November 19, 2018
Originally posted 2018-11-19 11:20:02
By Eliana Rocchi | amdlawgroup.com
Can emoticons become trademarks? Apparently yes, as there are several federally registered trademarks that are in fact emoticons. The “smiley”, for example is used by clothing and jewelry companies, perfumes producers and souvenirs retailers. The “winkey” is used for alcoholic beverages. Even the “frowny” is used as a trademark for companies producing clothing and greeting cards.
There are also interesting cases of trademark disputes over the use of emoticons. Despair Inc., a Texan company, was forced to release a public statement to reassure the internet users that the trademark it secured on the “frowny” would not be enforced. More recently, the fashion houses of Gap Inc. and Diane von Furstenberg filed a declaratory judgment complaint hoping to have the Federal Court in the Southern District of New York to rule that the “heart” emoticon cannot be protected as a trademark. The companies, in fact, intended to use the emoticon in connection with a line of products for children, but VeryMeri Creative Media Inc. had already two US intent-to-use applications for marks that incorporated “hearth” emoticon and sent a cease and desist letter to Gap and Diane von Furstenberg. The companies, in their complaint, contended that VeryMeri could not be granted a trademark on the emoticon as the “heart” logo is “widely used in connection with apparel and related products” and “is nothing more than a commonly used and well-known ‘emoticon’ or metacommunicative pictorial representation of a heart design”, so “no one entity can be said to have the exclusive right over all forms of this [emoticon heart] design.”
That reasoning shows that the question we posed at the beginning of this article is not rhetorical after all. There are in fact very good arguments to be made for which emoticons alone should not be trademarkable.
First of all, the Trademark Act forbids the registration of marks that are generic or descriptive. Emoticons might not be descriptive, as they merely convey a mood disposition but do not directly describe the product or service with which they are used. On the other hand they can certainly be considered generic as the symbols that constitute them are widely used “words” which have a very specific meaning in the contemporary informal language. The distinctiveness of an emoticon itself is also questionable: emoticons are common symbols and various companies have used, over time, different versions of those symbols. Emoticons alone, in other words, do not seem to satisfy the basic function of a trademark, which is to uniquely identify a company as the source of certain goods or services and differentiate its products from the competitors’. The US Trademark Office seems to agree with this statement when it states in its examining procedure manual that “common expressions and symbols” are not normally perceived as trademarks. (TMEP 1202.03).
Some make the argument that removing from the public domain some widely used symbols as the emoticons would hinder the freedom of communication as it would prevent internet users, sms and email writers and so forth from freely using such symbols. That is actually not the case. In fact, only the use of a trademark “in commerce” is to be considered trademark infringement. In other words a trademarked emoticon would be no longer available to other companies that would like to use it in order to make profit without the permission of the rightful trademark holder, but would still be free to use by the general public.