A question of character – best practice in managing mascots

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Feature
By Purvi J Patel
A question of character
– best practice in
managing mascots
Mascots offer a unique opportunity to create a brand
personality. They also require a close relationship with
the marketing department, as well as a careful
approach to trademark law
Brand mascots, brand ambassadors, brand icons, brand characters –
whatever your preferred moniker, these special types of mark imbue
brands with personality and enable companies to generate traction
with consumers. Mr Clean, Ronald McDonald, the Pillsbury Dough
Boy, Travelocity’s Roaming Gnome, the Energizer Bunny, Aunt Jemima,
Geico’s Gecko, the Maytag Repairman and Dos Equis’ Most Interesting
Man in the World are all well-known brand mascots. These types of
fictional human or anthropomorphic character, generally costumed or
animated in nature, enable companies to humanise and promote their
brands, and are most commonly used in connection with household
or commoditised products and services.
For a time, with the upsurge of celebrity endorsements, it
seemed as if mascots were falling out of vogue – but with the advent
of social media and viral marketing, brand icons – both nostalgic in
nature (eg, Betty Crocker or the Jolly Green Giant) and new (eg,
Allstate Insurance’s Mr Mayhem) – seem to be more popular than
ever. Their growing prevalence, particularly in this new online world,
underscores the need for a holistic approach when it comes to
clearing, protecting, enforcing and defending this unique type of
intangible asset.
Trademark considerations
Distinctiveness and source identification
It goes without saying that distinctive mascots used to promote
goods or services are eligible for trademark protection. But from a
trademark perspective, what are the special considerations to bear in
mind when developing and seeking to protect a brand mascot
concept? Distinctiveness is obviously a critical component – and the
more distinctive the mascot as it applies to particular goods and
services, the wider the scope of protection. Brand mascots should be
subject to the same spectrum of distinctiveness analysis as any
mark. For instance, characters such as Geico’s Cavemen are quite
arbitrary as applied to insurance services, and thus are entitled to a
wide scope of protection. The Snuggle Bear is also arbitrary and thus
strong as applied to Snuggle fabric softener – while the nature of
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this particular cub and its personality evoke the snuggly, soft nature
of the products, one would not ordinarily connect a bear with
laundry products.
On the other hand, the idea of a farmer is highly suggestive and
somewhat common when it comes to the food industry; and as a
result, such marks will be seen as relatively weak, meaning that
minor differences between existing marks may be sufficient to
squeeze into the field. For instance, in a relatively recent case
(Odom’s Tennessee Pride Sausage Inc v FF Acquisition LLC, 93 USPQ2d
2030 (Fed Cir 2010)) the Federal Circuit upheld the Trademark Trial
and Appeal Board’s finding that the applicant’s ‘farm boy’ design for
grocery store services was not confusingly similar to the opposer’s
‘farm boy’ for breakfast items, on the basis that features such as the
size and shape of the boys’ hands, feet and hats, as well as the
differences in footwear choices (one wearing shoes and the other
barefoot), were sufficient to differentiate the two marks. And what
about Apple’s Siri – do her voice, persona and cadence constitute a
distinctive brand character used to promote iPhone’s information
services, or is she (or has she become) the product itself? The answer
to that question is still to be determined.
On the topic of distinctiveness, Owens Corning took the
innovative approach of using a distinctive and well-known brand
character to develop goodwill and secondary meaning in another
mark in its portfolio. Specifically, in the early 1980s Owens Corning
licensed the rights to the Pink Panther cartoon character from
Metro-Goldwyn-Mayer Studios, and has since used it, with great
success, as the brand ambassador for its pink-coloured trade dress
for building materials and services. This was a clever branding idea,
as it circumvented the need for Owens Corning to develop goodwill
in a mascot first, and its own underlying product second.
