Emoticons as Trademarks

By Steve Baird on April 5, 2010

Posted in Branding, Marketing, Non-Traditional Trademarks, Trademarks

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:

:o) (clothing and online retail store featuring clothing and souvenirs) (smiley face)
:o) (perfumes) (smiley face)
:-) (clothing) (smiley face)
:-) (jewelry) (smiley face)
:-( (greeting cards and t-shirts) (frowning face)
;) (alcoholic beverages, except beer) (wink)
*-)- (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?

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?;
More specifically, is the emoticon merely ornamental, decorative, functional, descriptive, or informational?;
After all, TMEP 1202.03(a) indicates that "common expressions and symbols" such as the "smiley face" are "normally not perceived as marks"; and
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-)

James Mahoney

Interesting questions posed, Steve, as usual. A couple of things quickly spring to mind, the most obvious of which is, “Can a commonplace ‘thing’ be commandeered as a trademark?”
For example, Coke, I think, has successfully trademarked their bottle shape because even if only some shards of it were available, it could still likely be identified as a Coke bottle. That’s different from a company trying to establish trademark claims for something like a traditional milk-bottle shape, as I understand it. (Side question: whereas a dairy probably can’t trademark the shape, could a clothing manufacturer? Or an alcoholic beverage company?)
Seems to this cavalier observer of trademark niceties that common emoticons are equivalent to milk bottles in that they are “common currency.” (Note to the curious: “common currency” is a writer’s device, and not a legal term.)
Now, distinctive expression of a particular emoticon is a different story because form, color, design, etc., all come into play with that. In that case, it wouldn’t be an emoticon any longer; it would be a mark. The Newbury Comics “kid’s face” mark is a case in point (sorry, don’t know how to embed links in LinkedIn comments).
And, just for fun, using the “Coke bottle shard” analogy, would the shards of an emoticon (period, comma, semicolon, etc.) still be recognizable as the trademark? That’s probably stretching the point, but maybe not.
To my mind, trying to trademark an emoticon is the same as the colleges who are trying to trademark a distinctive color for their athletic fields. Sure, you can try to do it, and the thinking goes something like, “Every time someone sees #-( they’re going to think of Uncle Halsie’s Hangover Cure.” But good luck with establishing that connection, and I hope Uncle Halsie has lots of spare cash to pay for all the trademark-protecting monitoring and infringement letters and notices.
In closing, let me note that my response to such dumb-bunny trademark pretensions is *-p
(*-p is a trademark of You Can’t Be Serious, But I’ll Bet You Are, Inc.)