1202.10 Characters in Creative Works
Marks that merely identify a character in a creative work, whether used in a series or in a single work, are not registrable. In re Stallard, 2023 USPQ2d 1009, at *1-2 (TTAB 2023) (holding an image of the head of a female video game character does not function as a mark where the specimen and other evidence showed the image merely identified a character in applicant’s video and computer game programs and would not be perceived by consumers as identifying the source of those games); In re Scholastic Inc., 223 USPQ 431, 431 (TTAB 1984) (holding THE LITTLES, used in the title of each book in a series of children's books, does not function as a mark where it merely identifies the main characters in the books); cf. 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). These types of marks encompass "any matter that identifies a character, including names, designs, images, nicknames, and the like." In re Stallard, 2023 USPQ2d 1009, at *6.
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 matter identifying the character (e.g., name, image) does not merely identify the character in the work. For example, the applicant may submit evidence showing use of the matter identifying the character (e.g., name, 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.
A refusal of registration on the ground that the mark merely identifies a character in a creative work can be made regardless of whether the creative work is the sole item in the identification of goods/services or is listed with other items. If the record contains information or if the examining attorney learns from another source that the mark identifies a character in a creative work and there are multiple items in the identification, the examining attorney should issue a partial refusal as to the relevant goods/services. A partial refusal is a refusal that applies only to certain goods/services, or to certain classes. See TMEP §718.02(a).
Example: An application for "printed children’s books, pencils, and printed coloring books" would be partially refused if the examining attorney determined, either from the application or from another source, that the mark identified a character in the children's books. The use of the same mark on other non-creative matter such as the pencils and printed coloring books does not overcome the refusal.
1202.10(a) Characters in Creative Works in §1(b), §44, or §66(a) Applications
The issue of whether a proposed mark identifies only the name or design of a particular character is tied to use of the mark, as evidenced by the specimen. Therefore, unless the record, even without a specimen, reflects that the proposed mark identifies only the name or design of a character, generally no refusal will be issued in an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), until the applicant has submitted specimen(s) with an allegation of use under §1(c) or §1(d) of the Trademark Act, 15 U.S.C. §1051(c) or (d). However, in a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal will be made on the ground that the proposed mark identifies only a particular character, the potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. In cases where the record indicates that the mark identifies only the name or design of a character, the examining attorney may make the refusal prior to the filing of the allegation of use.
In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for examining attorneys to issue the refusal where the record indicates that the mark will identify only the name or design of a particular character. Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen-based, in a §66(a) application).
See TMEP §1301.02(b) regarding names of characters or personal names as service marks.