Generic Super Heroes: Can They Exist?

The term ‘superhero’ would seem, at first glance, to be generic. That is to say, ‘superhero’ may be a word or term used to refer to any caped, masked or costumed crusader who fights crime, whether super powered, inhuman, demigod, or genius playboy billionaire philanthropist. However, the legalities of super heroes are far more nuanced than that. This article discusses the use of ‘super heroes’ in light of the fact that the term is covered by a trade mark right jointly held by Marvel and DC. It discusses the protection that Marvel and DC maintain over their mark, the impact of this protection, the challenge to the validity of the registration which was heard in 2016, and the possibility of a declaration of genericide, which would allow the term superhero to be freely used.


Introduction
A registered trade mark allows the holder of the mark to use that mark as a designation of origin for their goods. The purpose of a trade mark is to give that holder rights to protect the use of a mark which is capable of being represented graphically and distinguishing their goods or services from another (Trade Marks Act (TMA) 1994: s 1). It grants them the right to take infringement proceedings if another party uses an identical or confusingly similar mark on identical or similar goods in the course of trade (TMA 1994: s 10). The two largest comic book and graphic novel producers in the world, Marvel and DC, jointly hold a range of trade marks which cover the term 'super heroes'. In effect, what their successful registration of the term 'super heroes' achieves is to restrict the use of a genre title to the two biggest companies in the industry, and enable them to prevent others from using that term to describe their goods which are similar or identical -their trade mark creates a statutory monopoly on the term. This in turn means that a generic super hero cannot actually exist. This article discusses, primarily from a UK perspective, the purpose and registration of trade marks. It outlines the trade marks Marvel and DC hold on the term, particularly in the UK, and why these are a detriment to the superhero genre. It then moves on to discuss how Marvel and DC have protected their trade marks through legal action and trade mark opposition in both the US and the UK. The article covers the failed challenge to the validity of the registration of the UK trade mark. Finally, the article considers alternative actions for cancellation of the trade mark, applying genericide, before concluding that this could well allow the generic super hero to exist.
A note on terminology: Although the Marvel and DC trade mark cites the term as 'super heroes', for the purposes of this article, the singular 'super hero' and compound 'superhero' and 'superheroes' versions are all used interchangeably. The reasoning behind this is that one of the grounds on which trade mark registrations can be challenged, or trade mark infringement claimed, is the use of a similar mark on identical goods (ie, use of the term 'superhero' on a comic book) where the use of the mark is likely to cause confusion to the consumer (TMA 1994: s 10). Trade mark similarity is certainly a topic for discussion (Setchi, 2016), but it is less relevant to this article specifically. There is doubtless a strong argument to be made that the term 'superhero' is confusingly similar to 'super heroes' and thus Marvel and DC's trade mark opposition encompasses the variety of spellings and plurals of the term 'super heroes'. This article follows the same body of reasoning in assuming that similar marks such as superhero, superheroes, and super hero will fall within the bounds of trade mark similarity.

Trade Mark Purposes
The purpose of trade marks is often debated, with conceptions ranging from the economic purposes of trade mark registration as monopolies (Lunney, 1999) to semiotic analysis of concepts of distinctiveness and dilution (Beebe, 2004). There is a rich O'Connell: Generic Super Heroes Art. 9, page 3 of 23 and deeply interesting history of the development of trade marks, reaching back as far as Ancient China, Egypt, India, Greece, and Rome. Marks on pottery, jewellery, ironwork, bricks, and other craftworkers have all been uncovered in archaeological finds, stretching even to bread found in Pompeii which was stamped with the mark of the baker (Karapapa and McDonagh, 2019, 213). These have been catalogued by Schechter in his seminal work as production and proprietary signs (Schechter, 1925).
Historical development has brought us to the modern-day situation where trade marks are used to indicate goodwill in a particular trader or group of traders, and marks indicate origin, rather than acting as a guarantee of quality (Karapapa and McDonagh, 2019, 215). Thus, the use of a trade mark indicates that goods come from a particular manufacturer or supplier, and that perception will exist in the mind of the consumer also -buying a chocolate bar with 'Cadbury' on the wrapper will bring certain expectations as to provenance of the goods. There is, however, debate whether a trade mark can or should act as a monopoly, as well as whether trade marks protect the consumer or the owner of the mark (McKenna, 2007). In a situation where a trade mark protects the owner of a brand, how does this chime with the encouragement of free competition and avoidance of monopoly situations? Specifically with relation to the mark being discussed, super heroes, how does the restriction of the term to only two comic book producers encourage free competition in a market which is undoubtedly lucrative?
Case law history on registration of trade marks has demonstrated that there is a general judicial unwillingness to grant broad marks, on the grounds that it would create an unfair monopoly. See, for example, Re Coca-Cola Trade Marks (1986), which sought to register a trade mark in the shape of the Coca Cola bottle, its design registration having expired, and British Sugar plc v James Robertson & Sons Ltd (1996), which concerned a trade mark registration in the word 'Treat' for dessert toppings and syrups. Although commentary can be found to argue that the granting of trade marks does not create monopolies (see, for example, Karapapa and McDonough, 2019, 217) and debate stretching back decades on the detrimental effects of monopolophobia (Pattishal 1952), the situation as discussed here is quite different to a standard trade mark registration, given that the term at issue is a genre title, and frequently generically used. It is likely that a trade mark registration submitted at this point on the term super heroes (assuming none already existed) would be denied, as it is insufficiently clear in indicating an origin of goods. Nonetheless, the situation in reality differs for several reasons -primarily because the trade marks at issue are already registered.

