel and DC ever again rule the SUPERHERO trademark world? Tune in next time . . .

 

Big shout out to Bill B., for suggesting this topic! What do you want to know about?

 

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[1] Even if you’ve never heard of Ben Cooper, Inc. you’ve probably worn one of its costumes. In its heyday, Ben Cooper, Inc. produced kids’ Halloween costumes under licenses from companies like DC Comics, Mattel, The Children’s Television Workshop, and Disney.

[2] How can competitors co-own a registration? How does that work? Stand by for a post on that crazy issue coming soon to a blog near you.

Here are the SUPER HERO trademarks that DC and Marvel transferred to each other at the end of 1986:

Mark App Date Goods & Services Original Owner Status
SUPER HEROES 1982 Entertainment services DC Dead
SUPER HEROES 1982 Cookies Marvel Dead
SUPER HEROES 1981 Soap DC Dead
SUPER HERO 1980 Cake pans Marvel Dead
SUPER HEROES 1980 Games Marvel Dead
SUPER HEROES 1980 Linens DC Dead
SUPER HEROES 1980 Tote bags DC Dead
SUPER HEROES 1979 Comic books Marvel Live
SUPER HEROES 1976 Belts DC Dead
SUPER HEROES 1974 Toys Marvel Live
WORLD’S GREATEST SUPER HEROES 1972 Dolls Marvel Live

[3] Marvel and DC also co-own an application for SUPERHERO for entertainment services, but that application has been suspended since 2010 pending the disposition of an application for SUPERHEROE for entertainment services owned by Raynaldo Garza, which itself is subject to several office actions that refuse to register, in part because of registrations owned by Marvel and DC.

Each also individually owns registrations that include SUPERHERO. For example, Marvel owns MARVEL SUPER-HEROES.

Over the years, they have also jointly taken ownership of these applications and registrations following disputes:

COMPUTER SUPER HEROES Computer services Onetech Computer Consulting, Inc. Live
SUPERHEROES OF SERVICE Telecom services Glenwood Telecom Live
SUPERHERO Ice cream Driggs Farms Dead
SUPERHERO SCHOOL Educational services Philip and Noah Margo Dead

 

Skeletons in the Closet

It’s recently become legal to register a disparaging trademark but that doesn’t mean disparaging trademarks are new. Whether it’s the Washington Redskins®, Aunt Jemima®, or the Land O’Lakes® logo, lots of troubling marks have been around for a while* and are still blithely swimming in the deep end of the offensive pool.

IMG_1916.jpgScotch® was first registered for tape in 1948. The name originated from the offensive idea that people of Scottish descent are all thrifty

3M’s advertising even included comic strips featuring the embarrassing and creepy Scotty McTape who assured us that “It’s ‘Scotch’ brand! That’s the very tops — in thrift and quality.”

Darlie_toothpaste_over_the_year.jpg

Colgate Palmolive currently sells DARLIE brand toothpaste in Asia but, in 1985 when it acquired the brand from Hawley and Hazel, it was DARKIE brand and the picture on the box depicted an image inspired by Al Jolson in black face.

While the change to DARLIE and the new image on the box is an improvement, the Chinese characters on the box still translate to “black person.”

IMG_1933.jpgNestlé® has updated the mascot to make it a bit less offensive, but maybe they should think about getting rid of it altogether along with word mark ESKIMO PIE, which some natives of Alaska, Canada and Greenland find offensive.

Companies find it hard to give up what they perceive as a valuable brand but I wonder it they aren’t clinging too long to offensive words and imagery at the risk of losing customers.

 

Big shout out to Max F. for suggesting this topic.

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*Some disparaging marks predated the prohibition against registering them under the Lanham Act in 1946. Others simply weren’t considered disparaging at the time.

The image of “Darlie toothpaste over the year” is used under Creative Commons Attribution-Share Alike 4.0 International license from Thomaschiou.