By John van der Luit-Drummond
April 16 2014
DC Comics and Marvel were in the news this week after a British author complained over a notice opposing the use of ‘Superhero’ in the title of his advice book "Business Zero to Superhero". In many respects this is a straight trademark dispute, but it does have an interesting dimension, the joint ownership of trademarks.
DC Comics and Marvel have jointly owned the trademark for SUPER HERO and SUPER HEROES since 1979. Their renewal of the marks in 2006 drew widespread attention from those who have questioned whether the term should be allowed to be registered and argued that it is a part of everyday language as a common superlative and honorific, with British author Graham Jules stating this week: “I’m a new author and small business and I’m now in the position of fighting or scrapping the entire book. I cannot fight Iron Man, Captain America and Spider-Man all by myself!” However, speaking to the Mail on Sunday newspaper, Jonathan Reichman, a partner at Kenyon & Kenyon, which represents DC and Marvel, responded: “We recognise that people use the word ‘superhero’ in the English language. It’s only when people try to register it as a brand that we take action. We are not just beating up on the small guys.”
It’s the type of dispute that will always grab media attention as it has all the qualities of a cross-over trademark story – big versus small over well-known properties. However, our spidey senses tingled for a different reason – that it involves the rarer occurrence of jointly-owned trademarks.
Trademarks shared by competitors, while rare in the United States, are supported by a non-precedential Trademark Trial and Appeal Board decision upholding the SWISS ARMY knife trademark. Like the SUPER HERO marks, the SWISS ARMY mark was jointly registered by competitors, Victorinox AG and Wenger SA. It was upheld on the basis that the registrants jointly “represent a single source” of the knives and due to their long-standing cooperation for quality control (today the US mark is owned solely by Victorinox AG which also owns the former competitor, Wenger SA).
So when can it be appropriate to co-own a mark? David Weild, partner at Edwards Wildman Palmer, suggests that the ideal joint trademark would be an invented word owned by two or more proprietors, but notes: “Conceptually, ‘joint trademark’ is an oxymoron because the classic definition of a trademark says it identifies a single source, not more than one.” Robert C Cumbow of Graham & Dunn adds: “The one circumstance in which it may make sense is if one party owns/registers the mark for certain goods or services and the other party owns/registers the same mark for different goods/services. But that’s more a coexistence than a co-ownership.”
Clearly, joint-ownership is a tricky proposition and Cumbow sees clear complications in such an arrangement. “For starters, the whole point of trademark protection is that a trademark acts as a source indicator, pointing to a single source of the goods or services branded with a specific mark. If consumers can’t identify a single person or entity as the source of the branded goods, the system is already starting to break down.”
Additionally, while the pooling of resources from two or more in-house teams may help to ease the burden of policing and enforcement of marks for some brands, there are also enforcement and administrative maintenance difficulties that can arise. Who leads the policing, for instance, and how is the respective parties’ uses of the mark managed?
For those brands seeking to follow a similar route to that of DC and Marvel, then, Cumbow makes the following observation: “If two or more parties want to cooperatively own, use and manage a trademark, a co-branding agreement is a better model than a jointly-owned registration. If two or more people or entities do feel they all need to be owners of a particular trademark, they should form an entity for the purpose, and register the mark in the name of that entity, then manage the actual use of the mark through appropriate licence agreements. This is what I always recommend.”
Perhaps it takes superhero resolve to embark on the ‘joint ownership’ journey and it is clearly not for all – thought needs to be given to the management and protection of the marks, as well as how to ensure that they remain source identifiers in a multi-owner scenario. As the Marvel and DC Comics example suggests, active policing will be critical.
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