Precedential No. 23: As Used on Applicant's Specimen, Depiction of Computer Game Character Fails to Function as a Trademark

The Board upheld a refusal to register the mark shown below, for video and computer game software, finding that the proposed mark fails to function as a source indicator for the identified goods. Reviewing Applicant Stallard's webpage specimen of use, the Board 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." In re Joseph A. Stallard, 2023 USPQ2d 1009 (TTAB 2023) [precedential] (Opinion by Judge Thomas V. Shaw).

According to Stallard's application, "[t]he mark consists 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." Color was not claimed as a feature of the mark.

The Board observed that "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." (emphasis added). See, e.g., 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). The issue here was whether the proposed mark merely depicts a character in the game, or whether consumers would perceive the proposed mark, as it appears on the specimen of use, as a source indicator.

“The Board 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.’” Vox Populi, 2022 USPQ2d 115, at *2-3 (quoting Eagle Crest, 96 USPQ2d at 1229).

Applicant Stallard's specimen of use comprised an excerpt from a third-party webpage for an electronic retail store offering video games. The proposed mark is an image of the cropped head of a character named  “Maria” in the game “Target of Desire: Episode 1.” On the webpage, she is briefly described as follows: "Maria is a cryptic character. The only thing that she reveals about herself is that she ‘works at the University.’ She blogs (and is on social media) under the username of ‘IamNamedMaria’, where she speculates about the nature of reality."

The Board observed that there is no "bright line rule against registration of characters." The subject refusal was based on a finding that “[t]he proposed character mark, as used on the specimen of record, identifies only a particular character in a creative work." [emphasis by the Board].

We agree with the Examining Attorney that the record does not show that the public would perceive the mark as an indication of the source of the game such that it functions as a trademark. The evidence shows 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.

In Stallard's specimen of use, the proposed mark appears "mid-way down the page, below four images of the game’s other character, Maia, and below a three-sentence description of Maria." The position of the 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." Thus, consumers "would have no reason to think that the cropped image of Maria’s head identifies the source of the goods."

The Board therefore affirmed the refusal under Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127.

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TTABlogger comment: Doesn't seems worthy of the precedential label.

Text Copyright John L. Welch 2023.