Characters can be trademarks – IF you know how to use them!
By Michael Kondoudis, Small Business Trademark Attorney
This is our EASY guide to how to trademark a character.
Fictional characters can be valuable brand assets because they can communicate a brand so quickly and effectively.
Businesses are increasingly using characters as their trademark or company logo. They want to know “can a fictional character be a trademark?” and “how to trademark a character?” In fact, these are some of the most common questions we get.
If you need to answer these questions quickly, this guide is for you. In this EASY guide, we explain:
- What a trademark is and what they protect
- Whether a character can be a trademark
- Whether you should trademark a character
- The benefits of trademarking a character
- How to trademark a character
- When a character qualifies for trademark
- Should you work with a trademark attorney
Let’s get started!
What is a Trademark and What Do They Do?
A trademark is a marketing tool that identifies and distinguishes the products or services from a business or enterprise from those of the competition. The most common types of trademarks are names, logos, and slogans. Buyers use trademarks to pick among brands of products.
For something to be considered a trademark, including a character, it must be used to brand products or services. Otherwise, a fictional character isn’t being used as a trademark in a legal sense.
A trademark can be registered with the U.S. Patent and Trademark Office to secure enhanced protections, including exclusive nationwide rights. There are many benefits to federal trademark registration.
Can a Character be a Trademark?
Yes, the name and likeness of a character can be a trademark! Trademarking a character is the best way to protect it for your brand. When you trademark a character, you reserve it for your exclusive use. The U.S. Patent and Trademark Office (USPTO) accepts applications to trademark a character as a character trademark.
Can You Trademark a Character?
Yes, you can trademark the name and likeness of a fictional character if you it as a trademark to your brand your products or services. This use can result from selling products with the character’s image or using the character in your advertising. So, you can apply for a character trademark when that character serves as your company’s logo or brand name.
A well-known example of a character trademark is Mickey Mouse. The Walt Disney Company has a trademark registration for Mickey Mouse for use in a wide range of products and services, including toys, arcade games, computer programs and software, frozen foods, and cosmetics. Other fictional character trademarks include James Bond, Godzilla, The Pillsbury Doughboy, and The Cat in the Hat.
Not every character qualifies for trademark protection, however. For a character to be trademarked, the character cannot be too similar to other existing trademarked characters and must be used to brand products or services. Once a character meets these requirements, the owner can file for trademark protection.
Where Do You Get a Character Trademark?
You get a character trademark from the U.S. Patent and Trademark Office (USPTO). You must apply to the USPTO and navigate an examination process to get a trademark registration for your character. The USPTO grants character trademarks.
Do you need help with your trademark?
Should You Trademark a Character?
Yes. If you’re a small business and you’ve created a fictional character to represent your company, you should register that character as a character trademark. Characters are very effective trademarks, and trademarking your character is the best way to protect it in business.
What Are the Benefits of Trademarking a Character?
Character trademarks can be effective tools to communicate a brand. That makes them valuable and worthy of protection. There are many benefits to trademarking a character.
Firstly, when you trademark a character, no one else in your industry can register it, take it from you, and force you to change characters,
Only one business can own a character trademark in an industry, and it is typically the one that trademarks it first.
Secondly, trademarking a character comes with the exclusive right to use it. Here again, usually, only one business can use a character trademark in an industry, and it is typically the one that trademarks it first.
Thirdly, trademarking a character ensures that your character remains distinctive and identifiable by your customers.
Fourthly, trademarking a character permits you to use the ® symbol. This can deter would-be copycats from trying to imitate your character trademark.
Fifthly, trademarking a character comes with important legal presumptions and rights that make enforcing your ownership rights less expensive.
When you register a trademark for a fictional character, you are securing exclusive rights to use that character in connection with your products or services. This means that other businesses in your industry will not be able to register the same character and will not be able to use it without your permission.
For these reasons, trademarking a character can provide valuable legal protection and peace of mind.
The Top Six Reasons for Trademarking a Character
1. Exclusivity. Trademarking your character gives you the exclusive right to use it. Typically, only one business can use a character in an industry, and it is usually the one that trademarks the acronym first.
2. Legal Ownership. When you trademark a character, no one in your industry can register it and take it from you. Here again, typically, only one business can own a character in an industry, and it is usually the one that trademarks the character first.
3. Distinctiveness. A trademark for the character helps distinguish your products and services, meaning buyer loyalty for your high-quality product flows to you.
4. Cost-Savings over time. Trademarking your character comes with critical legal rights and presumptions that make enforcing your ownership rights less expensive if someone else tries to use your character without permission.
5. Deterrence. When you trademark your character, you can use the ® symbol with it. This can deter competitors from trying to imitate your character trademark.
6. Value. Having a registered trademark for your character can also make it easier to sell or license it because potential buyers or licensees will know that they can use the character without the risk of infringing on someone else’s rights.
Read our quick guide to all of the reasons to register a trademark.
