INTA Bulletin

October 1, 2015 Vol. 70 No. 17 Back to Bulletin Main Page

How to Protect Rights in Advertising Characters Under U.S. Law

Under U.S. law, the United States Patent and Trademark Office (USPTO) will generally refuse to register the name or design of a fictional character used in a creative work only to identify the character itself. See T.M.E.P. § 1202.10. However, while a fictional character is not registrable per se, the USPTO will allow a character name or design to be registered where it identifies and distinguishes a source of goods or services. Because major brands often make recurrent use of fictional characters in promotional campaigns, which blurs the line between advertising and entertainment, the foregoing distinction often poses difficulties for companies that seek to protect their rights in these advertising characters.

This article provides an overview of steps that companies may take to protect their trademark and trade dress rights in characters integral to their branding. Part I of the article examines ways for companies to obtain federal trade-mark registrations in connection with advertising characters. Part II explores protection strategies for companies for their advertising characters under the Lanham Act.

Part I: Protection by Federal Registration
As noted, a party may register the name or design of a character where it identifies and distinguishes a source of goods or services. However, the use of a character in advertisements for a good or service does not necessarily create a direct association between the character’s name or image and the product offered, and the USPTO is often very partic-ular about what evidence it will require from an applicant. See generally In re Hechinger Investment Co. of Del., Inc., 24 USPQ2d 1053 (T.T.A.B. 1991) (affirming the USPTO’s refusal to register the design of a dog character in connection with retail services). The USPTO also separately refused to register the name of the dog character at issue in In re Hechinger for the same services.

Character Monikers
Because of the strict examination process by the USPTO, the specimen of use selected by an applicant for the name of an advertising character is crucial. The USPTO’s differing decisions regarding the word mark TONY SINCLAIR (for TANQUERAY gin) and the word mark THE MOST INTERESTING MAN IN THE WORLD (for DOS EQUIS beer) make this clear. See U.S. Appln. Ser. No. 78/528,607 and U.S. Reg. No. 3,771,331, respectively. The USPTO refused to register TONY SINCLAIR for spirits after finding that the specimen submitted by the applicant used the name “Tony Sinclair” only to identify the name of the pictured character and not the advertised gin. However, the USPTO accepted the specimen submitted in support of registration of THE MOST INTERESTING MAN IN THE WORLD for beer. In both cases, the fictional characters were live persons portrayed by actors. For purposes of comparison, the two specimens are pictured side-by-side below:

Interestingly, while the USPTO rejected the specimen pictured above (on the left) in support of registration of TONY SINCLAIR for spirits, it later accepted a somewhat similar specimen (part of which is pictured below) as sufficient evidence of use of the mark for an interactive website relating to alcoholic beverages and cocktails. See U.S. Reg. No. 3,453,184 (canceled January 30, 2015, for failure to file a declaration of continued use).

These differing outcomes suggest that a company facing difficulty finding an acceptable specimen of use supporting registration of a character name for its actual product should consider seeking to register the mark for any entertainment services that it incorporated into its larger branding campaign, as it may be easier to find an acceptable specimen supporting this use. Brands also should consider deploying advertising characters on interactive websites or in other entertainment properties for this purpose.

Designs of Characters
A company also should consider seeking to register the design or image of a character used in advertising. However, it should bear in mind the importance of selecting an adequate specimen to support registration, especially where the mark to be protected is the design of a live-action character portrayed by an actor in television commercials.

One company that successfully protected the image of a character is Progressive Casualty Insurance Company. Most Americans are familiar with Progressive’s series of television commercials featuring a woman named Flo, donning a PROGRESSIVE apron and having distinctive hair and makeup, selling insurance to customers. In February 2015, Progressive registered the design of Flo pictured below for insurance and related services and masquerade costumes (see U.S. Reg. No. 4,687,162):

Progressive’s road to registration of the above design, however, was a difficult one. Progressive initially submitted as specimens screen shots from Progressive’s website showing various photographs of Flo, but received an initial refusal to register after no screenshots showed the mark exactly as applied for (e.g., Flo’s waist was a different size, her poses and facial expressions were different). To achieve registration, Progressive ultimately submitted as substitute specimens several videos of commercials featuring Flo, and amended the drawing to use dotted lines to reflect the different poses and facial expressions used by the live action character in the ads. Progressive also was forced to strike bobblehead dolls from the application’s identification of goods and services after the examiner found the doll to be very different in appearance from the appliedfor mark and thus requiring a separate registration.

