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INTA Bulletin

December 15, 2017 Vol. 72 No. 21 Back to Bulletin Main Page

From Smiley to Sad Faces—Registering Emoticons as Trademarks


Emoticons are punctuation marks, numbers, letters, and graphics frequently used to express feelings or emotions. For example, punctuation marks can be arranged in such a way as to create a smiling face :-), a wink ;-), or a sad or frowning face :-( and letters can also be inserted to increase the number of emotions or expressions; for example, ;-P is used to represent a face with a tongue poking out.

They are commonly found in text messages, discussion forums, on social platforms and on other online platforms. Over time, emoticons have developed from simple punctuation to stylized graphics and even complex 3D designs. Emoticons are also increasingly used in marketing. Brands, including Chevrolet, Domino’s Pizza, McDonalds, Dove, Durex, and Always use them for advertising. In addition, technology companies and IT providers such as Apple, Google, and Microsoft, have created their own emoticons for devices, software, and apps.

Emoticons are sometimes differentiated from emojis. The former are markings that express facial emotions, while the latter are graphic icons representing many other things, such as: food, weather, activities, jobs, animals, nature, travel, and places. Simple emoticons are still the most popular.

Registering Simple Emoticons as Trademarks

The first issue to consider is whether a simple emoticon comprised of a few punctuation marks (without additional words or graphics) can indicate the origin of goods or services. Some would argue that emoticons are incapable of functioning as trademarks because they merely describe a feeling or emotion and, as such, are incapable of indicating the origin of goods or services in the absence of other distinctive elements.

The second issue is whether a simple emoticon is sufficiently distinctive to be capable of registration. Some countries prohibit the registration of symbols, letters, and numbers that are in common use, in the public domain, or in trade. The prohibitions are variously formulated, but the premise is the same. Successful registration depends upon the jurisdictions in which a particular emoticon is filed.

The U.S.—From Despair to Satire

A review of U.S. Patent and Trademark Office records indicates that a simple emoticon can in some circumstances be registered as a trademark in the United States. For example, Despair, Inc., (Despair) filed two U.S. trademark applications for a frowning face emoticon in 1998 and 1999, :-(, which were successfully registered in 2000 for greeting cards, art prints, posters, clothing, and retail store services.

The marks were registered under U.S. trademark registration nos. 2347676 and 2412079. It was reported that Despair wanted to satirize the absurdity of certain aspects of IP law, especially technology companies that it believed claimed overly broad IP protection. Despair issued a press release on its website stating that it had sued Internet users that used the emoticon. (The story was picked up in the press, and a press release on Despair’s website stated, “Despair filed suit yesterday in a US District Court in Dallas, alleging trademark infringement against over seven million individual Internet users. The company requested separate injunctions granted against each. It is believed to be the largest single trademark dispute in history.”). Afterwards, the company stated that the threat was a joke (see report in The New York Times). These trademarks are now deemed incontestable, have been renewed, and remain on the U.S. Register.

Various parties have filed additional U.S. applications for emoticon applications, such as U.S. application no. 78288813 for ; ) in Class 25 (filed on August 18, 2003, by Zappos.com, Inc.), and U.S. application no. 78624642 for ; - P in Classes 14, 16, 18, and 25 (filed on May 6, 2005, by Unique Product Designs, Inc.). The emoticons were rejected, but not on the basis of being emoticons. The first was refused due to a likelihood of confusion with U.S. trademark nos. 3068503 :-) and 2832142 large vertical wink face (see the USPTO decision). The second was abandoned because of formal issues, i.e., that the applicant failed to file for a statement of use or for an extension of time.
  
Other examples include U.S. trademark no. 75893756 for :-), which was successfully registered in Class 25. This was filed on January 10, 2000, by Stephen M. Engel and registered on March 14, 2006, but was not renewed. U.S. trademark no. 78259932 (small vertical wink face) was registered in Class 25 and is still in force (filed on June 9, 2003, by Icon DE Holdings LLC and registered on April 13, 2004). Similarly, VeryMeri Creative Media, Inc., applied for U.S. trademark registration of a heart for apparel in 2013. In 2014, it obtained registration no. 4539570 in Classes 22 and 39 for the emoticon depicted as broken heart emoticon

Will Brand Owners Be Smiling in Europe?

This depends on the jurisdiction. In Finland in 2006, Tuomas Joel Mattila registered trademark no. 236083 for smiley face emoticon :) for goods and services in Classes 9, 35, and 38. On August 13, 2012, the Finnish Supreme Administrative Court (Viestinnan Keskusliitto ry v Mattila, KHO, 2012:64, unreported KHO, (Fin), Finnish Supreme Administrative Aug. 13, 2012—Mattila) found that this designation was not a distinctive mark and that it could not be registered as a trademark. The court stated that this emoticon was well-known and should be available to everyone for commercial and other purposes. The smiley face was universally and indisputably recognized as a symbol conveying a positive mood and, therefore, was unsuitable as a designation of origin for products or services (page 18 of the judgment in the Mattila case; see also a comprehensive report on the judgment in an article by Pessi Honkasalo and Sanna Kaistinen published in European Intellectual Property Review (E.I.P.R) 2012, Issue 12, Comments, pp. 877‒879).

In Germany, Sebastian Gatzke filed German trademark application no. 3020080784180 for smiling face emoticon :-) in 2008, for goods and services in Classes 14, 16, 25, 28, 38, and 41. The German Patent Office refused registration of the application due to a lack of distinctiveness (see a decision of July 14, 2012, of Deutsches Patent- und Markenamt, case no. 3020080784180).