Trademarking a Character
Trademarking a character is possible when it is used to identify the source of goods or services. For example, the “DONALD DUCK” name and image are both trademarks owned by the Disney corporation. Trademarking a character name and image will prevent competitors from using them to advertise or sell competing products or services.
Trademarking a character is no different than trademarking a name or logo. The character name or image must meet the same requirements as any other trademark; they are not automatically granted trademark protection. An essential requirement is that the character is distinctive. Also, the character must be used in commerce to be a trademark.
How to Trademark a Character
The process of trademarking a character is legal, and specific requirements must be met to trademark a character. The first step is determining whether the character is distinctive enough to qualify for trademark protection. The next step is to file a trademark application with the U.S. Patent and Trademark Office (USPTO). The application must include a description of the character and a list of the products and/or services with which it will be used. Once the application is filed, it will be reviewed by an examiner to ensure it meets all the legal requirements for trademark registration. If the application is approved, the character will be registered as a trademark and protected under federal law. This is an overview of how to trademark a character.
Do you need help with your trademark?
When Does a Character Qualify as a Trademark?
A character qualifies for trademark protection when two requirements are met.
Firstly, to trademark a character, you must use your character to identify your business, products, or services. If you show that your character is used as a brand, you’ll have a strong case for trademark protection.
Secondly, to trademark a character, the character must be “distinctive.” This means that your character should be unique and not too similar to another trademarked character. If you show that your character meets these criteria, you’ll have a strong case for trademark protection.
Note: The best way to ensure that your character is “distinctive” is to conduct a trademark search. The U.S. Patent and Trademark Office recommends that you consult with a trademark attorney because trademark similarity can be a complex analysis (see below).
Should You Work with A Trademark Attorney to Trademark a Character?
Yes! Working with an experienced trademark attorney often makes the difference between success and failure when it comes to trademark registration, especially when applying to trademark a character.
Studies of USPTO data show that applicants who work with a trademark attorney are 50% more likely to register their character trademarks. That makes hiring a trademark attorney an excellent investment, regardless of whether it is your first time going through the registration process to trademark a character.
Here are the reasons why this one decision makes such a difference
Trademark attorneys are skilled in navigating the trademarking process, a federal legal proceeding involving an agency of the Federal government. Trademarking a character is a complex process and requires a working knowledge of federal trademark law and the rules and regulations of the U.S. Patent and Trademark Office. Trademark lawyers understand the process, the pitfalls, and strategies to help register your character.
In fact, the U.S. Patent and Trademark Office recommends applicants work with trademark attorneys:
“we strongly encourage you to hire a U.S.-licensed attorney who specializes in trademark law to guide you throughout the application process.”
There are several reasons why the U.S. Patent and Trademark Office (USPTO) recommends hiring a private attorney. First, an attorney is familiar with the USPTO’s procedures and can ensure that the application is filed correctly. Second, an attorney can help search for existing trademarks to avoid potential conflicts. Third, an attorney can represent you in proceedings before the USPTO if there are any objections to the application.
Character Trademark Guidelines
1. Characters can qualify for trademark protection when they are used as a trademark.
2. To be registered as a trademark, a character must be used in commerce to indicate the source of goods or services.
3. A fictional character can be used as a trademark in many ways, such as using the character as a logo for a business or retail items.
4. Your fictional character can’t be too similar to another character already registered as a trademark.
5. The registration process can be long and expensive, so it’s essential to make sure that your character meets all the requirements before you begin.
How to Protect Your Original Fictional Character
Protect can your character trademark by:
1. Copyrighting the novel, story, play, movie, or book in which the fictional character appears. Copyrighting the underlying work will help you legally protect it from copying.
2. Trademarking the name or likeness of the fictional character. Trademarking the character will help you legally protect it from imitation by the competition.
3. Copyright the likeness or visualization (graphic representation) of the fictional character. Copyrighting the visual look of the character will help you legally stop others from unauthorized non-commercial uses.
Do you need help with your trademark?
FREQUENTLY ASKED QUESTIONS
1. Can you trademark a character name?
Yes, the name and likeness of a character can be a trademark! You can trademark a fictional character if you use their name as a trademark to your brand your products or services. Trademarking a character name is the best way to protect it for your brand. When you trademark a character, you reserve it for your exclusive use and prevent anyone else from trademarking the name for their business. The U.S. Patent and Trademark Office (USPTO) accepts applications to trademark a character as a character trademark.
2. Do you copyright or trademark a character?
You trademark fictional characters, including names and likenesses of fictional characters. Also, you can register trademarks for fictional characters with the U.S. Patent and Trademark Office (USPTO). When you register a fictional character as a trademark with the USPTO, you get the exclusive right to use the character’s name and image in connection with goods and services. This prevents anyone else from using the copyrighted character’s name or image without your permission. It also prevents competitors from trademarking the name and likeness for their products.
3. Trademark a character name?
4. How do you protect a character’s name?
Ready to take the next step toward trademarking your character?
We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your character, we invite you to book a FREE brand protection strategy session with us here.
For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.
Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).