The Trademark Trial and Appeal Board (TTAB) has reiterated that there is no “strict or bright-line rule against registration of characters.”
The case is In re Joseph A. Stallard, 2023 USPQ2d 1009 (TTAB 2023).
Joseph A. Stallard dba Osgoode Media sought registration of a trademark in the field of computer games.
As described in the application,
The mark consists of a woman video game character named Maria, with a tilted head, dark messy hair, dark eyes, thin rimmed glasses and a large toothy smile, with her eyes looking to the side and strands of her hair in front of her eyes.
Maria is a main character in the video game “Target of Desire: Episode 1.”
The only specimen the applicant submitted of the mark was from a third-party webpage for an electronic retail store for videogames. It depicts her as scantily clothed and describes her as follows:
Maria is a cryptic character. The only thing that she reveals about herself is that she ‘works at the University.’ She blogs (and is on social media) under the username of ‘IamNamedMaria’, where she speculates about the nature of reality.”
The Trademark Examining Attorney refused registration of Applicant’s mark on the ground that it fails to function as a mark under Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127, because consumers would perceive it only as identifying a character in Applicant’s video games, and not as a source indicator for Applicant’s goods.
The TTAB affirmed the refusal, noting:
Section 45 of the Trademark Act defines a “trademark” as “any word, name, symbol, or device, or any combination thereof – (1) used by a person . . . to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” 15 U.S.C. § 1127. “[A] proposed trademark is registrable only if it functions as an identifier of the source of the applicant’s goods or services.”
There’s no prohibition against registration of fictitious or fanciful “character” marks that serve a dual purpose, i.e., serve both as a character in the goods or services and as a trademark or service mark.
However, in order to be registrable, the use of a fictitious or fanciful character
[M]ust be perceived by the purchasing public not just as a character but also as a mark which identifies and distinguishes the source of the goods or services. Where the usage of a character in the specimens of record fails to impart any commercial impression as a trademark or service mark, it is not registrable as such.
According to the Examining Attorney, “the specimen [or Maria] coupled with the evidence on record shows the applied-for mark is used only to identify a character, and not as a source indicator for Applicant’s goods.”
Also, noted the Examining Attorney,
T]he mere fact that the proposed mark appears on the specimen of record does not make it a trademark. . . . Nor is Applicant’s intent alone that the proposed character mark function as a trademark sufficient. . . . The specimen must show that the mark functions as a trademark to be registrable.
Said the TTAB:
As demonstrated by the Examining Attorney’s complete webpage from Itch.io, from which Applicant’s specimen was excerpted, the sole use of the proposed mark is mid-way down the page, below four images of the game’s other character, Maia, and below a three-sentence description of Maria. This positioning of the proposed mark, buried below text in the middle of the webpage, suggests that the image merely serves an informational function to familiarize prospective consumers with one of the two main characters of the game. Simply put, prospective consumers viewing the proposed mark on the webpage would have no reason to think that the cropped image of Maria’s head identifies the source of the goods.
The TTAB noted that there is no strict or bright-line rule against registration of characters as trademarks, but that “Maria” didn’t qualify as a trademark in this case.
Many other companies have successfully registered characters as trademarks, including Disney’s registration of Micky and Minnie Mouse.
Importantly, since copyrights automatically expire after a period of time, but trademarks don’t, a trademark can protect against unauthorized use of a character even after the work in which the character first appeared is in the public domain.
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