Duets Blog : Creativity and the Law: DuetsBlog

Last week, I blogged about a federally-registered emoticon trademark, one that I discovered at 30,000 feet, here. Emoticons as trademarks? Does the idea make you want to roll your eyes like Saturday Night Live's Kristen Wiig as Aunt Linda? Brace yourself, they appear inclined to stay, for at least a while!

Two weeks ago I couldn't have told you what an emoticon is or whether it can satisfy the three necessary elements of a trademark, namely, that it: (1) identify, (2) distinguish, and (3) indicate the source of goods or services. In case you're where I was a couple of weeks ago, here is what Wikipedia says about emoticons:

An emoticon is a textual expression representing the face of a writer's mood or facial expression. Emoticons are often used to alert a responder to the tenor or temper of a statement, and can change and improve interpretation of plain text. The word is a portmanteau of the English words emotion (or emote) and icon. In web forums, instant messengers and online games, text emoticons are often automatically replaced with small corresponding images, which came to be called emoticons as well.

ComputerUser has a helpful listing showing a wide variety of textual emoticons and their meanings. MSN provides a collection of image emoticons and their textual equivalents, here, and Yahoo does the same, here, some of which have motion and are animated. Sharpened Glossary has a search tool that also ranks how common a particular textual emoticon is, here.

I'm still not sure there are any emoticons that actually perform a trademark function yet, but there are more than a few federally-registered (enjoying presumptive distinctiveness and secondary meaning), albeit none with any actual showing of acquired distinctiveness or secondary meaning, as most non-traditional trademarks must establish before registration or protection is allowed.

In any event, here are some federally-registered examples of textual emoticon trademarks:

1. :o) (clothing and online retail store featuring clothing and souvenirs) (smiley face)
2. :o) (perfumes) (smiley face)
3. :-)  (clothing) (smiley face)
4. :-)  (jewelry) (smiley face)
5. :-(  (greeting cards and t-shirts) (frowning face)
6. ;)   (alcoholic beverages, except beer) (wink) 
7. *-)- (communication services on board air crafts) (blogged about before here)

A few questions about trademark scope of rights emerge from this listing. Does picture-word equivalency have a place in testing likelihood of confusion with emoticon trademarks, as it does in other contexts? For example, does the wink emoticon in (6) shown above have rights broad enough to reach Wink Wine Bar in Austin, Texas? What if they bottle their own Wink brand wine? Also, is there really enough difference between the various "smiley face" emoticons to coexist on clothing coming from different and unrelated producers? And, aren't perfume and jewelry typically found to be related to clothing, for likelihood of confusion purposes? If so, how do identical emoticons coexist as trademarks for such goods? Are coined emoticon trademarks (presumably like the Aircell emoticon trademark in (7) shown above) stronger than ones with a common and understood meaning, like the "smiley face"?

As to the point about how long we might expect to have to deal with these beauties, it appears that T-Mobile has embraced the idea of using emoticons as trademarks too, with a pair of intent-to-use trademark applications for :) and ;) both in connection with cellular telephones, and the applications for these most basic of emoticons already have passed through the publication period unopposed, with Notices of Allowance issuing several weeks ago, here and here.

As the widespread use of hand held devices and the world of social networking expands, I suspect the prevalence of emoticon trademarks will expand too. So, what are some of the other likely trademark implications, besides scope of rights?

1. The Trademark Office and enforcement adversaries likely will ask, does the emoticon really function as a trademark to identify, distinguish, and indicate the source of goods or services?;
2. More specifically, is the emoticon merely ornamental, decorative, functional, descriptive, or informational?;
3. After all, TMEP 1202.03(a) indicates that "common expressions and symbols" such as the "smiley face" are "normally not perceived as marks"; and
4. When it comes to trademark registration, emoticons are not capable of standard character claims, even though they have no stylization (see TMEP 807.03(c));

So, how do other trademark types view emoticons as trademarks?

How about marketing types? Since emoticons are icons that express emotions, and brands strive to make emotional connections, your thoughts about emoticon brands and trademarks? 

Last, in case you're skeptical of all this emoticon trademark stuff, here is a commonly accepted emoticon for" eye-rolling": 8-)

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A couple of months ago there was quite a buzz about Holiday Inn's projected $4 million annual savings by moving to a leaner and greener direction with their adoption of LED lighting on exterior signage. 

As you may recall, back in June we blogged about Holiday Inn's interesting effort to federally register a pair of non-traditional lighting trademarks, one employing a green-colored lighting scheme and the other employing a blue lighting scheme: 

We had noted it would likely take a strong showing of "look for" advertising to overcome the registration refusals initially lodged by the Trademark Office.

Instead of attempting to overcome the registration refusals, however, Holiday Inn apparently has opted for a leaner approach and cost savings on the trademark front too, settling for Supplemental Registrations, a much dimmer form of protection -- offering no legal presumptions of validity, ownership, or exclusive right to use.

About the only meaningful benefit of a Supplemental Registration for a service mark is that it blocks and prevents others from obtaining Principal Registration for confusingly similar marks. Here are the official drawings associated with those newly issued Supplemental Registrations:

In addition to amending the applications to seek registration on the Supplemental Register, Holiday Inn tweaked the description of the marks to read as follows (for the green mark):

The mark consists of green lighting formed by four light fixtures placed in a symmetrical fashion near the entryway of the building. One set of two green lights is evenly placed on columns to the right and left of the entryway and direct the green lighting downward thereby casting a green shadow down the length of the column; while the other set of two green lights is evenly placed on the building wall above the entryway and direct the green lighting upwards, casting a green shadow up the length of the wall and roof overhang. The matter shown by the dotted lines is not a part of the mark and serves only to show the position of the mark.

Perhaps Holiday Inn will be back -- with a brighter approach down the road -- to seek Principal Registration after it believes it has sufficient evidence to establish acquired distinctiveness.

Any thoughts on how long that might take?

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Notice anything special about this pair of photographs featuring two different Holiday Inn front entrances? OK, putting aside that the one on the right -- with green lighting -- seems to have attracted, at least, a few cars, whereas the "blue light special" on the left appears to stage a full house with virtually every room light on, but ironically it reveals an empty parking lot.

Well, these aren't ordinary photographs, they are trademark specimens of use; Six Continents Hotels, owner of the Holiday Inn brand, claims that they depict a pair of non-traditional trademarks, having filed them with the U.S. Trademark Office in April 2009, and asserting that use of the "lighting" marks commenced back in January 2008. So, we aren't talking about the new H logo previously blogged about here or the old Holiday Inn word mark -- those are standard and traditional single-letter logo and word trademarks. In case you're wondering, no sign of any red or yellow lights for Holiday Inn, at least, on the Trademark Office database.

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