Signature Phrases of Characters
Companies also should consider registering signature phrases associated with, and/or incorporating the names of, their advertising characters. For example, the owner of the registration for the mark THE MOST INTERESTING MAN IN THE WORLD also registered STAY THIRSTY, MY FRIENDS (the line associated with “The Most Interesting Man in the World”) for beer (U.S. Reg. No. 3,410,073). In connection with the popular “Mayhem” character featured in its television commercials, Allstate Insurance Company owns a registration for MAYHEM for insurance services (U.S. Reg. No. 4,137,610). Like many other companies, All-state also initially faced difficulties registering this mark but overcame the Examiner’s refusal by submitting a substitute specimen. Allstate also obtained a registration for the larger tag-line MAYHEM IS EVERYWHERE (U.S. Reg. No. 4,243,668). Other examples of catchphrases that are or were the subject of federal registra-tions include HE LIKES IT, HEY MIKEY for cereal (used in ads for LIFE cereal) (U.S. Reg. No. 2,568,043, canceled in 2009 for failure to file a declaration of continued use) and WHERE’S THE BEEF for restaurant services (used in ads for WENDY’S fast food restaurants) (U.S. Reg. Nos. 1,410,896, 1,414,006 and 4,275,760).

Part II: Protection Under the Lanham Act
Part I of this article discussed ways for companies to obtain federal registrations to better protect their advertising characters. Because trademark rights in the United States arise out of use rather than registration, a federal registration is helpful but not necessary for a company to enforce its trademark rights. Accordingly, where a company believes that its rights relating to a character already were infringed, it should consider seeking recourse under the federal Lanham (Trademark) Act even in the absence of a federal registration.

Character Names
A party may use Section 43(a) of the Lanham Act to enforce its trademark rights in the name of an advertising character. See, e.g., Ligotti v. Garofalo, 562 F. Supp. 2d 204 (D.N.H. 2008) (finding, inter alia, the name THE GUY FROM BOSTON, used for a character who was first deployed in cigar advertisements and evolved into a pop culture figure appearing in various media outlets, to have acquired secondary meaning and thus be protectable under the Lanham Act). The court in Ligotti found THE GUY FROM BOSTON to be protectable in connection with the character’s Internet and other media “performances,” not cigars, reinforcing that it may be easier for a company to protect rights in an advertising character used in entertainment services. Notably, Ligotti held the actor portraying The Guy From Boston, rather than the owner of the cigar shop who conceived of and initially deployed the character in advertising, to own the trademark rights in the character’s name. This highlights that companies should make sure to exercise full control over their advertising characters and/or take the contractual precautions necessary to preserve their ownership of rights relating to these characters.

Trade Dress
Companies also may use their larger trade dress rights to protect advertising characters. In the United States, trade dress encompasses part or all of the total image or overall impression created by a product or its packaging, and/or the elements together comprising that overall image. See 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. 2015) at § 8:4. While companies may obtain federal trademark registrations for their trade dress, like trademark rights, trade dress rights in the United States also arise from use and thus may be enforced even in the absence of a federal registration. Thus, brand owners may use enforcement of trade dress rights to protect characters that are a part of that trade dress.

For example, Philip Morris never obtained a federal registration for the design of the “Marlboro Man.” However, it has enforced its rights in the image of a cowboy used for cigarettes by alleging infringement of its larger Western themed trade dress. See, e.g., Philip Morris USA Inc. v. Cowboy Cigarette Inc., 2003 WL 22852243 (S.D.N.Y. 2003) (finding Cowboy’s cigarette packaging and ads, featuring the image of a cowboy, to infringe Marlboro’s trade dress rights). Interestingly, in an earlier decision, that same court found Marlboro’s Western-themed trade dress to be inherently distinctive as used for cigarettes. This proved very helpful for Marlboro, as the company accordingly did not need to prove that consumers associated cowboy characters used for cigarettes with the MARLBORO brand to make a claim under the Lanham Act against cigarette companies using these characters. See Philip Morris Inc. v. Star Tobacco Corp., 879 F. Supp. 379 (S.D.N.Y. 1995). Other companies should, like Marlboro, adopt advertising characters not traditionally associated with the products that they offer if they want to maximize the protec-tion of their advertising characters under the protections afforded by the Lanham Act.

Progressive also used similar trade dress arguments to protect its rights in Flo’s image. In 2014, before it registered the design of Flo for insurance services and masquerade costumes, Progressive filed a trademark infringement, dilution and unfair competition lawsuit in federal court against a manufacturer and retailer offering unauthorized “Flo” costumes. Progressive Casualty Insurance Co. v. Better Badges, Case No. 14-CV-0203 (N.D. Ohio 2014). The court ruled that Progressive owns protectable trade dress rights in the design of Flo. The court also found the design to be a “famous” mark (a finding that Progressive later initially referenced to support registration of the mark for Flo-shaped bobblehead dolls).

In summary, brand owners may adopt a number of approaches to help protect their trademark rights in characters used in advertising campaigns. By improving their understanding of these options, companies may better protect their rights in existing characters and introduce new characters in a way that best
facilitates their protection.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2015 International Trademark Association