In addition, while brand mascots are by their very nature fun
and generally aesthetically appealing, it is also important to keep in
mind that their ultimate function is to identify the source of the
product or service that they are being used to promote. Although it
(thankfully) withdrew its aesthetic functionality ruling, in 2011, the
Ninth Circuit of Appeals originally issued a troubling decision in
Fleischer Studios, Inc v AVELA, Inc (636 F 3d 1115 (9th Cir 2011)) on this
issue.
In Fleischer the court held that the defendant’s use of the Betty
Boop character was not “use” or source identifying, but rather
aesthetically functional, because customers bought the products
featuring Betty Boop merely because they liked how they looked,
and thus decided against trademark infringement. The temptation
for this type of review may be great when presented with a mark
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used on merchandising-type products, particularly when an overlap
of trademark and copyright protection is involved. In order to avoid
this type of faulty application of the law, companies should
remember that the brand character is inextricably tied to the goods
and services it promotes.
If a brand mascot’s purpose is to serve as the identifier of a
single source, the next question is whether multiple mascots could
splinter a company’s brand and confound customers. The answer
depends on your point of view. Trademark practitioners chuckled
during a 30 Rock episode in which Liz Lemon made a romantic
connection with her boyfriend over their shared agitation at Geico’s
use of four brand mascots – the Cavemen, the Gecko, Kash (the stack
of money with googly eyes) and the “fake Rod Serling guy”. While
some consumers may have been frustrated or confused by the
numerous angles, the company offers something for everybody with
each mascot – and the fact that a top-rated primetime show known
for product placement mentioned Geico would appear to be a coup.
Moreover, the success of these campaigns prompted other
insurance companies to devise competitively engaging mascots. For
instance, Progressive Insurance has been heavily promoting its Flo
mascot and AllState Insurance has had great success with Mr
Mayhem. In fact, Mr Mayhem has over 1.2 million ‘likes’ on Facebook
– a number that appears to trump not only other brand mascots, but
even other public figures.
IP clearance
Once the distinctiveness hurdle has been overcome, the next
question to consider is whether a character is available for use and,
potentially, registration. The challenges of clearing a new brand
mascot are akin to those associated with any design or product
configuration. Clearance is costly, whether it be exclusively domestic
or international in nature – and budgetary and time constraints can
wreak havoc on the best-laid plans. Moreover, there will be
information gaps regarding availability. These not only stem from
the inherent nature of clearance, but also arise because:
• many of these types of mascot are not registered at state or
federal level, but are simply used as common law marks; and
• design codes and descriptions of such marks are based on the
subjective discretion of applicants, examiners and the
practitioner conducting clearance.
To the extent that copyright protection could also be at play,
searching copyright records, locating copyright deposit materials
and determining the scope of protection for works is a difficult and
time-consuming task.
So how do you develop a search strategy for a brand icon? It goes
without saying that the mascot’s proposed name should be cleared
at the federal, state and common law level; given the importance of
social media, trademark availability in various social media
disciplines (eg, blogging, community and business) and registrations
of trademarks as social media user names should also be searched.
On this front, the website KnowEm.com can be an indispensable and
centralised tool.
To the extent that a mark will be promoted and used outside the
United States, additional international clearance in key countries
should also be done. International clearance assists with
determining not only availability, but also whether there may be
connotation issues. Moreover, to the extent that foreign language
versions of the name will be utilised, these should also be searched.
For instance, the Mr Clean name is translated into several local
languages, including Maestro Limpio in Mexico, Don Limpio in
Spain, Mastro Lindo in Italy, Meister Proper in Germany, Meneer
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Brand mascots are unique IP assets with the potential for
great longevity
Proper in Belgium and Mister Proper in Russia and many Eastern
European countries.
