TMEP 1209.03(x): Historical Figure Names and Fictional Character Names

October 2017 Edition of the TMEP

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1209.03(x)    Historical Figure Names and Fictional Character Names

The determination of whether a mark comprising the name of an historical figure or a fictional character serves as a source identifier or is merely descriptive turns on whether consumers link the mark to a particular commercial entity or whether others have a competitive need to use the name to describe their products. See In re United Trademark Holdings, Inc., 122 USPQ2d 1796, 1799-1800 (TTAB 2017); In re Carlson Dolls Co., 31 USPQ2d 1319, 1320 (TTAB 1994). Thus, the case law has drawn a distinction between situations where the applicant owns intellectual property rights in the work(s) from which the character arose and those where the character is a historical figure or is in the public domain. In re United Trademark Holdings, 122 USPQ2d at 1799.

The Board has held that consumers reasonably expect goods and services bearing the name or image of a fictional character that is a proprietary creation of a business entity to emanate from, or be produced or marketed under license from, the entity that created the character and owns the right to profit from commercialization of it. In re Carlson Dolls, 31 USPQ2d at 1320.

However, a mark that identifies an historical figure was found to be merely descriptive because consumers do not necessarily link such a name or image to particular commercial entities as they do a fictional character. Id. (finding "[t]he likely reaction of ordinary consumers presented with ‘MARTHA WASHINGTON’ on tags attached to ‘historical dolls’ made to look like women in colonial clothing would be that the name indicates not the commercial source of the dolls, but rather is used as a description of the historical figure the dolls are supposed to represent").

Likewise, prospective purchasers expect goods, such as dolls, labeled with the name of a fictional public-domain character to represent the character. In re United Trademark Holdings, 122 USPQ2d at 1799. Thus, a mark that identifies a fictional public-domain character used on goods such as dolls is merely descriptive because it describes the purpose or function of the goods. Id. (concluding that "dolls described as or named LITTLE MERMAID refer to the fictional public domain character, and other doll makers interested in marketing a doll that would depict the character have a competitive need to use that name to describe their products").