Common words applied in uncommon ways

This year a British businessman got a lesson in copyright and trademark law when he planned to independently publish a book called Business Zero to Superhero. Seems Marvel Comics and DC Comics filed a joint trademark over 30 years ago for the word “superhero.” Really? Should words in common usage be eligible for trademark?

The businessman, a law student, argued that the word “superhero” had entered the common vernacular and thus the trademark was invalid. Apparently Marvel and DC reluctantly agreed, as they dropped their suit, citing commercial reasons.

The comic book dynamic duo could not even have copyrighted their word.

Trademarks differ from copyrights. Copyrights protect individual, original works of expression, giving creators control over the use of their work by others without permission. An artist can copyright any original work of authorship that can be fixed in a tangible means of expression, such as writings, musical compositions, photographs, art, audiovisual works, and more.

However, copyright law does not protect names, titles, or short phrases or expressions, even if they are distinctive. No catchphrases like Paris Hilton and her signature perspective ‘That’s Hot.’ No advertising slogans like “Just Do It.” The tune “American Girl” can be copyrighted, but the name “Tom Petty and the Heartbreakers” cannot. Neither can Spiderman.

So how do organizations create a commercial monopoly on products or services that they feel could be exploited? That’s where trademarks come in—to control the commercial use of what they consider to be their original works of expression. Trademarks stop others from using your word commercially.

The case of the two comic book giants and their superhero efforts to dismiss an independent author of self-help books may not be so odd when you hear what others have attempted in the name of protecting profits through trademarks. Trademarks mean big money.

Dave Hester from the old reality show Storage Wars has a trademark on his catchphrase “Yuup” and he is in a legal battle with rapper Trey Songz, who says he’s been “yuupping” it up since well before Hester’s show. Court papers show the applied difference in their versions is in the squeal.

Did you know the NFL has a trademark on the phrase “Super Bowl”? Every year lawyers remind advertisers, the media and businesses in the host city what can and cannot be said. So Mickey’s Diner cannot advertise a Super Bowl Breakfast for $4.99. They can have the promotion. They just can’t mention the phrase “Super Bowl” when telling people about it.

Should a trademark be granted when a word or phrase is considered a descriptive generic term in consistent public use? The International Trademark Association (INTA) does not grant trademarks to what they call “generic words” that are the accepted and recognized description of goods or services, like computer software or facial tissue.

When considering suitability, words are divided into category marks:

Fanciful: Made-up words that have no relation to words being described, like Shell Oil
Arbitrary: Existing words that offer no meaning to the goods being described, like Apple computers
Suggestive: Words that suggest meaning but don’t actually describe the goods themselves, like Coppertone suntan lotion
Descriptive: Words that describe the goods or their characteristics, like App Store

Many fanciful and arbitrary trademarks have become generic over time. Aspirin, cellophane, margarine, escalator, linoleum and videotape were once all protected.

The INTA limits trademarks only to the markets where the trademark is enforced, and it is only enforceable if that use is pervasive enough to show ownership. Common words or not, factors that determine a trademark are the type of business and the dissimilarity between goods and services. Context weighs heavily. So there can be trademarks for Apple computers, Apple lawn care, or Apple dentistry since they do not compete in the same markets, nor can they be mistaken for the generic term for fruit.

Confused yet? In the quest for ownership and control of a name for financial profit, some trademark owners are their own worst enemies by causing their trademark to go generic. The INTA says that improper trademark advertising and labeling cause consumers over time to use the trademark as the actual name of the product or service. The original trademark loses its distinctiveness and the word becomes too generic to protect.

Ironic? Some superheroes might agree.

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