Can you trademark a fictional character in the United States?

Can you trademark a fictional character in the United States?

When an author writes a story, a significant amount of time is spent developing the characters in the story.  When a story becomes popular, the characters are frequently used by people other than the author to try to make money off the character’s popularity.  It is important that an author use all methods available to protect the intellectual property that an author has created in a story.  In a prior post we discussed how an author can use copyright law to protect the fictional charters in a story.  In this post we will discuss how trademark law can to control the use of a fictional character from a story.

Fictional characters can be protected using trademark law, but the protections afforded under trademark law should not be confused for the protections  granted by copyright law.  A key point of law to keep in mind when discussing trademark law is that trademarks are used to indicate the source of goods or services.  Trademarks can only be infringed when there is a likelihood of confusion as to the source of goods or services.  The goods or services that the trademarked fictional character indicates could be a series of books by the author or other things related to the books, but the character must be an indicator of the source of goods or services for the character to be eligible for protection as a trademark.  Copyright law requires no such connection, copyright attaches at the time a work is fix in a tangible medium.

Trademark law may protect the names, physical appearance, catchphrases, and certain other elements of fictional characters, provided that they are used on goods or services, identify and distinguish the source of the goods or services from those of others, and are either inherently distinctive or have acquired secondary meaning.  The phrase “inherently distinctive” is reasonably well defined for trademarks in the traditional sense but less clear when the phrase is applied to fictional characters.  In the traditional sense “inherently distinctive” means a suggestive, fanciful or arbitrary mark; essentially a trademark that has nothing to do with the goods or services themselves.  The courts have not given a distinct rule on how to determine if a fictional character is “inherently distinctive” but it would be safe to assume that making the character as detailed and unique as possible would help a court find that the character is “inherently distinctive”.  The phrase “secondary meaning” indicates that a trademark is well known enough that in the consuming public’s mind  it identifies the source of goods or services.  A trademark can develop a secondary meaning after years of use.  Even if a fictional character is found to be not “inherently distinctive”, if a member of the public looks at the character and assumes that the goods came from the author, that would satisfy the secondary meaning test.

It should be noted that fictional characters which are in copyrighted works in the public domain, cannot be taken out of the public domain by using the character as a trademark.

Using a fictional character as a trademark has the same rights and limitations as a normal trademark.  The owner of the trademark has the right to exclude others from using the trademarked fictional character in commerce, but that right is subject to trademark fair use exceptions.

The use of a fictional character as a trademark can be a tricky, it is best to consult with an experienced trademark attorney to help determine the best course of action.