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As recently reported — see Reuters media report here — the Trademark Trial and Appeal Board of the U.S. Trademark Office office has canceled the trademark registrations for a set of “SUPER HERO” trademarks, at least one of which dates to the mid-1960s. According to the media reports, these trademarks are jointly owned by the Marvel and DC Comics companies. Marvel is owned by the Disney Company, and DC Comics is owned by Warner Brothers. The cancellation proceedings were initiated by the company owned by a London-based comic book artist named S. J. Richold. Richold writes books and comic books detailing the adventures of the Superbabies. Richold, through his company, applied to register SUPERBABIES as a trademark here in the United States.
In the past, Marvel/DC routinely opposed any trademark registration application that involved the word HERO associated with trademark Classes for comic books, films, books, etc. Generally, the arguments were that the proposed trademark was confusingly similar to the trademarks owned by Marvel/DC. Rather than wait for Marvel/DC to file Opposition to Richold’s application, Richold seized the initiative and filed a request with the TTAB to cancel the Marvel/DC registrations. See Superbabies Ltd v. Marvel Characters Inc, TTAB Cancellation No. 92085201. As noted, the strategy succeeded. The TTAB canceled the Marvel/DC registrations.
Interestingly enough, the TTAB’s decision was based on the failure of Marvel/DC to respond to the cancellation proceedings started by Richold. When a cancellation proceeding is filed, certain deadlines are imposed for a response from the owner of the trademark in question. Failure to respond in a timely manner can result in a default judgment being entered. It appears that is what has happened in the Superbabies case.
There are several legal lessons that can be learned from the Superbabies case. These include:
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The SUPER HERO trademarks held by Marvel and DC Comics had been registered since at least the mid-1960s and were jointly owned through a co-ownership arrangement between the two companies — an unusual structure in trademark law that reflected their mutual interest in controlling the term within their shared market. For decades, Marvel and DC actively policed these registrations, opposing any trademark application that used the word HERO in connection with comic books, films, games, or related entertainment categories. The strategy worked because most applicants, facing opposition from two of the largest entertainment companies in the world, abandoned their applications rather than litigate.
That enforcement posture created the conditions for the Richold/Superbabies cancellation proceeding. A party that can demonstrate that a registered trademark has become generic — meaning that it is now understood by the relevant public as the common name for a category of goods or services rather than as an identifier of a specific commercial source — has grounds to cancel the registration under 15 U.S.C. § 1064. The argument available to Richold was that SUPER HERO, after sixty years of widespread use in commerce by everyone from Marvel and DC to countless other publishers, filmmakers, and merchandise producers, had become the generic term for a category of fictional character — not a source identifier for Marvel’s or DC’s specific products.
The actual basis for the TTAB’s cancellation in Superbabies Ltd v. Marvel Characters Inc, TTAB Cancellation No. 92085201, was procedural: Marvel and DC failed to respond to the cancellation proceeding, and the TTAB entered a default judgment. This outcome is not as rare as it may seem in TTAB practice. Large companies with extensive trademark portfolios often manage TTAB proceedings through outside counsel, and TTAB docket management can fall through the cracks during counsel transitions, corporate restructuring, or shifts in litigation priority. The TTAB does not provide informal extensions or warnings — deadlines are firm, and failure to meet them results in default.
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