Trademark in Characters
In the past two posts, I wrote about how copyright law is applied to fictional characters. This post will cover how trademark law applies to fictional characters.
Trademark law can be complicated and I won’t be going into the exceptions to the rules and the exceptions to exceptions (yeah, it’s like that) in this post. Instead, I’m trying to provide a brief overview of trademark law and apply it to fictional characters – it’s a very different look at how characters can be protected compared to copyright.
The Lanham Act is the federal law that governs trademarks, but each state also has its own trademark laws that apply in addition to federal law. This post focuses on the use of characters as trademarks under the Lanham Act since it applies across the U.S.
What is a trademark?
A trademark is anything that acts to identify the source of goods or services. Typically, these are logos, business names, and slogans, but can also include things like colors, product configurations, and trade dress.
For something to be considered a trademark, it must be used in connection with the use or sale of goods or services. Otherwise, it isn’t being used as a trademark and the use won’t be protected by trademark laws. The trademark rights you gain are also specific to those goods or services.
Can a Fictional Character be a Trademark?
Yes, the name of a fictional character or its graphical representation can be registered as a trademark if it is being used as a trademark. A fictional character can be used as a trademark in many ways, such as using the character as a logo for a business or for retail items.
For example, Disney has many federal registrations for its characters that are used as trademarks, including Mickey Mouse and Minnie Mouse. As does Nintendo. Here. Are. A. Few. Recognizable. Examples.
However, note that they are all tied to specific goods or services. Registration No. 5,027,809 (depicting Mickey Mouse) is for “Binders; bookends”, and Registration No. 5,027,915 (depicting Minnie Mouse) is for “Children's multiple activity toys; Toy rockets”.
That’s because trademark rights do not protect the character on its own – that protection is provided by copyright laws, which was covered in the previous posts. A federal trademark registration protects the use of the mark in connection with the listed goods or services. In the examples above, the Mickey Mouse logo will be used on the binders or packaging and the Minnie Mouse logo will be used on the toys or packaging.
This also means that someone would be infringing trademark rights if they start using the registered trademark in connection with the sale of the same or similar goods listed in the trademark registration.
But there are exceptions and other factors that can complicate things, such as fame of a mark, likelihood of confusion, and other rules relating to subject matter such as national symbols.
But generally, the trademark protection a fictional character receives will be limited to the use in connection with goods or services.
What are Trademarks Rights?
Trademark rights give the owner of a trademark the exclusive right to use a trademark in connection with the sale or use of goods or services and to prevent others from using a trademark that could cause confusion with your customers. This is called a “likelihood of confusion”.
Trademark rights are created in two ways – through “common law” use and through registration at the state or federal level.
Common law trademark rights arise in the places where a trademark has been used in connection with goods or services. For instance, if you are using a fictional character in the logo for your business and are selling your goods (let’s say it’s video games) online, then you’re likely building common law trademark rights in the areas that people are downloading your game. Common law rights typically do not extend beyond those territories, though.
Registering that trademark with the US Patent and Trademark Office (“USPTO”) provides you with a handful of significant benefits that you wouldn’t have received otherwise, such as nationwide protection of the trademark (not just in the common law territories) and a presumption that you’re the owner of the trademark in case a dispute arises.
How Aren’t Trademarks Protected?
There are many ways that trademark protection is limited or even not granted, including nominative use, ornamental use, and (importantly for this post) names and designs of characters in creative works. But I’m going to focus on the scope of protection and trademark non-use.
First, the scope of protection for a trademark plays a large role in how much protection it receives. When registering a trademark, you will need to describe the goods or services that are provided under the trademark. Here’s the USPTO’s trademark ID manual it uses for pre-approved descriptions. That trademark registration will then protect the use of the mark in connection with those goods or services and any other goods or services that are close enough to cause a likelihood of confusion.
For example, if you use a fictional character for the logo of your book series and have registered that trademark with the USPTO, someone else could not also start using the same or similar character for their book series. But someone might be able to use the same or similar character for a different type of business such as a clothing line.
Trademark non-use is also an important exception to trademark infringement claims. For someone to have a trademark infringement claim against someone, the claimed infringing use must be a trademark use – use of a mark in connection with goods or services. Just saying the name of a fictional character or showing it in a movie generally isn’t a trademark use, but there could be other issues involved such as copyright infringement.
Relationship to Copyright
While trademarks are protected by different laws than copyright, they often overlap in this context because a fictional character can be protected by both trademark and copyright. Also, even if someone’s use of a character isn’t a trademark use, it could still be copyright infringement if they aren’t the owner of the copyright in the fictional character.
I hope you’ve found this series helpful! If you’re interested in learning more or registering a copyright or trademark, feel free to contact us – we’d be happy to help.
Read the original post, "Copyright in Characters: What Can I Use?"
Notice: This post is for informational purposes only and is not a substitute for professional advice based on a review of individual circumstances. Please contact an attorney regarding your particular legal issues.