Treading lightly around a Trademarked term

[Michael S. Miller]

In the When is it plagarism thread, I quote the following:

2. Trademark protects particular words or phrases, usually those that are descriptive of products or services. As a general rule, you only trademark those terms that are labels (I'll mention "Rifts" and "RECON" as two that I've been involved with). For a very specific example, 'Superhero' is trademarked jointly by DC and Marvel Comics, because it refers to a type of comic that they have labelled 'Superhero Comics,' and to use that term even casually in a RPG is an invitation to a lawsuit.

I was stunned by this revelation, but a bit of online research showed that Marvel & DC have issued a Cease & Desist letter to protect this Trademark as recently as February 2004. I'm a bit nervous, since my own game design, Excelsior! is a game about that kind of story. I have sections that discuss what makes that kind of story different from other kinds of stories. And now I learn that I can't use the word! My question is how to handle the use of this trademarked term in my game text? Options I can think of:

1) Make sure it is not in the title or subtitle, and use it sparingly in the text, as a generic descriptor only.

2) Remove all instances of the word everywhere. When the text needs this word in it, just find some way to write around it.

3) Remove all instances of the word everywhere. Replace it with a term I create--that could be potentially trademarked.

I'm leaning toward option 3 myself at the moment. I think I will be christening my game: "Excelsior! Cape Opera role-playing"  I mean, you've got horse operas and space operas, why not Cape Operas? Are there any special considerations I should take when defining the term "Cape Opera"?

I fully understand and accept that no responses to this thread will constitute leagal advice, etc., etc.  But a number of folks on these boards know a good deal more than me about Trademark issues, and I eagerly solicit all input on this issue.

[Eero Tuovinen]

My question is how to handle the use of this trademarked term in my game text? Options I can think of:

I have a funny idea! Publish your game in an European country, and let them try to enforce the trademark in an European court! Better yet,  give the game a French title that's a translation of the trademarked word, and see what happens...

Seriously, afaik you can use the word in the text as a general descriptor, as it's clearly deprecated trademarkwise long ago in such use. A multitude of people have used the word in print both in fiction and other pursuits (I'm pretty sure that it's used in superhero roleplaying books, for example), so it's clearly a case of common habit (or whatever the english term for "everybody does it" is).

On the other hand, the companies would probably come after you if you used the word in a title or other visible marketing, being that they lose the trademark if they do not defend it in such situations. Therefore I suggest going with your option 1) just to avoid bother.

3) Remove all instances of the word everywhere. Replace it with a term I create--that could be potentially trademarked.

This is a fine idea if your game has a distinct flavour that's helped by using non-standard terminology. Otherwise it's just useless pussyfooting, and harmful to boot; if people learn to fear excessive demands by corporations, those demands quickly become de facto reality. Thus it's better to ignore ludicrous trademarks like "superhero". Execution is two thirds of the law, after all, and if it suddenly becomes demonstratable that "superhero" actually is enforceably a trademark, it'd soon become a legal truth.

[Matt Snyder]

Trademark protection regards the specific term only. In this case,  "Superhero."

One option is to just use "Supers"? People use that all the time when referring to supers RPGs.

[EDIT: I just realized I made an awful, unsupported claim. Many trademark cases have indeed addressed SIMILAR uses of a term (or graphical logo), not just the specific term in question. But, I stand by my suggestion of supers.]

[Jack Aidley]

Would "super hero" be covered or not?

[jrs]

Michael,

I just searched TESS (Trademark Electronic Search System) at the http://www.uspto.gov">United States Patent and Trademark Office site.  And discovered that SUPER HEROES as registered by DC Comics (reg.# 1248407, last owners DC Comics and Marvel Entertainment Group) has a dead status with a cancellation date of May 22, 2004.  I do not know what this means.  There could be a change of ownership or some other paperwork happening.  If this is something that you care about, I suggest that you initiate a formal trademark search.

Julie

[Keith Senkowski]

From what I have read on the federal trademark site, the last "owner" of the trademark gets a grace period of 6 months to renew their trademark.  If that time lapses, it becomes first come, first serve on who registers.

Keith

[daMoose_Neo]

Personally me thinketh it hooey~
Just as good as Microsoft tradmarking/patenting "todo lists" for software development~ 99% of it is scare tactics anyway~ Technically, AOL owns all patents and trademarks on internet chatting and IM'ing, but doesn't enforce it. Major companies only seem to enforce it to gain serious leverage - consider it like the cold war, stock piling legal ammunition JUST IN CASE and use it as a deterrant.
"I better not do that or he will enforce his patent. But if he enforces THAT patent, I can enforce this one, which will-" and have the business equivilant of armageddon.
If DC or Marvel enforced it left and right, we never would have several of the indie titles we do have now, totally outside their control.

[Alex Johnson]

If I were seriously considering publishing in this market, I would of course consult a trademark lawyer.  IANAL.

That said, I'd call this trademark blatantly unenforceable.  The law as I understand it states that common words cannot be trademarked except in context.  "Superhero" you will find in every dictionary, and probably back for a hundred years or more.  It is "hero"-a person noted for feats of courage or nobility of purpose-modified by "super"-extraordinary.  Thus it is an extraordinary example of a person noted for feats of courage or nobility of purpose.  Superhero is a common word often used in day to day speech.  It is public domain until you tread on the specific context of the trademark, which probably defines superhero as an anonymous do-gooder with supernatural powers and disturbing fashion sense.