[thaumasiotes]

What would happen if DC and Marvel established a body of organizations concerned with comics, which just happened to consist of the two of them and nobody else, and that body was the one holding the trademark?

As far as I'm aware, that's a completely normal set of events, but the effect is the same.

[hn_throwaway_99]

What you've described is essentially what led to the Sherman Antitrust Act in the first place ("trusts" in this case were exactly the kind of body of companies in the same industry that you describe). The two most dominant companies in the industry are simply not allowed to collude like this to the exclusion of competitors.

[thaumasiotes]

But there's nothing stopping them from jointly holding a trademark through a trade association. The United Negro College Fund holds a trademark on the phrase "a mind is a terrible thing to waste". It's a group with closed membership. This is just the normal, intended functioning of the system.

The problem with the SUPER HERO trademark is that it's descriptive, not that it's held by a trade association.

[hn_throwaway_99]

> The problem with the SUPER HERO trademark is that it's descriptive, not that it's held by a trade association.

No, that's wrong, because the court clearly specified both problems as being reasons for invalidating the mark:

> 6. DC and Marvel claim that no one can use the term SUPER HERO (or superhero, super-hero, or any other version of the term) without their permission. DC and Marvel are wrong. Trademark law does not permit companies to claim ownership over an entire genre. SUPER HERO is a generic term that should not be protected as a trademark.

> 7. Trademark law also does not allow competitors to claim joint ownership over a single mark. The purpose of a trademark is to identify a single source of goods and services.

[acdha]

I think that’d lead to the same challenges: it’d be trivial to show that usage of the term predated that organization by decades, and anyone making an argument about collusion or antitrust would be able to point to the existence of a closed group created by the top two competitors as evidence rather than a defense.

[thaumasiotes]

> it’d be trivial to show that usage of the term predated that organization by decades

So what? How is that relevant?

How long do you think the term "apple" predated Apple Records?

[dragonwriter]

The preexisting use unrelated to Apple Records products wasn't affected by their trademark, whereas with superhero it is the preexisting generic use that is directly targeted.

[thaumasiotes]

Preexistence is still fully irrelevant. The generic use can come into being 50 years after the trademark does and it will still make the trademark invalid. Or it can die 50 years after the improper grant of a trademark and cause that trademark to become valid.

A descriptive term can't be trademarked, and using "super hero" to refer to stories about superheroes is descriptive. But there is no chronological consideration.

[s1artibartfast]

It is still relevant. The fact that it is preexisting is obvious evidence that it shouldn't have been granted or was immediately overturned on challenge.

The trademark office would not give me a trademark for "computers", "the internet", or "AI" if I walked in tomorrow

[thaumasiotes]

> The trademark office would not give me a trademark for "computers", "the internet", or "AI" if I walked in tomorrow

Again, so what? Would they give you a trademark on "The Bawdy House" for your chain of brothels? The problem with "computers", "internet", and "AI" is current usage, not former usage.

[acdha]

How many of those uses of “Apple” were for sales of recorded music? Trademarks aren’t a flat namespace and in this case a court would be looking at the use of that term by multiple companies to refer to similar things prior to creation of our hypothetical organization by those companies with a history of litigation against earlier users, all of which would suggest that this is a generic term they’re trying to close off.

[thaumasiotes]

No, you've confused trademarks with patents.

[acdha]

No, I haven’t. Since multiple other people have needed to correct you, there’s clearly a communications failure here. The U.S. PTO has a good background page discussing how they assess the strength of a claim:

https://www.uspto.gov/trademarks/basics/strong-trademarks

This helps us understand that “Apple records” can be a trademark because even though “apple” is an old, generic term for agriculture it wasn’t generic in the context of selling music and only that one company was using it there. Similarly, their examples note that “app store” is generic which is why you always see it referred to as the “Apple App Store”, and Apple’s suit against Amazon’s for use of the term failed.

In this case, the trademark for “superhero” as opposed to “Marvel superhero” involves questions about how strongly consumers identify that term with those companies. That’s where the history comes in, and why it doesn’t change matters if they created a shell organization. The question would involve both prior use by other companies and how over that time popular usage has shifted – has it specialized to mean only the DC/Marvel characters, or do consumers think of any over-powered character as a superhero regardless of whether it’s a DC/Marvel property. Transferring ownership to an organization controlled by the two current holders is a legal maneuver which doesn’t control whether the public usage is descriptive or generic instead of referring to products specifically made by those two companies.

[thaumasiotes]

> In this case, the trademark for “superhero” as opposed to “Marvel superhero” involves questions about how strongly consumers identify that term with those companies. That’s where the history comes in, and why it doesn’t change matters if they created a shell organization. The question would involve both prior use by other companies and how over that time popular usage has shifted – has it specialized to mean only the DC/Marvel characters, or do consumers think of any over-powered character as a superhero regardless of whether it’s a DC/Marvel property. Transferring ownership to an organization controlled by the two current holders is a legal maneuver which doesn’t control whether the public usage is descriptive or generic instead of referring to products specifically made by those two companies.

Here's your earlier comment:

>> it’d be trivial to show that usage of the term predated that organization by decades

I pointed out that that wouldn't be relevant, and you're agreeing with that here. What kind of "correction" is this?

Assume, as you do, that "super hero" was originally in common use to refer to any benevolent character with supernatural abilities, and over time, subsequent to the grant of the trademark, it specialized to the point that the public now understands it only to refer to characters owned by DC or Marvel.

That would tell us that (1) as a historical matter, the trademark was improperly granted; and (2) as a legal matter, the trademark is currently valid. The preexisting use doesn't matter to anyone. The current meaning of the term matters.