You can trademark a character from your video game or comic book if it is used to identify your company as the source of a product or service to consumers.
That is, you can trademark a character if it is used in the way that a company logo is used. Consumers must view that character as identifying you as the source of your video game, comic book, or other product.
Why is this?
This Article will discuss the nature and requirements of US trademark registration, first. Then, it will, in light of that basic trademark information, outline how you can trademark a character from your video game or comic book.
Trademark Registration as Consumer Protection
The first thing to understand about trademark registration is that it is, in essence, a consumer protection measure.
This is in contrast to the purpose of copyright and patent registration under US law.
Those forms of intellectual property protection are designed to allow a creator, author, composer, or inventor the right to profit exclusively from their own creative output. Because a writer wrote a novel, she has the right under law to earn royalties from the sale of the book on Amazon or elsewhere. Because the engineer invented the plasma rifle, she has the right to sell the design to the US military.
With trademark registration, it is not relevant who came up with the idea for the business name, product name, slogan, or character. It isn’t relevant who designed the logo or drew the character in question.
What is relevant is how it the “mark” is being used in trade.
That is, the question is whether the name, logo, or character is exposed to consumers across state line in association with the sale or transaction of a specific product or service.
Is it being used to identify the source of that product service, in other words? Is that swoosh on the side of your shoe used to communicate to consumers that the shoe was manufactured by the Nike Corporation?
With regard to characters, the question is the same: “Does the appearance of the X-Man Psylocke on the front of the comic book indicate that the comic book is the product of Marvel Comics?”
Yes. Yes, it does.
We know this because the character Psylocke is the registered trademark of Marvel Comics. (Or, more specifically, the character is the registered trademark of an entity called “Marvel Characters, Inc.”)
The purpose of trademark registration, in short, is to ensure that consumers know what they are buying—and from whom.
With What Good or Service Is the Trademark Character Associated?
A trademark registration is always applied for in relation to specific goods or services, as noted above. Thus, it is common for many trademark registrations to be issued for a character in relation to different products or services.
For example, our friend Psylocke is the subject of 2 different trademark registrations. Marvel Characters, Inc. filed the first registration under Class 16 for “Printed comic books.” It filed a second registration for the name Psylocke under Class 41 for “Providing online non-downloadable comic books.”
In another, more expansive Marvel example, the original superhero team Fantastic Four is the subject of another trademark registration under Class 9 for:
Apparatus for recording, transmission, processing, and reproduction of sound, images, or data; digital media, namely, pre-recorded downloadable audio and video recordings, CDs, DVDs, high definition digital discs, mp3 files and mp4 files featuring live-action entertainment, animated entertainment, and music; fiction and non-fiction audio books on a variety of topics; downloadable ringtones featuring music and other sounds, via a global computer network and wireless communication devices; audio and visual recordings featuring live-action entertainment, animated entertainment, music, and games; musical recordings; downloadable electronic publications in the nature of comic books, and comic magazines in illustrated form; downloadable game software; downloadable mobile applications for viewing, playing, and purchasing animated entertainment and electronic games; downloadable video game software; downloadable computer software for the administration of learning activities; encoded electronic chip cards containing programming to access and utilize music, stories, dramatic performances, non-dramatic performances, learning activities, and electronic games; computer hardware and computer peripheral devices; mouse pads; wrist and arm rests for use with computers; cell phone battery chargers; cameras; digital cameras; optical, digital versatile, and compact disc players and recorders for audio, video, and computer data; radios; audio speakers; digital photo frames; headphones; earphones; ear buds; walkie-talkies; telephones; headsets for cellular telephones; adapters for cellular telephones in the nature of power adapters; cell phone cases; eyeglasses; sunglasses; eyeglass and sunglass cases; binoculars; decorative magnets; microphones; protective covers and cases for tablet computers; radio frequency authentication device in the nature of identification tag readers and radio frequency transmitter; smart watches; fitted plastic films known as skins for covering and protecting electronic apparatus, namely, mobile phones, portable music players, mobile computers, and tablet computers; video projectors; video projector with wireless connection capability for use with wireless communication devices; karaoke machines; bicycle helmets; flotation vests; protective face masks not for medical purposes, namely, for the prevention of accident or injury; protective helmets for sports; snorkels; swimming goggles; swim masks.
Did you get all that?
The point is not to inundate you with text but to illustrate that you can trademark a character—but it has to be in relation to specifically identified products or services.
If you just want to protect your rights to the cool drawing you scrawled on your bathroom wall with a Sharpie, that is what copyright protection does.
If you want to sell a swim mask with the Mr. Fantastic and the Human Torch on it, trademark registration is the right form of legal protection for you.
The Name of the Character vs. the Image or Design of the Character
All of the Marvel trademark registrations noted above are for what are known as “word marks.” That is, they are registrations for the names themselves.
Thus, the Fantastic Four swim mask covered by the registration with the ridiculously long description above would, in fact, only be protected from trademark infringement under this particular registration if it had the name “Fantastic Four” printed on it.
If it lacked that name but the swim mask, instead, featured a picture of Mr. Fantastic or the Human Torch on it (or the ever-lovin’, green-eyed Thing!), a different registration would be needed.
A trademark registration for a logo or the graphical representation of a character is called a “design mark” registration.
To trademark a character’s image or appearance, the question will be whether that design identifies you as the source of the specific product or service for which it is registered as a trademark to the public.
Does the mere sight of the Human Torch printed on, say, a drinking glass make the consuming think of Marvel Comics as a producer of glassware? Or would it simply be perceived as a decoration on a glass manufactured by, well, anybody else?
The allegation by the US Patent and Trademark Office (USPTO) that a design is “merely ornamental” has been fatal to many trademark registration applications.
To trademark a character’s design or appearance, that design must serve the same function as a logo: brand identification. When you see the Nike swoosh, you think of the Nike Corporation as a manufacturer of athletic footwear.
When you see a picture of Spider-Man, do you think of glassware? Or just comics and movies (and toys, perhaps)?
You get the picture. (Pun intended.)
Trademark a Character: How to Get Started
The first step required to trademark a character is speaking with an experienced trademark attorney. While it is possible to DIY a trademark registration or to try to save a buck with an online non-attorney filing website, retaining a licensed US trademark lawyer to advise and assist you offers a number of advantages.
In particular, a trademark attorney can:
- Offer legal advice.
- Properly conduct a clearance search prior to filing.
- Draft your trademark registration application to avoid obvious errors.
- Respond to USPTO rejections.
- Ensure that you do not miss required filing deadlines.
- Monitor your mark for infringement after registration.
- Respond to infringement on your behalf.
A discount form-filling website can do none of these things, other than to let you inexpertly fill in a web-form application yourself and take your money to file it.
Retaining a competent Michigan trademark attorney to assist you will maximize the odds that you successfully trademark a character.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting entrepreneurs, solopreneurs, artists, musicians, start-ups, and larger enterprises with robust intellectual property portfolios, and others in all industries with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.