Given the creative and financial investment that goes into developing a compelling character, a common ask from brands is whether characters can be protected as trademarks. The interest is certainly warranted. Unlike copyrights, U.S. trademark protection is not limited to a fixed duration.  So long as there is continuous bona fide use, the absence of genericide, and proper registration maintenance (for federal marks), trademark rights can potentially last forever.  From an enforcement perspective, it can be advantageous to have the ability to challenge a confusingly similar third-party character, even if there is not copying per se. 

In the U.S., the general rule is that if the name or depiction of a character merely serves to identify that character in the context of a creative work, then that name or imagery fails to function as a trademark and is unregistrable. 

However, in a recent precedential decision, the U.S. Trademark Trial and Appeal Board (TTAB) reiterated that there is no “strict or bright-line rule against registration of characters.”  In re Joseph A. Stallard, 2023 USPQ2d 1009 (TTAB 2023).   Pursuant to TTAB and Federal court precedent (as well as Trademark Manual of Examining Procedure 1202.10, for my fellow prosecution nerds), an applicant may circumvent a failure to function refusal if the evidence of record shows use of the character in a manner that purchasers would perceive as identifying the source of goods or services in addition to its character significance.  In other words, the character must serve a dual purpose.  A character may cross over into “brand” territory if, for example, it is displayed on the thumbnail icon for mobile application software, on the spine of a book, on the launch screen of a video game, or on point of sale displays associated with goods. 

With respect to the Stallard application, the Board affirmed that an image of a female video game character (essentially, a digital avatar) failed to function as a trademark because the specimen of use merely displayed the character on a website promoting the game. However, many brands have pursued and successfully secured trademark registrations that protect various aspects of well-known characters, such as Mickey Mouse, Barbie, Superman, the Geico Gecko and Daniel Tiger.  Protection strategies may include pursuing registration of the character's name or two-dimensional image, or even exploring whether a character’s costume might qualify as protectable trade dress, if distinctive and non-functional. 

As reaffirmed by the Board, the good news is that the law affords brands the opportunity to protect characters as trademarks.  Whether that pursuit will be successful requires an intentional, strategic, and bona fide effort to solidify the character as a brand symbol in the minds of consumers, in addition to being a beloved creative companion.