In trademark law, there is a difference between the rules concerning registration of trademarks and the rules that govern actions under the common law (whether by way of assertion of common law trademark rights or by actions pursuant to Section 43(a) of the Lanham Act, sometimes referred to as the federal “unfair competition” statute).  There are certain strict rules that govern trademark registration that simply do not apply in those other contexts.  One such example is the requirement that a trademark be “used as a mark” before the USPTO will issue a registration.  In all other contexts, priority of use does not require affixation of a mark to goods and/or the actual sale of such goods but may be a result of “use analogous to trademark use”, such as widespread advertising and other preparations to commence business under a new mark.

Many elements of fictional works are protectable under trademark law and it may not be so obvious when the use of these characters in a particular form is a trademark use.  For example, in In re DC Comics (689 F.2d 1042 (C.C.P.A. 1982),  the court held that a graphic character can function as a protectable mark. In that case, DC Comics appealed from a decision of the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB”) refusing trademark registration for drawings of three of DC’s comic book characters which appeared on the packaging for action figures of those characters. The TTAB held that the drawings were “so descriptive” of the figures within that they were “not trademarks.” The Court of Customs and Patent Appeals (now the Federal Circuit) reversed. That court held that:

 

“[w]hatever information a drawing of Superman or Batman or Joker might convey to the average prospective purchaser regarding a doll resembling one of the related fictional characters is wholly dependent on appellant’s efforts to associate each character in the public’s awareness with numerous attributes, including a single source of sponsorship.”

 

The court found that the “information-conveying aspect of the drawing” did not “conclusively eliminate its possible trademark role” finding instead that DC’s efforts to link the characters and the brand in the public mind were the critical factor which enabled the fictional characters to serve as trademarks.

The issue of “trademark use” does not seem to apply to actions under 43(a) of the Lanham Act (although the Courts are far from clear on this point and argument to the contrary can also be made).  Thus for example, a celebrity can sue for unauthorized use of her face on a product even though her face has never been used as a trademark to sell anything.  While consumers certainly might recognize the face and associate it with the celebrity, there is no need for “trademark use” per se.   Actions seeking to protect trade dress are further examples where trademark use is never an issue (perhaps it is just implied, although even that has never been held to be so).  An interesting case involving Pan Am’s attempt to protect its famous “Flight 001″ designation under Section 43(a) illustrates this nicely.  “Flight 001″ although a once famous flight number for Pan Am’s “around the world” flight from NY to Tokyo, was never used as a trademark per se. Ultimately Pan Am lost on the grounds that the original Pan Am never  obtained any trademark rights in the FLIGHT 001 mark.  The Court stated that Pan Am neither made “trademark use” of, nor did it “obtain any trademark rights” in the Flight 001 mark. This was due to the fact that there was no evidence whatsoever that Pan Am did anything more with the phrase “Flight 001″ other than use it as any airline would use a flight number.  The Court implied that “trademark use” was not a requirement when it stated “Nor has plaintiff demonstrated that the term Flight 001 is so associated with Pan Am that use of the FLIGHT 001 mark-without any accompanying references to Pan Am-constitutes a representation that the source of the goods or services is Pan Am”.  Mere association of a term with a unique source is thus presumably enough to allow a plaintiff to protect this term like a trademark.

In the context of registering a trademark, a specimen of use will be deemed unacceptable when it demonstrates “merely ornamental” use.   This is perhaps one of the most subjective areas in all of law.  It tries to answer the question whether a consumer will believe the mark at issue to be a trademark or whether it will instead be seen as something else. A classic example is in the context of t-shirts.  As a general rule the USPTO will consider large words emblazoned on the front of a t-shirt to be nothing more than ornamentation for the t-shirt, whereas the same word appearing smaller on the breast of a shirt, will typically be considered a proper trademark use.  Even this “rule” has recently been held to no longer be a per se rule but, instead, large designs on clothing must be examined on the facts of a particular use (the TTAB noted the recent popularity of fashion brands being used boldly on apparel). This analysis is completely driven by our understanding of consumer expectations about trademarks.  Sometimes this is nothing more than common sense but other times it can be a very difficult question to answer without taking a well designed survey addressing the issue.

A TTAB case from 2008, In Re Tire Mart illustrates the difference between trademark use and merely ornamental use.  The trademark at issue was this:

 

tire mart bolt trademark Trademark Use

 

and the specimen of use was this:

tiremart tread Trademark Use

 

What do you think?  Would you think that the lightning bolt is a trademark or mere ornamentation if this is all you saw?  Not an easy answer is it?  If after seeing this, you then saw another tire with a similar lightning bolt design on its tread would you think that the tire is from the same company (e.g. it is a trademark), or would you think it is just another tire with a lightning bolt design (lightning bolt designs being not all that unusual and perhaps it is being used to indicate that the tire is good in all kinds of weather)?  After much analysis, the TTAB decided that this was indeed a trademark use.  The reasons it gave were as follows:

Although the examining attorney proffered the pictures of other tires with various tread designs to show that “tire tread consists of many designs that resemble recognized objects”, there were in fact no “designs resembl[ing] recognized objects,” on the tire treads depicted, and the examining attorney did not specifically identified any.

The embossed mark is not a “tread” in the sense of tire lugs.    The specimens of record clearly show the raised area containing three imprinted molds of the alleged mark have a considerably lower profile than the adjacent tread. Accordingly, it is unlikely that the raised area containing the lightning bolt designs would contact the road surface under normal use.    Moreover, the mark does not appear “where the rubber meets the road,” but rather wraps laterally around the edge of the outside shoulder and onto the exterior face of the tire.

Because the mark does not appear to be tire tread, nor does it even appear on the part of the tire usually covered by tread, any argument that purchasers would simply view the mark as an ornamental tread design is substantially undercut.

There is no evidence that the lightning bolt designation and its placement on the goods – or designs similarly placed – are widely-viewed as mere ornamentation in the tire industry in the way that, for example, variations on whitewalls are viewed.

Comment:  Without proof of acquired distinctiveness (consumer awareness as a result of advertising and long term use) these are very subjective calls.  Here’s an example…the back of a Banana Republic credit card:

 

banrepcard Trademark Use

What do you think?  Trademark?

NO, said the Trademark Trial and Appeal Board. In re Banana Republic (Apparel), LLC, Serial No. 78485048 (May 29, 2007)