In re DC Comics, Inc. , 689 F.2d 1042 ( 1982 )

BALDWIN, Judge.

This is an appeal from the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (board) decision sustaining the examiner’s refusal of three applications by appellant for registration on the Principal Register.¹ In re DC Comics, 211 USPQ 834 (TTAB 1981). We reverse.

Background

Appellant is a publisher of comic books detailing the fictional exploits of assorted “super heroes” and villains, and is also the producer or sponsor of products that are related in some way to these characters. Appellant now seeks to register particular drawings of three characters, Superman, Batman, and Joker, as trademarks for toy dolls.

The following application is representative:

Decision of the Board

The board sustained the rejection of appellant’s applications on two grounds. First, the board concluded that the drawings in question “naturally and normally direct attention to the appearance and purpose of goods enclosed in the cartons” bearing the drawings, and are, therefore, “so descriptive that they are not trademarks.” 211 USPQ at 837 (emphasis added). Second, the board found the drawings to be “artistic renditions of the dolls,” sharing with the dolls the “commercially functional” features of “customary dress, accountrements and facial expression of the character(s).” 211 USPQ at 837. Accordingly, the board concluded that the drawings “are functional in a utilitarian sense and for that reason are not trademarks.”

The Issue

In its opinion, the board stated that: the fundamental question in these applications is whether an artistic rendition of a fictitious character can serve as a trademark for what is a somewhat cruder three-dimensional toy doll version of the same fictitious character.

211 USPQ at 836 (emphasis added). Accordingly, the issue before us now is whether the board correctly concluded that appellant’s drawings cannot function as trademarks for toy dolls resembling Superman, Batman, or Joker, respectively.

OPINION

Descriptiveness

Generally, a word or image is considered “descriptive” of a particular product when its use with that product conveys to one who is unfamiliar with the product its functions or qualities. See In re American Society of Clinical Pathologists, 58 CCPA 1240, 1243, 442 F.2d 1401, 1407, 169 USPQ 800, 801 (1971). Trademark law has traditionally imposed restrictions on the right to exclude others from using certain “descriptive” symbols to ensure that the opportunity for all to associate such symbols with their common referents remains unencumbered. However, the fact that a symbol may impart to the prospective purchaser information concerning the physical characteristics of goods with which it is used does not perforce render the symbol incapable of functioning as a trademark. See, e.g., Minnesota Mining & Manufacturing Co. v. Johnson & Johnson, 59 CCPA 971, 973, 454 F.2d 1179, 1180, 172 USPQ 491, 492 (1971) (the best trademarks are often highly suggestive of the advantageous characteristics of the goods). Indeed, § 2(f) of the Lanham Act, 15 U.S.C. § 1052(f), provides that even a descriptive symbol may be registered as a trademark on the Principal Register if the symbol “has become distinctive of applicant’s goods in commerce.”

Nevertheless, the board upheld the examiner’s refusal of appellant’s applications for registration on the ground that appellant’s drawings are so descriptive that they could not in any case serve as trademarks for appellant’s goods. As supportive authority, the board cited Judge Rich’s concurring opinion in In re Abcor Development Corp., 588 F.2d 811, 815, 200 USPQ 215, 219 (Cust. & Pat.App.1978). In Abcor, the question before the court was whether applicant’s alleged mark (GASBADGE) was “merely descriptive” within the meaning of § 2(e)(1) of the Lanham Act, 15 U.S.C. 1052(e)(1). Since the issue in Abcor was not whether applicant’s alleged mark could actually be a trademark for applicant’s product, but rather whether the alleged mark was instead “merely descriptive” under § 2(e)(1), Abcor should provide no support for the board in this case. To the extent that the board read Judge Rich’s concurrence as saying that all apt descriptive names cannot be trademarks for the items they describe, we are not persuaded to adopt the board’s interpretation or its derivative proposition that, by analogy, a picture of a product necessarily cannot function as a trademark for that product.

Even if we adopt, arguendo, the board’s view that appellant’s drawings are pictorial representations of the toy dolls themselves,² we are not led a priori to conclude that the drawings are incapable of being trademarks as to the dolls. Whatever information a drawing of Superman or Batman or Joker might convey to the average prospective purchaser regarding a doll resembling one of the related fictional characters is wholly dependent on appellant’s efforts to associate each character in the public’s awareness with numerous attributes, including a single source of sponsorship. While a drawing of Superman on a box may tell a would-be buyer something about the actual appearance of a doll within, this information-conveying aspect of the drawing does not, as we have already noted, conclusively eliminate its possible trademark role.³

Moreover, appellant cannot be considered to have created a new product category, the rubric of which (for example, “Superman dolls”) should remain available for all to employ in commerce, simply by having originated and promoted certain unique characters and products related to them. The registration of appellant’s drawings as trademarks for toy dolls would not diminish the store of common words and visual representations which appellant’s competitors and the general public alike may freely use. Hence, appellant would not be in a position to impair competition in the sale of toy doll figures, nor could it deprive the public of access to imagery associated with toy dolls generally or “super hero” or villain figures in particular.⁴

Therefore, we cannot agree with the board that appellant’s drawings are descriptive of toy dolls to such an extent that they are incapable of functioning as trademarks for such dolls.

