There is no strict or bright-line rule against registration of fictious or fanciful characters. See, e.g., In re DC Comics, Inc., 689 F.2d 1042, 215 USPQ 394, 396 (CCPA 1982) (in a case involving drawings of superhero characters for toy dolls, court rejected the proposition that “a picture of a product necessarily cannot function as a trademark for that product”).

But, in order to be registrable, the use of a fictitious or fanciful character “must 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.” In re Hechinger Inv. Co. of Del., 24 USPQ2d 1053, 1056 (TTAB 1991) (design of dog appearing in advertisement does not function as mark for retail hardware and housewares services).

If used only to identify the character, it is not registrable. In re Caserta, 46 USPQ2d 1088, 1090–91 (TTAB 1998) (holding FURR-BALL FURCANIA, used as the principal character in a single children's book, does not function as a mark even though the character's name appeared on the cover and every page of the story); In re Frederick Warne & Co., 218 USPQ 345, 347–48 (TTAB 1983) (holding an illustration of a frog used on the cover of a single book served only to depict the main character in the book and did not function as a trademark); In re McDonald's Corp., 229 USPQ 555 (TTAB 1985) (holding APPLE PIE TREE does not function as mark for restaurant services, where the specimen shows use of mark only to identify one character in a procession of characters); In re Whataburger Sys., Inc., 209 USPQ 429 (TTAB 1980) (holding the design of zoo animal character distributed to restaurant customers in the form of an iron-on patch was not used in a manner that would be perceived as an indicator of source).

The name of a character or person is registrable as a service mark if the record shows that it is used in a manner that would be perceived by purchasers as identifying the services in addition to the character or person. In re Fla. Cypress Gardens Inc., 208 USPQ 288 (TTAB 1980) (name CORKY THE CLOWN used on handbills found to function as a mark to identify live performances by a clown, where the mark was used to identify not just the character but also the act or entertainment service performed by the character); In re Folk, 160 USPQ 213 (TTAB 1968) (THE LOLLIPOP PRINCESS functions as a service mark for entertainment services, namely, telling children's stories by radio broadcasting and personal appearances); In re Caserta, 46 USPQ2d 1088, 1090 (TTAB 1998) (“[T]he sole issue is whether the name of the fictitious character is used in such a manner that it is likely to be perceived as a trademark in connection with the identified goods.”).

The USPTO will look to the specimen as to whether a proposed mark is used to only identify the name or design of a character, rather than function as a trademark. See In re Vox Populi Registry, Ltd., 25 F.4th 1348, 2022 USPQ2d 115, at *2 (Fed. Cir. 2022) (looking to the specimens showing how the designation is actually used in the marketplace to determine how the designation would be perceived by the relevant public).

Cropped Head Shot of Game Character

The TTAB recently upheld a refusal to register a proposed mark consisting of a cropped heat shot of a video game character named Maria because consumers “would have no reason to think that the cropped image of Maria's head identifies the source of the goods.” In re Joseph A. Stallard, Ser. No. 97115036, 2023 USPQ2d — (TTAB Aug. 28, 2023).

The application described the mark for video and computer game programs as consisting 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.”

The specimen of use was an excerpt from a third-party webpage for an electronic retail store offering video games.

The center of the webpage comprises a column with information about the game, including a description, images, and links to Google Play and Amazon, where the game may be downloaded. The complete webpage includes images and discussion of an additional game character named “Maia.”

***

            Behind the central informational column is a repeating background with images of the Maia and Maria characters. The Maia character appears six times on the webpage, in a total of five different poses. The Maria character appears three times on the page—in a single pose—including in the image comprising the mark, i.e., her head cropped from the single pose. There is no evidence that Applicant has released additional game episodes.

            The Examining Attorney also introduced one webpage from Google.com, and two webpages from Amazon.com, from which Applicant's game can be downloaded. None of these pages show the Maria character, however these pages include several images of the Maia character in poses similar to those shown [in the submitted specimen for Maria].

The TTAB found that “the proposed mark is merely associated with one character in the game, and it is not used in a way to identify and distinguish the source of the game itself—for example, on the game's launch screen or more prominently on the webpage, such as in the header of the page.” Burying the mark below the 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.” The TTAB concluded that “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.”

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.