Man and Superman - why George Bernard Shaw is turning in his grave over Marvel's TM claims

IP maven Ron Coleman's blog Likelihood of Confusion reported a story from BoingBoing.net about Marvel Comics "stealing the language." Allegedly both Marvel and DC, the two largest comic book publishers in the industry claim to own the word "superhero." For years they have placed the trademark symbol next to the word in various publications and advertising. The effect of such a practice is to signify to the world that they are the source of that term, and that all use of it by others violates their ownership rights.

While it appears that neither major publisher has filed a suit in any Federal or State court over this issue yet, both have registered it with the PTO. Under the first registration, they claim ownership over the term in conjunction with costume and masquerade association. The second registration claims ownership of the term in conjunction with publications and the illustrated form. It is generally easy to register a trademark. Defending it against judicial scrutiny in the event of a challenge, however, is not.

Trademarks consist of any word or words, shape, mark or device, (sometimes even smell, color or catch phrase), which serves to identify the source of a particular brand of products or services. When a junior mark surfaces that is similar to a prior registered mark (or if a large and powerful junior user seeks to blight the use of a smaller senior user) a suit is filed for a trademark ruling. The court will then evalute the strength of the mark in conjuntion with other factors. There are typcially four degrees of in the range of marks (here listed from weakest to most solid): (1) generic; (2) descriptive; (3) suggestive; and (4) fanciful. The qualities and defensability of each are as follows:

• Generic marks - these are marks that commonly name what a product is, rather than distinguishing it as coming from a particular source. The are very weak and do not provide their owner with much protection. Examples of this are "Lipstick" or "Video Games" or "Coffee".
• Descriptive marks - these are marks providing a bit more detail in addition to saying what the thing being trademarked is (think of generic marks + adjective - the Madlibs of TM). These types of marks are usually weak and do not achieve the level of imagination necessary for a stronger level of TM protection. Examples of this are "Red Lipstick" or "Cheap Video Games" or "Hot Coffee." In each case the merely descriptive modifiers seek to make the otherwise generic mark a bit more distinguishable. Regardless, these marks are particularly weak unless they take on secondary meaning associated with the source using them. Such a shift in public perception and identification would solidify the mark against other potential users. Examples of this are International Business Machines (IBM) or Atlantic Telephone and Technology (AT&T).
• Suggestive marks - these are marks that begin to climb the ladder of solid trademark protection. They require a creativity that makes them distinctive from descriptive marks in their subtle command of the consumers attention toward a specific source. Despite the function of directing perception through specified clues attached to ordinary words, suggestive marks retain a quality akin to generic and descriptive marks. Examples of these marks are "Microsoft" (software and microchips) or "Burger King" (hamburgers) or "Roach Motel" (roach and bug traps).
• Fanciful - these are words that are coined or created for the sole purpose of being a trademark. Rather than joining recongnizable, and sometimes seemingly unrelated words into a single phrase these are original works of authorship (shameless copyright analogy plug) and there is no equivalent for them in the English language. They are the strongest of marks and accorded the most protection under law. Examples of these marks are "Verizon" (celluar phone carrier) or "Xerox" (photocopier machines) or "Exxon" (oil providers).

Even the strongest of fanciful marks, however, have an Achilles heel. The irony of trademark is that if your product or service becomes so successful that it is completely absorbed into the lexicon of everyday speech as meaning something other than a designation to the target company's product, the looming threat of genericide rears its ugly head. Genericide is the process by which a brand name becomes an ordinary noun. Examples of once-upon-trademarks are "zipper" or "granola" or "asperin." These words have entered the public domain, and their designation as marks used by a particular company are long since forgotten. There are scores of marks, however, that teeter along the genericide border. Although not purely in ordinary parlance, they are so well known that they are generally thought of as generic trademarks, providing little protection to their owners. Examples of these are "Bubble Wrap" or "Q-tips" or "Superhero".

The popular use by the general public of the term "superhero" to describe a being with extraordinary powers who abides by a moral code to use those powers to help others has become so widespread that it is hard to imagine a court upholding any suit brought to protect it. Despite the fact that the characters of Marvel and DC are likely the most recognizable "superheroes," it is arguable that the costumed crimefighter from Invincible by Image Comics or the demon-spawn do-gooder Hellboy, by Dark Horse comics should have the ability to be marketed under this avitar as well. The archetype for superheroes might seem to be Superman (perhaps the most recognizable of superheroes), but the recent ad on NJ Transit busses comparing foster care parents to superheroes. Would anyone deny them this characterization? Maybe Marvel or DC if they ever got sinister enough to file.