Functionality

In characterizing (erroneously, we believe) appellant’s drawings as “artistic renditions of the dolls” themselves, the board found that the drawings incorporated certain “design features” of the dolls which are “functional in a utilitarian sense.” 211 USPQ at 837. The board reasoned that the features in question were “indispensable elements of the commercial appeal of the product” and, therefore, were “commercially functional” facets of the dolls that could not be used to designate source. 211 USPQ at 837.

The board’s rationale finds support in recent circuit court opinions which

include within the category of “functional features” any aspect of a product that is “an important ingredient in the commercial success of the product.” Ives Laboratories v. Darby Drug Co., 601 F.2d 631, 643, 202 USPQ 548, 557 (CA2 1979) (quoting Pagliero v. Wallace China Co., 198 F.2d 339, 343, 95 USPQ 45, 48 (CA9 1962)); Truck Equipment Service Co. v. Fruehauf Corp., 536 F.2d 1210, 1217-18, 191 USPQ 79, 85-86 (CA8), cert. denied, 429 U.S. 861, 97 S.Ct. 164, 50 L.Ed.2d 139 (1976). However, we consider such a broad definition to be at odds with this court’s precedent in this area. See, e.g., In re Penthouse International Ltd., 565 F.2d 679, 682-83, 195 USPQ 698, 700-01 (Cust. & Pat.App.1977). Moreover, the board’s rationale obscures the distinction between utilitarian and aesthetic functionality. See In re Morton-Norwich Products, 671 F.2d 1332, 1338 n. 1, 213 USPQ 13 n. 1 (Cust. & Pat.App.1982); In re Mogen David Wine Corp., 51 CCPA 1260, 1270, 328 F.2d 925, 933, 140 USPQ 575, 581-82 (1964) (Rich, J., concurring). The board basically mislabeled as “utilitarian” the ornamental features common to both the dolls and appellant’s drawings, there being no engineering advantage conferred upon the dolls by the features involved here. We find no merit in the argument that, by virtue of the aesthetic features identified by the board, appellant’s drawings are unable to perform as trademarks for toy dolls.⁵ See In re Penthouse International Ltd., supra, and cases cited therein.

In view of the foregoing, we reverse the board’s decision sustaining the examiner’s refusal of appellant’s applications.

REVERSED

1 . The applications for registration are Serial Nos. 56,993, filed July 7, 1975, Serial No. 57,-159, filed July 8, 1975, and Serial No. 94,029, filed July 20, 1976.

2 . In fact, we feel the board erred in equating appellant’s drawings of comic book personages with pictorial representations of toy doll figures modeled after those personages. This is not a case where the product itself, a picture of the product, or the configuration of the product is sought to be registered. Rather, appellant wishes to register stylized drawings of well-known characters, depicted in specific poses selected from a myriad of possible attitudes, as indicators of origin for products sponsored by appellant.

3 . The solicitor has argued the “appellant’s Superman ‘design’ on a carton merely helps a purchaser determine what is being purchased.” To the contrary, however, we conclude that such a “design” at most suggests only that the carton contains a doll, certain features of which recall the various characteristics associated with the character of Superman. A substantial amount of imagination is required of the prospective purchaser to imbue a plastic figure, even one dressed in blue tights and red cape, with the dynamic qualities of the Man of Steel which appellant’s drawing conjures.

4 . We agree with Judge Nies that, absent a conflicting claim of right to use designs embodied by appellant’s drawings, the question of possible loss of rights by appellant in the future is not before us.

5 . Nothing in In re Deister Concentrator Co., 48 CCPA 952, 289 F.2d 496, 129 USPQ 314 (1961), which was cited by the board, militates against this conclusion. In Deister, the court determined that the substantially rhomboidal outline shape which appellant sought to register as a trademark for ore concentrating and cleaning tables was in essence utilitarian and, therefore, subject to an overriding policy of preserving the public right to copy it. As we have indicated, no similar public interest has been identified in this case.