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:
- Fight for your trademark if you really want it — if you really want your trademark, you do NOT have to concede defeat just because a trademark owner claims infringement or threatens to file an Opposition with the Trademark Office
- Do not be intimidated by trademarks that have been around for decades — that may work to your advantage since the trademark (particularly a word or phase trademark) may have become common, generic, or the commonly understood name for an industry or a type of goods/services; remember that ZIPPER used to be a trademark until it became the word for a type of fastener
- Cancellation Proceedings can be dangerous for trademark owners
- Trademark owners MUST respond and reply to proceedings filed with the TTAB — proceedings filed with the TTAB must be taken seriously, as seriously as proceedings filed in federal and other courts; failure to respond to complaints and petitions can result in default judgments
- Consider starting Cancellation Proceedings if threatened with Opposition — initiating a Cancellation Proceeding is an aggressive strategy that can pay enormous dividends; of course, whether it will succeed depends on the facts of the case, and you cannot expect that the other side will fail to respond
Contact the Trademark Attorneys at Revision Legal
For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