Turning to clearing the mascot itself, there is no ‘one size fits all’
option. First, the nature of the mark must be defined – simple in the
case of a drawn cartoon figure with obvious parameters, such as the
Geico Gecko, but more difficult when dealing with a concept
involving a live individual, such as the Verizon “Can you hear me
now?” guy. In the case of a cartoon drawing, a more traditional
clearance strategy can be adopted:
• Have a clearance search conducted by a third-party searching
company (discussing descriptions of marks and design codes in
advance);
• Review images at Google Images and like.com; and
• Rely heavily on the marketing department to provide insight
into the competitive landscape as well as the inspiration and
design process for the actual character.
An understanding of the character’s personality and
mannerisms is also helpful during this process, because these
mascots are rarely still. In the case of a live person mascot, an
outside search report might uncover key issues (eg, Verizon Wireless
obtained US Registration 3,425,278 for a static drawing of the “Do
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Feature: Managing mascots
You Hear Me Now” mascot holding a phone to his ear, with the
specimen being a true-to-life picture of the same mascot), but
reliance on marketing departments and common law clearance of
images, as well as ‘trending’ viral videos and social media in the
industry, becomes even more critical. The latter are important from
both a trademark clearance perspective and a possible copyright
protection point of view.
In addition, to the extent possible and to ensure that clearance is
as comprehensive as possible, companies should also think long
term regarding the possible evolution of the brand character
(whether it be minor, such as clothing, or major, such as an ageing
process) and its potential expansion of use beyond the immediately
anticipated goods and services and channels of trade.
With respect to the expansion of goods and services, at a
minimum this should include possible merchandising for t-shirts,
hats and similar. The aim is to avoid a progressive encroachment
allegation such as that made in Kellogg Co v Exxon Mobil Corp (209 F
3d 562 (6th Cir 2000)). In this case Kellogg, the owner of the TONY
THE TIGER mark, sued Exxon Mobil for infringement and dilution
for using a cartoon tiger that it had previously used for motor fuels
for convenience store services. The court ruled in Kellogg’s favour
and the parties ultimately settled (and Exxon Mobil Tiger Markets
are ubiquitous), but this serves as a cautionary tale when it comes to
refreshing clearance when moving out of your original space.
Clearance not only gives a brand mascot owner a sense of
security when it comes to availability, but also provides insight into
82 World Trademark Review June/July 2012
the strength of its selected character and the ability to make
representations and warranties regarding availability in the
licensing, franchising and merchandising contexts. Moreover, it
provides additional insight into how to mitigate any public relations
(PR) snafus at the onset.
Registration is recommended
To the extent that a mascot will have a lifespan extending beyond
one year and can be concretely defined, seeking registration for its
name and design is generally recommended. Even though the
United States is a common law country where rights can accrue by
virtue of use in commerce, federal registration offers several
benefits, including a presumption of validity, the ability to use the ®
symbol and the ability to record the trademark with Customs to
prevent the import of infringing or counterfeit products.
Global expansion considerations should also be taken into
account, and with them an international filing strategy. At a
minimum, a brand owner should file for its brand mascot in all
jurisdictions where it plans to use or manufacture products
featuring the mascot – and particularly first-to-file countries where
it anticipates needing rights in the future. A global brand such as
Michelin, for instance, has filings for its Michelin Man mascot in
more than 100 countries.
As time passes, brand characters that stand the test of time must
update their looks to stay relevant and current; to the extent that
these changes alter their look materially, new filings should be
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Do Siri’s voice, persona and cadence constitute a distinctive brand
character used to promote iPhone’s information services, or is she
the product itself?
made, especially if previous registrations cannot be maintained
based on the updated mark. The Michelin Man, for instance, has
quite obviously undergone a makeover, making him a more svelte
and stronger version of his original pudgy self – and Michelin has
made updated filings accordingly. The Columbia Pictures Torch
Goddess has also gone through multiple updates during her
lifetime, as evidenced by a string of registrations through the years.
Finally, it is also recommended that brand owners register relevant
domain names and social networking handles for brand mascots. This
could avoid impersonation and other infringement pitfalls.
