In a precedential decision the Trademark Trial and Appeal Board (“Board”) affirmed a refusal to register a character featured in a video game on the grounds that the proposed design mark failed to function as a trademark. In re Joseph A. Stallard, Serial No. 97115036 (August 28, 2023).  In doing so the Board held that video game characters are not per se registrable without a showing that they function as marks. Joseph A. Stallard dba Osgoode Media (“Applicant”) sought registration on the Principal Register of a design mark “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”:

for use in connection with various computer game programs and software.  Color was not claimed as part of the mark.[1]

In support of the application, Applicant filed a specimen consisting of an excerpt of a screenshot that featured the design, a description of the character, and links to access the game featuring the character.  The Examining Attorney refused registration of Applicant’s mark on the grounds that it failed 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.  Applicant appealed to the Trademark Trial and Appeal Board (“TTAB”).

On appeal, the Application argued that the Trademark Office improperly applied a stricter standard of examination to marks comprising characters than other marks. Specifically, Applicant argued that the language in TMEP §1202.10, “Marks that merely identify a character in a creative work [] are not registrable,” “is misleading, at best, and that examiners interpret it as a rigid bright-line rule precluding registration of characters.  Applicant contended that such a “bright-line rule against characters as trademarks has no basis in the statute or case law.” Instead, Applicant argued that any display of the character on the specimens submitted to support registration suffices to show use as a trademark.  The TTAB rejected both arguments Applicant advanced.

While 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,” a proposed trademark is registrable only if it functions as an identifier of the source of the applicant’s goods or services. 15 U.S.C. § 1127. Not every designation that is placed on or used for a product necessarily functions as a trademark for that product and not every designation adopted with the intention that it perform a trademark function necessarily accomplishes that purpose. While the TTAB confirmed that it is possible to register a fictitious or fanciful character, 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. 

In re Hechinger Inv. Co. of Del., 24 USPQ2d 1053, 1056 (TTAB 1991).  Designations that merely identify a character in a creative work are not registrable, whether the character appears in a series or in a single work. See, e.g., In re Caserta, 46 USPQ2d 1088, 1090-91 (TTAB 1998).

In analyzing whether a proposed mark functions as a source identifier, the Board will focus on consumer perception and how the designation would be perceived by the relevant public.  In doing so The Board will looks to the applicant’s specimens and other evidence of record showing how the designation is actually used in the marketplace’ to determine ‘how the designation would be perceived by the relevant public.  In re Caserta, 46 USPQ2d at 1090 (“[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 Board was quick to reject Applicant’s argument that the Examining Attorney had refused registration based on a strict or bright-line rule against registration of characters. Review of the record demonstrated that the Examining Attorney had in fact refused registration because “[t]he proposed character mark, as used on the specimen of record, identifies only a particular character in a creative work, and it does not function as a trademark to identify and distinguish Applicant’s goods from those of others and to indicate the source of Applicant’s goods.” In order words, consumers will perceive the applied-for mark only as a character in Applicant’s game, not as a trademark.

After review of Applicant’s specimen, the Board also agreed that the Examining Attorney had properly refused registration of the proposed character mark.  The record evidence showed that the proposed mark was associated with one character in the game, but did not show use of the proposed mark in a way to identify and distinguish the source of the game itself, e.g., on the game’s launch screen or more prominently on the webpage, such as in the header of the page.  The Board pointed to TMEP § 904.03(e) (“Specimens for Trademarks Identifying Downloadable or Recorded Computer Programs, Movies, and Videos, or Audio Recordings”) and cases cited therein to illustrate what kinds of specimens may be sufficient to show an association between a mark and software or programs in connection with which the mark is used to support federal registration.  The Board further noted the guidance provided to applicants in TMEP  § 1202.10:

To overcome a refusal of registration on the ground that the proposed mark merely identifies a character in a creative work, the applicant may submit evidence that the character name [or image] does not merely identify the character in the work. For example, the applicant may submit evidence showing use of the character name [or image] as a mark on the spine of the book, or on displays associated with the goods, in a manner that would be perceived as a mark.

(Emphasis added).

Here, the Board considered the complete webpage from from which Applicant’s specimen was excerpted to consider how consumers would perceive Applicant’s use of the proposed mark. The Board noted that the sole use of the proposed mark was mid-way down the page, below four images of the game’s other character, Maia, and below a three-sentence description of Maria. The Board concluded that “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.” 

Finally, the Board denied Applicant’s motion to set aside TMEP § 1202.10 as “unlawful and remove it from the TMEP.”  The Board made clear that refusal to register Applicant’s mark was based upon application of Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127, as well as on Board and Federal court precedent, not on TMEP section 1202.10. The TMEP is a set of guidelines and do not have the force and effect of law.

[1] Application Serial No. 97115036 was filed on November 9, 2021 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging a date of first use anywhere and in commerce of May 9, 2017.