Trade Mark Registration
Marvel and DC jointly hold trade mark registrations for the term Super Heroes and variations thereof in several territories. Although the first iteration was registered with the US Patents and Trade Marks Office (PTO), it is also validly registered across the EU. A jointly registered UK word mark is held by Marvel LLC and DC Comics LLC applying to the word 'super heroes' in classes 16 (books and paper products), 25 (clothing, footwear, and headgear), 28 (toys and games), and 30 (tea, coffee, breads, cakes, and pastries). It was registered in the UK on 12 December 1979 and has been periodically renewed since its first registration (DC Comics and Marvel Characters 1979). An EU-wide trade mark in the same term (super heroes) also exists, which was filed in 2003and registered in 2007(DC Partnerships and Marvel Characters 2007. This trade mark registration is not for an image or depiction of the term super heroes, such as a logo, but over the words themselves. While trade marks can (and indeed often do) consist of specific images, designs, typefaces, or colours, such as the Cadbury logo, with its distinctive swirled C (Figure 1) (Cadbury UK Limited 2000), they can also be over specific words. Cadbury UK also holds a trade mark in the word 'Cadbury' when not displayed in its distinctive images (Cadbury

Trade Mark Enforcement
In practice, although Marvel and DC could potentially challenge uses of the term super hero within printed material, this does not appear to be their approach.
Rather, their trade mark enforcement efforts seem to have focused on those goods and services which infringe their registered trade mark in titles, and competing trade mark registrations. This is certainly the position that commentator Brian Cronin takes (2006). While it is difficult to assess how often Marvel and DC as trade mark holders send cease and desist letter to potential infringers, there is evidence of their using this as a prelude to proceedings for trade mark infringement. On receipt of a cease and desist notice, creators (especially independent or short run comic book creators) may cede to the requests of the trade mark holders rather than engage in costly litigation. This was the case for ( is the only valid trade mark which includes the term super hero or super heroes, but it is certainly unusual that the Big Two withdrew their opposition to a class 16 mark.
Nonetheless, there now exists another trade mark in the UK which contains the term super hero, and is validly registered in the class covering books and printed matter.
This may, however, be explained by the fact that this is an image, rather than a word, mark, and so it can only be used in the specific format depicted in the trade mark registration.

The Effect of These Trade Marks
The impact of Marvel and DC jointly holding a trade mark on the term super heroes is wide-ranging. Given the function of a trade mark as a brand origin, a potential supposition is that a valid trade mark in the term super heroes indicates that the only companies which can or should propagate stories, merchandise, and media ref- erencing 'super heroes' should be the Big Two. Even where the actions of Marvel and DC are limited, as described above, to titles only, the ' chilling effect' of holding and enforcing this trade mark cannot be underestimated. The possibility of a cease and desist letter from the legal teams of two of the largest media companies in the world is likely a deterrent to many would-be creators, and its impact is difficult to quantify.
Chilling effects can exist in many spheres, from constitutional law (Columbia Law Review, 1969) to domestic violence (Cloven and Roloff, 1993 are other influences which will impact on the development of films, many of which have nuanced elements which will interplay with aspects of the film industry, including studio ' deals' and confidence in particular producers or screenwriters, resulting in funding disparities also, but this article argues that the trade marks discussed here present an additional barrier which should be dismantled. Nonetheless, it is submitted that the existence of these trade marks is antithetical to the purpose of trade mark registration, and they fail to distinguish their goods or services as coming from a specific proprietor (not least because the marks are jointly held by two rival companies). This trade mark contrasts sharply with the perception of superhero as a generic, undefined person with superpowers, which straddles media types and proprietors, creating a tension between literary theory, which discusses superheroes as a genre construct (Cates, 2011), and the legal restrictions on using the term 'super heroes' on any media which is identical to, or confusingly similar to, the goods or services of the Marvel and DC only.
In this way, use of the term 'super heroes' could be subject to a challenge from Marvel and/or DC where it is used on any work which might conceivably fit into the superhero genre. This article now moves on to discuss the ways in which these marks could be challenged, in order to remove their influence from the superhero genre, and eliminate the possibility of anti-competitive practice through bad faith challenges to the use of the term 'super heroes'.