Copyright considerations
Benefits
As touched on above, brand mascots may also be eligible for
copyright protection – an additional bundle of rights that could
prove invaluable to a brand owner. Why? First, a copyright holder
has not only the exclusive right to copy a work, but also the
exclusive rights to create derivative works based on the original and
to distribute or disseminate that work publicly. This is an important
feature of protection, especially in this world of moving and agile
mascots that change regularly, such as the blue Twitter bird.
Other benefits of copyright protection lie on the enforcement
front – if a plaintiff successfully proves copyright infringement and if
the work has been timely registered, the plaintiff could be entitled to
statutory damages (rather than having to prove actual damages) and
attorneys’ fees. Moreover, copyright owners can take advantage of the
Digital Millennium Copyright Act notice and takedown measures. In a
world where social networking and viral marketing dominate, this is a
great tool for getting infringing content pulled by an internet service
provider instead of having to seek relief from the party which posted
the content – a party that might be difficult to locate or cause
problems. Finally, to the extent that infringement of the copyrighted
design takes place outside the United States, the copyright owner may
be able to take action in Berne Convention member countries without
having to seek registration in those countries.
There is no requirement to use the design in commerce as a source
identifier in order to be eligible for or to maintain its copyright. This is
critical because the shelf life of a mascot (that is not nostalgic in nature,
such as Kraft Foods’ Mr Peanut) can be short – and thus, even if you end
up abandoning your trademark, an easy preclusion to third-party use is
copyright protection. Also, since the test for copyright infringement
focuses on substantial similarity, as opposed to a likelihood of
consumer confusion, there is no need to examine commercial factors
such as goods, services and trade channel similarities and how they
impact on the mindset of the average consumer. Concurrent trademark
and copyright ownership can put time on your side. The copyright
component might be able to give a company flexibility in that it can
take a break from use in commerce and put a mark in semi-retirement
until it is ‘cool’ again. The opposite is also true – even if a copyright
term expires and puts a character into the public domain, provided
that the mascot is still in commercial use, its underlying trademark
rights will continue into perpetuity.
Originality is a must
In order for a brand mascot to be protected by copyright, pursuant to 17
USC § 102, the work must be an original work of authorship fixed in a
tangible form of expression. Originality would appear to be the parallel
of distinctiveness in the world of brand mascots. So what does it mean
for a work to be sufficiently original? In Feist Publications, Inc v Rural
Telephone Service Co the Supreme Court noted that “originality requires
independent creation plus a modicum of creativity”. Accordingly,
provided that the mascot does not consist solely of a familiar symbol or
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design, it should be protectable under copyright law. In fact, even a
simple smiley face character could be protectable if additional elements
were added to this stock image.
Registration is a definite plus
Although copyright registration is not required, it is a prerequisite for
taking legal action in court and obtaining remedies – and if registration
is timely sought before the infringing activity at issue takes place, the
copyright owner can recover attorneys’ fees and statutory damages. In
short, copyright registration is recommended. From a copyright
perspective, you can protect both the graphical design of the mascot and
derivative updates thereof, as well as the mascot in a performance
context such as an advertisement or online video – so you can obtain
layers of protection on the copyright front as well.
Authorship and ownership
One unique concern in the copyright context is that of authorship and
ownership. Unless the author is an employee who created the mascot
within the scope of his or her employment, the party that creates the
design of the brand mascot is generally the owner of the underlying
copyright. This is in contrast to the trademark world, where the party
that first uses a mark in commerce is the owner. To ensure ownership
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Feature: Managing mascots
With the advent of social media and viral marketing, brand icons – both nostalgic in nature (eg, the Jolly Green Giant) and new – seem to
be more popular than ever
of the underlying copyright of a brand mascot and to avoid disputes
on this issue, it is important to get a written assignment of copyright
from the party which developed and created the design itself. You
certainly do not want to risk losing the right to use a brand mascot
due to a soured relationship with the mascot’s creator – and even if
you own a trademark registration, you may be precluded from using
the brand character without a licence from the author. In the early
part of the 20th century, Kellogg dealt with a similar issue with respect
to its Rice Krispies Snap, Crackle and Pop elves (Grant v Kellogg Co 58 F
Supp 48 (SDNY 1944)).