In 2011, the company Pricer AB filed winking emoticon silhouette ;-) for goods and services in Classes 9, 35, 37, and 42 as a European Union trade mark (EUTM) under no. EUTM 010083971.The European Union Intellectual Property Office (EUIPO) considered the registrability of the emoticon and decided that registration would be against the public interest (see EUIPO refusal decision dated October 3, 2011, on 010083971, ref. no .V2909 lEUOO/AD/cer). EUIPO stated that grounds for refusal must be interpreted in light of the public interest and that no single trader or business entity may obtain sole control over an emoticon. EUIPO added that the graphics were mundane and not characteristic enough to distinguish the mark which, as a whole, was not distinctive.

In addition to the cases of rejection above, there are also examples in European jurisdictions of the valid registration of simple emoticons as trademarks.

On June 29, 2007, the Russian telecommunication company Superfone filed winking face emoticon ;-) for advertising, communication, and broadcasting services in Classes 35, 38, and 41. The Russian Patent Office granted trademark no. 370513 in a decision dated January 27, 2009.

On August 1, 2006, the company Writer’s Block Ltd. filed for registration of the smiling face emoticon  and successfully registered it on February 2, 2008, as an EUTM in Classes 9, 35, and 38 under no. 005234661 for telecommunication and other services.

The Polish Patent Office granted a trademark registration in 2007 for simple facial graphic emoticon  to Santander Consumer Bank S.A under Polish Trademark Registration no. 217974 for computer programs and other goods and services, among others, in Classes 9,16, and 36.

Comparing the United States and Europe

In Europe, the registration of a simple emoticon is more complicated than in the United States. The registration of a facial emoticon would probably once have been easier in the EU, but EUIPO has become more strict and may now refuse to register an emoticon due to its lack of distinctiveness. Applicants at EUIPO and other European jurisdictions may need to include additional elements to make an emoticon distinctive and capable of registration.

Analyzing Pictorial Marks and Graphics

While there are few cases on the registrability of emoticons, there are many more cases that can be reviewed to assess whether an emoiji can be registered based upon the fact that it is a graphic. These cases have involved informative pictograms and symbols. Examples of pictograms include chrome cloud and green camera.

Both of these pictograms were the subject of EUTM applications, both filed by Apple Inc. (the first, no. 1111497, in Classes 9, 38, and 42; the second, no. 1183785, in Classes 9 and 38. Both were denied registration due to a lack of distinctiveness (see the decision of the First Board of Appeal of August 16, 2013, in case no. R 1666/2012-1, and the decision of the Fifth Board of Appeal of August 7, 2015, in case no. R 2985/2014-5). EUIPO equates emoticons with informative pictograms and treats them in a similar way. This is directly reflected in some EUIPO decisions emphasizing that there is no established practice for allowing simple pictograms or emoticons to be registered because they are not sufficiently distinctive and lack the essential feature of being able to indicate product origin; see point 25 of the decision from the Fifth Board of Appeal of April 25, 2016, in case no. R 1883/2015-5. Here the EUIPO said that “there is clearly no practice established of allowing simple pictograms/emoticons similar to the sign at issue, to registration.”

The national courts of the EU have also provided some points of reference. In the above Mattila case, the Finnish court compared the emoticon to the @ symbol and stated that the emoticon and typographical symbol @ were similar for the purpose of registrability. It is worth noting that there have been many unsuccessful cases in the EU of attempts to register the pure @ symbol as a trademark for various goods and services.

The characterization and validity for registration of a simple emoticon and the hashtag designation (#) are similar. A hashtag is used on the Internet to make it easier for users to find messages or posts with a specific theme or content. Attempts have been made to register pure hashtags in various classes. Examples of cases before EUIPO in which it refused to register a sole hashtag include a decision dated December 16, 2013, for green # (see Community Trade Mark (CTM) no. 012042222 in Classes 9, 38, 41, 42, and 45, dated December 16, 2013) and dated November 15, 2013, for Black # (see CTM no. 012042231 in Classes 9, 38, 41, 42, and 45, dated November 15, 2013). Both applications were filed by Castle Street Investments plc. EUIPO stated in the decision concerning the first mark that “the applied for mark consists of no more than a simple basic figure, which is not appropriate for identifying the origin of goods and services.” (See page 4 of the refusal of application.)

Using an Emoticon as a Domain Name

This is complicated. Some time ago, Coca-Cola used the www. smiley face. ws domain name and others including smiley faces, in a marketing campaign (smiling domain—click here for the Emoticoke video-advert on YouTube). How does a smiling domain work? It is not technically possible to register an emoticon in a domain name. Instead, a specific sequence of characters may be registered, which then gets converted into an emoticon. For example, the smiling domain of Coca-Cola www. smiley face .ws is xn--h28h.ws (click here for one example of a website that allows conversion of the code).The domain with the emoticon converted from a sequence of characters may be displayed as a link, such as on Facebook, but it is not possible to place or see it in a browser or search engine window.

The Coca-Cola smiling domain has the extension .ws, which is the extension of the Independent State of Samoa. Conversion into an emoticon domain is not currently accepted on domains such as .com, .net, .org, .eu, and many others that are commonly used. Therefore, a smiling domain with the above extensions cannot be registered. Only a few registrars, including Samoa, allow it.

The registration of a simple emoticon as a trademark is complicated and contentious. Given the current practice of EUIPO and a number of national trademark offices in Europe, it is doubtful whether simple emoticons will be considered distinctive enough to indicate the origin of a product or service there. In view of the difficulty in registering emoticons in a number of jurisdictions, it seems more practical to use simple emoticons without seeking registration. However, this applies only to simple emoticons consisting solely of punctuation marks. If an emoticon is accompanied by additional graphics or words, these may render the mark distinctive and capable of registration. Graphically creative and sophisticated emoticons may be capable of registration and should be analyzed separately for protection under trademark and copyright law.

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.  
 
© 2017 International Trademark Association