DC Comics and Marvel made headlines this week after British author Graham Jules accused the two publishers of banning the use of the word “superhero” by opposing his attempt to trademark the title of his book, ‘Business Zero to Superhero.’ While the case is nothing more than a pure trademark wrangle, it draws attention to the issue of the joint ownership of trademarks, the World Trademark Review (WTR) suggests in a blog post.
The two comic book publishers jointly obtained trademark rights for the words SUPER HERO and SUPER HEROES in 1979, before renewing the marks in 2006. The issue has put Jules in a position he described as “fighting or scrapping the entire book” in a press statement released last week.
Although the dispute has grabbed the public’s attention, as it pitches two globally successful companies against a smaller, independent one, the less frequent occurrence of joint-owner trademarks is also worth noting.
David Weild of Edwards Wildman Palmer noted to WTR that conceptually the phrase “joint trademark” is an oxymoron, because by definition a trademark indicates a single source., Robert Cumbow of Graham & Dunn added that a joint trademark is more of a co-existence than a co-ownership. .
Brands wishing to follow in the footsteps of DC and Marvel are advised to pursue a co-branding agreement, rather than a jointly-owned registration, Cumbow says. If two companies want to jointly own a trademark, they should create an entity for that purpose, register the mark on its behalf, and then arrange the use of the trademark through license agreements, he says.
Would you consider sharing a trademark with a competitor?