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Emojis have become an integral part of our everyday communications. Whether they appear in text messages, emails, or on social media, many people enjoy using them to express themselves. More and more, companies are incorporating these images into their branding, raising complex legal issues when it comes to federal trademark protection of emojis. If you are planning to incorporate an emoji or emoticon into the mark that represents your brand, it is vital to keep a few considerations in mind.
An emoji is a small digital image used to express an emotion. Specifically, they are cartoon-like pictures that can show anything from a smiling face, a hand wave, to a slice of pizza. The emojis that appear in a smartphone can range from emotive symbols, animals, technology, motor vehicles, food, hearts, symbols, and flags. They are often used in text or email conversations as emotional cues and can be used in a variety of ways on social media.
In contrast, an emoticon uses keyboard characters to represent an emotion or sentiment. They are composed of a series of punctuation marks, letters, and numbers that create a pictorial icon. Rather than showing a cartoonish image, an emoticon is a typographic display, such as the smiling face (“:-D”) emoticon. Said to be first used in 1982 by a professor at Carnegie Mellon University, emoticons became widespread in the late 1990’s to offer another range of tone in texting, email, and on internet forums.
As advertisers increasingly use emojis as part of their branding, they may wonder if these images can be registered with the United States Patent and Trademark Office. However, the answer to the question, “can you trademark an emoji?” is complex. Whether you can trademark emoji or emoticon images will depend upon whether they are used to distinguish goods or services in the marketplace. Critically, you must demonstrate that you were using the emoji in connection with your company’s branding or products.
Trying to trademark emoji images that simply function as a communication on a phone can be extremely challenging. However, if the emoji is to be used on a logo or to indicate the source of a particular product or service, trademark protection may apply. The same criteria would come into play in determining whether an emoji qualifies for a registered trademark as with any other marks.
When it comes to emoticons, it should be noted that a number have already been registered for federal protection for use on various goods and for a variety of services. These include clothing, cellular telephone services, communication services, software, retail stores, and alcoholic beverage brands.
If you plan to incorporate an emoji or emoticon into your logo, slogan, or product name, it’s essential to understand that it must comply with the same criteria as other trademarks. Significantly, all trademarks must comply with the USPTO’s use in commerce requirement. In other words, the owner must show it is being used in connection with a product or service in the marketplace. Satisfying this requirement can become an issue in cases where an emoji is being offered for free.
Another problem that can arise when it comes to registering an emoji concerns those that are deemed “merely descriptive.” If the emoji is being used for its dictionary meaning — such as in cases where the emoji replaces a word in a slogan — it is being used descriptively and will likely not qualify for protection under the trademark law. A strong trademark should be distinctive and original.
In addition, an emoji cannot be used for a trademark if it is too similar to one that has already been registered or it would cause a likelihood of confusion with an existing trademark. A thorough trademark search should be conducted to identify any potential obstacles in registering the trademark. If the examining attorney determines the mark you seek to register would cause confusion among consumers as to the source of the product or service with a mark that has already been registered, the application will be denied.
The process of filing for trademark protection for an emoji can be complicated. Located in Ann Arbor, Michigan, the Trademark Lawyer Law Firm, PLLC offers a wide variety of trademark services to entrepreneurs and business owners in many industries nationwide. With an impressive track record of successfully registering more than 6,500 trademarks with the USPTO, we provide our clients with high-quality legal services at reasonable rates. Contact us today to schedule a complimentary 15-minute consultation with a trademark attorney to learn how we can help.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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