Registration Challenge 2015
This article argues for genericide as the only potential ground for invalidation of the

Trade Mark Cancellation for non-use (Grounds 1 and 2)
Within the Trade Mark Act 1994, there are several other avenues to remove trade marks from the register, and thus allow the term super hero to return to common usage (TMA 1994: s 46 (1)). The first of these is lack of use in the five years since registration (TMA 1994: s 46(1)(a)). Given that DC and Marvel have used the trade mark consistently since its first registration, this is unlikely to succeed.
The second ground for revocation of registration is 'use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;' (TMA 1994: s 46(1)(b)). Thus, both the first and second grounds for revocation could be properly described as non-use, with the distinction being whether the trade mark was never used or was allowed to lapse.
Where an application for revocation for non-use is made, a trade mark owner is Further, the existence of an appeals process for cancellation through non-use means that even if Marvel and DC were to suffer a cancellation in the same way as McDonald's, an appeal with sufficient evidence offers a second chance for the mark to avoid its permanent erasure. Finally, an action for trademark revocation for nonuse ignores the greater issue -not that Marvel and DC do not use the term 'super heroes', as they certainly do, but that the term is not solely associated with goods and services coming from those providers.

Genericide (Ground 3)
The third ground for revocation from the Trade Mark Act is that 'in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered;' (TMA 1994: s 46(1)(c)). Known as 'genericide' (OED 2011), this transformation of a brand name from a designation of origin to a description of a class of products sounds a death knell for that trade mark.
The Act specifies that any person may challenge a trade mark registration on the grounds listed (TMA 1994: s 46(4)). However, beyond the statutory wording, there is There is an unspoken and illogical assumption that 'use equals distinctiveness'. The illogicality can be seen from an example; no matter how much use a manufacturer made of the word 'Soap' as an unsupported trade mark for soap the word would not be distinctive of his goods.
Although referring to the likelihood of confusion in this specific case, the principles remain applicable to genericide also. It is important to note that when defending against a declaration under this provision, demonstrating use alone of the mark is not sufficient. We can see that while there is evidence that Marvel and DC certainly use the term 'super heroes', and variants thereof, the question for genericide becomes instead whether that use is distinctive enough to protect the trade mark from revocation.
The closest UK discussion of genericide can be found in The London Taxi Corporation v Frazer Nash (2017), which concerned shape trade marks -specifically in London taxicabs. It briefly discussed, with approval, the Kornspitz case, before dismissing it as not of assistance in making the decision regarding taxis.
Consequently, we must look to that EU jurisprudence, which applied the test for  heroic attributes (OED, 2012), rather than to the stable of characters housed exclusively under the umbrella of the Marvel and DC labels.
Marvel and DC have satisfied the test for 'inactivity' within the meaning of that provision by not encouraging sellers to make more use of that mark in marketing a product in respect of which the mark is registered. Finally, it is worth noting that there is no alternative term to describe superpowered heroes. This lack of an alternative presents a compelling argument that the term designates the item itself -rather than the source of the item. The same argument resulted in the cancellation of the trademark Escalator in the US in 1950 (Haughton Elevator Co v. Seeberger, 1950).
Taken together, it is clear that the use of a genre title to indicate a specific origin is, if not at the time of registration, certainly inappropriate at this point in time.
'Super heroes' does not indicate only those characters which come from Marvel or DC, and to claim that the term applies only to those two houses is to take cynical advantage of their dominant market position. Marvel and DC have failed to protect their trade mark in the eyes of the consumer or end user and have not taken steps to promote the use of an alternative term. Through the acts and inactivity of the trade mark holder, the term 'super heroes' has become (if it was not always) the common name in the trade.

Conclusion
Marvel and DC jointly own several currently valid trade marks in the term super heroes. The UK IPO has determined that their UK trade mark was validly registered at first registration, pursuant to the application of Pop Up Start Up Ltd. However, this article has argued strongly that the mark does not retain any distinctiveness with regard to the term super heroes, and indicates a category, rather than a specific brand. Not only that, the generic term 'super heroes' applies to a genre as a whole, and the stranglehold that the 'big two' have over a descriptive term likely impacts negatively on the development of super heroes as a genre. Thus, an action for revocation of the trade mark pursuant to s 46(4) of the Trade Mark Act 1994 would, if properly evidenced, likely succeed and prevent Marvel and DC from enforcing their spurious trade mark, thereby removing their proprietary rights over a term which is monopolised by two industry giants. In conclusion, at time of writing, the generic super hero cannot exist, due to a statutory monopoly owned jointly by the 'Big Two'.
However, it could require only one motivated third party to submit the revocation argument and write the origin story for the generic super hero.