Trademarking emotions

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TRADEMARKIN

G EMOTIONS

KRISHNAVENI.SHEAD -RESEARCH



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INTRODUCTION

Trademarks serve as source identifiers by distinguishing the goods and services of one person or company from those of another. However, what is considered to constitute a trademark is defined differently in trademark laws throughout the world.

Traditionally, a mark will consist of a word, logo, or a combination of both. The word or words may be invented or may appear in dictionaries. A mark may also include letters, numerals, or combinations of both. A logo may be an abstract design, stylization or simple reproduction of everyday objects or images.



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Evolution

However, over time other elements besides words, logos or graphic designs have served to identify the source of goods or services, thus serving the function of marks. These are called nontraditional marks. Different countries grant them varying levels of protection. What is considered a protectable “nontraditional" mark in a country may not be granted any level of protection in another country.



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FEW EXAMPLES OF NON TRADITIONAL MARKS

• COLOUR• SOUND• TASTE• SMELL• SHAPE• SLOGAN• TRADE DRESS



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LATEST IN THE LIST…

The word emoticon is a combination of the words emotion and icon. Emoticon is a representation of a facial expression such as a smile or frown, formed by various combinations of keyboard characters and used in electronic communications to convey the writer's feelings or intended tone. . 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



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HISTORY

• In the year 1982, Scott Fahlman who had grown tired of geeky scientists who never got the joke. A member of a vanguard group of computer experts involved in the earliest online newsgroups, the Carnegie Mellon University researcher participated in e-discussions on topics as diverse as abortion and campus parking. Many in the newsgroup, he found, had caustic senses of humor, but without the benefit of facial expressions or vocal cues to indicate irony, their sarcasm was sometimes mistaken for spite.

• So he proposed in a newsgroup that posters use a digital smiley face, :-), and a virtual frown, :-(, to clarify the tone of their messages. Fahlman was pleasantly surprised when participants

began to use his "smiley" icons to denote emotive tenor.



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HISTORY….

• . In the two decades since, the smiling and frowing icons have taken the e-world by storm. Now called emoticons, short for emotive icons, Fahlman's original sideways smiley face sparked the creation of thousands of variations. There are several emoticon dictionaries and a handful of academics who earn their keep studying the trend.



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• Despite the long history of smileys, however, in the last decade people succeeded in claiming ownership of emoticons.

• In 2006, Finnish law student Tuomas Mattila was granted a trademark on a number of symbols by the authorities in Helsinki.

• At the height of the dotcom boom, meanwhile, Texan "demotivational" poster company Despair Inc was granted a trademark on the sad-faced - or "frowny" - emoticon: :-(.



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THE RUSSIAN SMILEY

Taking cue from this, a Oleg Teterin (owner of a mobile advertising firm) trademarked the wink smileay ‘ in Russia

According to Russian media reports, however, telecoms entrepreneur Oleg Teterin has been granted a trademark on one of the most common icons in circulation — the combination used to denote a winking face:

Teterin said he plans to charge companies that used a virtual wink in the course of their business

"I want to highlight that this is only directed at corporations, companies that are trying to make a profit without the permission of the

trademark holder," he said in comments to NTV.

‘ ;-)



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Can Emoticons be trademarked ?

Emoticons do not fall in the category of descriptive or generic marks; this is

because emoticons are expressive of a mood and do not describe any

product/service with which they are used. Therefore, it becomes hard to

oppose the trademark registration of emoticons on the absolute grounds for

refusal of registration as given under section 9 of The Trademarks Act,

1999; further, the applicant may make his case for registration stronger by

showing that the use of an emoticon as a trademark is arbitrary or

suggestive (arbitrary and suggestive marks are considered fit cases for

trademark registration unlike the generic and descriptive marks).



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HEART EMOTICON• In an interesting case, a “heart” is quite literally at

the “heart” of a trademark dispute. Most recently, fashion house, Gap Inc. and fashion design company, Diane von Furstenberg (DVF) Studio, have approached a federal court in the Southern District of New York to decide whether the “heart emoticon” (<3) can be protected as a trademark [declaratory judgment complaint 13 civ 8943 (December 17, 2011 It all began when VeryMeri Creative Media Inc., a kids’ t-shirt company, sent a cease and desist notice to the plaintiffs who were using the emoticon on their products; VeryMeri alleged infringement and dilution of its trademark which closely resembles the heart-shaped emoticon.



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INCOURSE OF TRADE• The mark must be used “in the course of trade”

The counter argument to this is that trademark registration of the emoticon and more specifically, the heart emoticon, will not change anything for internet users since the use of the mark to be considered trademark infringement must be “in the course of trade”. However, the mark will no longer be available for use by other business enterprises. For example, if tomorrow someone were to design a t-shirt/apparel featuring a heart emoticon, he will be slapped with a notice of trademark infringement (which is precisely what happened to GAP and DVF). a notice of trademark infringement (which is precisely what happened to GAP and DVF).

The Smiley Co. owns the trademark and copyright over the classic smiley in over 100 countries. Interestingly, however, a US Court had refused to entertain a claim of trademark infringement by Walmart (which had also started using the emoticon) stating that the mark itself was not distinctive and hence not a trademark at all (Smith v. Wal-mart Stores, Inc.).



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Lack of distinctive character

• The same line of argument may in fact be employed to oppose trademark registration of emoticons in India; section 9 (1) (a) of The Act allows for refusal of registration of a mark if it is“devoid of any distinctive character”.

• Similarly, in Finland, the emoticons :-), :), =), =(, and :( were trademarked in 2006 for different products and services. Although previously the Finnish National Board of Patents and Registration (last visited Aug. 13, 2012) permitted a Finnish man to trademark the "smiley" emoticon, consisting of a colon and parenthesis :), the Supreme Administrative Court of that country has now ruled that emoticons, i.e., pictorial representations of emotions, are not eligible for trademarking. In a decision dated August 13, 2012, the Court held that the symbols do not meet trademark requirements and also said that because the smiley has wide recognition, its use cannot be restricted through trademark procedures.

• (Smiley Does Not Constitute a Trademark, the Supreme Administrative Court Rules



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USPTO …

• In the past five years, the U.S. Patent & Trademark Office has received 24 emoticon-related applications, many of which are still pending.

• Claire's Boutiques Inc., based in Hoffman Estates, Ill., trademarked the original smiley-face emoticon for use in jewelry.

• Instructions.com, based in Ambler, Pa., hopes to trademark the expression "service with a :-)" for the use in online retail.

• Deerfield Communications Inc., from Gaylor Mich., wants to trademark "personal service with a :-)" for online customer-service programs relating to software.

• And MCI Communications has registered to trademark "Is this a great time, or what? :-)" for telecom services.



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• In Thailand, there has been a continual increase among businesses in the use of emoticons as part of their customer base expansion strategy For instance, a fast food business well known for its chicken has been using various emoticons collectively with its logo and individually on its menus and products

• In Thailand, there has been a continual increase among businesses in the use of emoticons as part of their customer base expansion strategy For instance, a fast food business well known for its chicken has been using various emoticons collectively with its logo and individually on its menus and products



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Next in the line…..

Gareth Bale ‘owns trademark’ to his goal celebration

Bale would be using the celebration as a way of exploring further merchandising opportunities, including jewellery, leather goods and clothing



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CONCLUSION

Thus, there seems to be no doubt that an emoticon per se is capable of functioning as a trademark. Of course, every case is decided based upon its own particular set of facts, and how this will play out in the years to come will be interesting to see.

Education

Trademarking emotions