Board Rejects Video Game Character Face as Sufficient for Trademark Protection

The Trademark Trial and Appeal Board recently ruled that a video game character’s face, on its own, is insufficient to function as a trademark.
October 19, 2023 | In

Board Rejects Video Game Character Face as Sufficient for Trademark Protection

The Trademark Trial and Appeal Board recently ruled that a video game character’s face, on its own, is insufficient to function as a trademark. 

More Than a Face?

Osgoode Media sought trademark protection for an image of the face of one of its video game characters, “Maria.” The application indicated that the company planned to use the Maria image as a registered trademark. Maria appears in a game offered by Osgoode Media titled “Target of Desire: Episode 1.” 

The U.S. Patent and Trademark Office (USPTO) rejected the mark upon reviewing the application. While the Trademark Trial and Appeal Board says that the ruling does not create a “bright-line rule” against registering characters’ images as trademarks, it did note that a video game character cannot inherently function as a trademark. The TTAB noted that consumers who see Maria’s face may recognize Maria as a character, but her image alone is not enough to identify Osgoode Media as the maker of other games merely because they bear Maria’s image. 

In this case, the TTAB also determined that the Maria image hasn’t been used to identify the Osgoode Media brand enough to bridge the gap between a video game character image and a viable trademark. 

Arguments in the Video Game Character Trademark Case

The Maria case has a long and tumultuous history. After a trademark examiner rejected the mark in 2022, Osgoode Media’s Joseph Stallard appealed the decision. In the appeal, Stallard argued that the examining attorney had applied Section 1202.10 of the Trademark Manual of Examining Procedure (TMEP) incorrectly.  

Specifically, Stallard argued that consumers will identify Maria’s face with the video games produced by Osgoode Media, meaning that the Maria image will function as a trademark. In this argument, Stallard noted that the USPTO did not dispute that the Maria mark is associated with the Maria character, nor that consumers know Maria is a video game character. 

Citing In re Hechinger Inv. Co. of Del., the examining attorney argued that “A design of a character is registrable as a trademark only where the record shows that it is used in a manner that would be perceived by consumers as identifying the goods in addition to identifying the character.” The examining attorney did not find sufficient evidence that the Maria mark was used in such a manner.  

The examining attorney also found that the specimen Stallard submitted with the application came from a third-party site, was “not acceptable as a display associated with downloadable software, and does not show the applied-for mark as actually used in commerce.” 

In response, Stallard appealed the initial decision rejecting trademark protection for the Maria mark. Stallard also filed a case in the United States District Court for the Eastern District of Virginia.  

Stallard v. USPTO

The case, Stallard v. United States Patent and Trademark Office, was filed under the Administrative Procedure Act (APA). In it, Stallard challenges Section 1202.10 of the Trademark Manual of Examining Procedure, to which the examining attorney referred when denying Stallard’s application to register the Maria mark. TMEP 1202.10 states that “Marks that merely identify a character in a creative work, whether used in a series or in a single work, are not registrable.” 

Stallard argued that the USPTO wrongfully rejected the trademark application when the examining attorney relied on 1202.10 more than “any statute or case law.” Stallard’s complaint requested that the federal district court remove Section 1202.10 from the TMEP. 

The USPTO filed a Motion to Dismiss since Stallard’s appeal was still pending before the TTAB at that time. In March 2023, the Eastern District of Virginia granted the Motion to Dismiss. The court did not address the merits of Stallard’s claim; instead, it focused its analysis on whether the court had subject matter jurisdiction, given that the trademark appeal had not been completed before the TTAB. The court found that it could not hear Stallard’s case until the appeal before the TTAB had been completed. 

In August 2023, the TTAB completed Stallard’s appeal. In its decision, the TTAB upheld the previous decision that the Maria mark could not be registered as a trademark because it failed to identify the source of the goods on which it was placed. Whether Stallard will continue to pursue the case and in what venue remains to be seen. 

Applying for a trademark can quickly become complex. To ensure your application proceeds smoothly, speak to an experienced Los Angeles trademark attorney today.