In the first part of this series we discussed how superheroes (and supervillains) can use copyright to help control the use of their image and generate revenue through merchandising. Now we’re going to talk about how trademarks can be used for the same purposes.
I. How Trademarks Work
Unlike copyright, which is exclusively federal, there are both federal and state trademark laws in the US. However, as commerce has become less and less localized, the importance of state trademarks has diminished somewhat, so we will focus on the federal scheme.
Federal trademark law is primarily governed by the Lanham Act. Individuals and corporations seeking federal trademark protection must register their marks with the United States Patent and Trademark Office. Unlike applying for a patent, applying for a trademark is usually fairly straightforward, though there are some potential pitfalls (more on those in a moment).
All kinds of things may be trademarked: words, graphic designs, shapes (e.g. a Coca-Cola bottle), sounds (e.g. the NBC chimes), and even colors (e.g. green and gold dry cleaning pads). See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995). Of these, words and graphic design marks are the most common, and they’re likely the most applicable for superheroes and supervillains. There are some exceptions to what may be trademarked, and these are given in 15 USC § 1052.
Section 1052(e)(5) prohibits trademarking anything that “comprises any matter that, as a whole, is functional.” Functional things are pretty much the exclusive province of patent protection. You can’t copyright them, nor can you trademark them. So, for example, trademarking a Batarang is going to be kind of a tough call, as the actual shape of the device is arguably functional. It’s certainly pointy, which is kind of, well, the point, isn’t it? Another example would be the arc reactor in the Iron Man suits. Images of that have been used as logos for the films in the real world, but in the Marvel Universe, trying to use an image of the arc reactor as a logo is going to be subject to challenge on § 1052(e)(5) grounds unless the image is sufficiently stylized. The same probably goes for Thor’s hammer: it’s an obviously functional thing, so using it as a logo is going to be a tough sell unless you stylize it pretty heavily.
But what about, say, Captain America’s shield? That’s functional, right? So would it be protected by trademark? Yes, because the image on his shield isn’t actually functional at all. It could be anything, really, but appears to basically be paint. Tough paint, to be sure, but ultimately just that: not essential to the functioning of the shield. So the logo on Captain America’s shield is probably trademarkable, but the shield itself is probably not. Captain America could go after anyone for using his logo on anything, Hilariously though, as a representation of a fictional character, Marvel swapped the original triangular shield for the round one allegedly due to the complaint of a rival publisher that it looked too much like their own character, an example of real world law affecting comic book stories on the meta-level.
And actually, while we’re on the subject of Captain America, what about § 1052(b)? That prohibits trademarking anything that “Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.” Captain America is probably okay, because his logo is arguably far enough removed from any official government insignia to be okay while remaining decidedly patriotic. But Superman in the Red Son continuity would be in trouble. Well, okay, he’d probably be in trouble because it’s totally unclear whether Soviet Russia would recognize trademark at all, but he wouldn’t be able to trademark his logo in the US either.
II. Some (Minor) Pitfalls
Other than those exceptions, there are three pitfalls to watch out for here. First, trademarks cannot be generic terms for the marked good or service (e.g. you can’t trademark “Soft Drink brand carbonated beverages”). Second, if the mark is merely descriptive of the good or service, then you can’t trademark it unless you can show that the mark has acquired “secondary meaning,” that is, consumers now associate the mark with a particular source of goods or services rather than considering it a mere description. Third, the mark must be used in commerce or the applicant must have a good faith intention to use it in commerce (and they have to carry through with that intention at some point). That means a superhero or villain can’t just register the mark defensively as a way to prevent others from using it; some kind of merchandising has to be going on and “Superman brand superhero services” may not be enough.
In most cases, though, these aren’t going to be significant issues for superheroes and supervillains. Their names and logos tend to be arbitrary or fanciful rather than generic or merely descriptive (this shouldn’t be surprising, since most of them are also trademarks in the real world). And they’re probably all happy to slap their name and logo on merchandise, even if they’d prefer the proceeds go to charity.
III. The Big Catch
Unlike rights of privacy and publicity and copyright, trademarks carry with them a unique burden. A trademark owner must both continually use the mark in commerce and enforce his or her rights to exclusivity (i.e. must ‘police the mark’) or risk losing it. This is because the real purpose of trademark is to protect the buying public by ensuring that a good or service bearing a mark only comes from the owner of the mark. If there are multiple, unrelated sources using the mark (or if nobody is using the mark), then there is no public benefit. Without enforcement, a trademark loses its strength, and it may eventually become a generic term or even be considered abandoned outright. Speaking in the closely related trade dress context, the Sixth Circuit held:
Although it appears unlikely that failure to prosecute, by itself, can establish that trade dress has been abandoned, it is possible that, in extreme circumstances, failure to prosecute may cause trade dress rights to be extinguished by causing a mark to lose its significance as an indication of source.
Herman Miller Inc. v. Palazzetti Imports and Exports, 270 F.3d 298, 317 (6th.Cir. 2001). Beyond the general threat of loss of protection, failure to sue individual infringers in a timely fashion can give rise to a defense of laches if the trademark owner does eventually decide to sue.
Trademark provides a valuable complement to the protections of copyright, privacy, and publicity. It’s so essential that if a character wanted to sell merchandising rights, the company buying the rights would probably insist on trademark registration and a license. Otherwise it would be much harder to ensure that a competitor couldn’t start producing knock-off merchandise. Although it’s a bit more of a pain to secure than those other rights, it’s well worth it for any superhero (or supervillain) serious about controlling the use of their image or generating revenue through merchandising.