Llama Design Mark Fails to Function as a Trademark for Video Game Software, Says TTAB

The Board affirmed a refusal to register the design mark shown below for "downloadable video game software" on the ground that it fails to function as a trademark under Llanham Act Sections 1, 2, and 45. The mark comprises "a fanciful cartoonish image of a llama with the design of a treasure chest on the side portion of its saddle." The Board agreed with Examining Attorney Lleslie I. Richards that Applicant Epics's only specimen did not show use of the design as a source indicator. In re Epic Games, Inc., Serial No. 88233723 (May 26, 2021) [not precedential] (Opinion by Judge Albert Zervas). 

According to Epic, it introduced the llama item into its Fortnite video game in March 2018. The llama item is known to players, streamers, and fans as the "Loot Llama,” “Supply Llama,” or just “the Llama.” In game play, the Llama item serves a function familiar to many players (e.g., a resource cache), but is portrayed in a unique and unusual way. A player opens the llama item by pressing on the hand symbol. When opened, the llama disappears completely and the objects within fall to the ground, along with confetti. 

The examining attorney argued that the llama appears only as a character in the game, not as a source identifier. "[t]he only specimen showing the entire proposed mark appears to be under the ‘NEWS’ tab on applicant’s website, which appears to provide information or news about applicant’s goods. On that specimen, the mark merely floats around the background of the screen multiple times as a character appearing in the game." 

Epic disagreed that the llama is a character in its game. “[t]he Llama does not move, speak, or otherwise interact in any way with players or other objects. The Llama has no personality because it is an inanimate object within Fortnite. Lacking any personality, Applicant’s Llama simply does not meet the definition of the word 'character.'"

In Epic's specimens of use, only the "V3.3 Patch Notes webpage" (above) shows the mark intact and in its entirety.

The repetition of the llama on the specimen in varying sizes, portions and vividity detracts from Applicant’s claim that the single llama depicted in its drawing would be recognized as its mark. In addition, consumers considering the source of the webpage can look to the term FORTNITE which appears at the top left portion of the specimen. We thus find that the applied-for mark displayed on the V3.3 Patch Notes webpage is not used in a manner showing trademark use and does not function as a mark. 

 

The testimony of Epic's witness and the screenshots displayed in his declaration did not persuade the Board that consumers encountering llama design as depicted on the V3.3 Patch Notes specimen would perceive it as an indicator of source.

First, the applied-for design is not depicted in the first image; the saddlebag on the home screen differs from that on the drawing page. Second, the llama in the loading screen appears in what seems to be a scene from the video game and is not used in a manner to indicate source. Third, there is no claim of trademark rights through the designation “TM.” 

Epic argued that its evidence showed that the llama design had achieved acquired distinctiveness, but the Board observed that this was beside the point:

Applicant submitted a webpage as a specimen of use for “downloadable video game software,” and hence must meet the requirements for demonstrating that the webpage demonstrates use of the proposed mark as a source indicator for such goods. Its specimens of use do not show use of the llama as a mark to demonstrate that it functions as a source indicator for such goods.

And so, the Board affirmed the refusal.

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TTABlogger comment: The refusal did not apply to Epic's class 41 “entertainment services, namely, providing online video games," so this was not a total lloss for Epic. As to class 9, perhaps Epic may try again with better specimens of use?

Text Copyright John L. Welch 2021.