Pursuant to an oral agreement, Kellogg hired an illustrator to
create the elves and stories about related adventures for Rice Krispies
cereal. After a few years, the illustrator quit and sought to restrain
Kellogg from hiring anyone else to draw further adventures. Luckily
for Kellogg, the court determined that since the characters had been
created with Kellogg in mind, Kellogg presumptively owned the rights
in Snap, Crackle and Pop.
Such reasoning is unlikely to prevail in court today without a
written agreement. This issue should be borne in mind when hiring an
advertising agency which creates a brand mascot: get the assignment
in writing; otherwise, the agency could own the underlying copyright
in your mascot.
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Policing and PR concerns
Preventing unauthorised use of a brand mascot is necessary to
maintain its value as an IP asset. There are varying types of policing
concern when dealing with brand mascots. Standard trademark
infringement, copyright infringement, cybersquatting and
counterfeiting scenarios are ever present – especially in the
merchandising arena. However, new types of infringement concern
continue to arise. The worldwide web has truly become that – from
the days when domain names were key virtual real estate, a new
world has emerged on the social media front, including Facebook,
Twitter, Myspace, LinkedIn, YouTube and various interactive blogs.
This has become especially true with respect to brand mascots –
characters such as Mr Clean, Smokey Bear and the AFLAC duck now
have their own Facebook pages, Twitter feeds and interactive sites.
Impersonation
A relatively new issue is online and social media brand mascot
identity theft and impersonation – particularly on Twitter, where an
unauthorised party registers a brand mascot’s username. The
Pillsbury Dough Boy, Mr Peanut and Chef Boyardee have all been
targeted in this way. To the extent that the Twitter account holder
begins using the account to impersonate falsely the brand mascot in
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a non-parody and non-commentary manner, the brand mascot
owner may be able to take advantage of Twitter’s Impersonation
Policy and Trademark Policy. Even in a straightforward
impersonation case, however, there is no guarantee that Twitter will
transfer the account. It might instead suspend the account, or even
allow the owner to keep using it provided that the owner makes
changes to clarify that it is not affiliated with the brand owner.
Moreover, as a brand owner, you cannot simply offer to buy the
username from the owner – Twitter explicitly prohibits the sale or
purchase of usernames. The key is to pre-empt these types of
concern by registering usernames during the clearance and
adoption process.
Infringing fan use
Fans, employees and former employees can sometimes love a brand
mascot so much that they create their own Facebook pages, fan websites
(with corresponding infringing domains) or online merchandising or
advertising campaigns that constitute trademark and copyright
infringement. Even if well intentioned, such use should not necessarily
be tolerated. Enforcement need not always be aggressive to be effective.
In fact, polite communications and creative settlements with such
individuals can breed results while avoiding unnecessarily alienating
supporters. Companies can turn some initially unwanted uses to their
own advantage, including by offering a licence to those users to continue
using the brand and touting its benefits. Brand owners might also
consider other non-legal solutions, such as enlisting fans, customers or
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employees to help with monitoring and reporting, perhaps through a
fun and engaging incentive programme.
Mitigating PR backlash
Companies should evaluate the tone and language, weigh PR against
business risks and determine legal needs before taking action to protect
their brands. In the past, letters fell on the desks of just the recipients or
their lawyers. Today, however, in the freewheeling sphere of social
media, one overly aggressive notice could result in a blog post,
thousands of re-tweets and negative publicity. In some cases,
infringement can be so egregious and damaging that a brand owner
has no choice but to send a forceful letter and assume this risk. In
others, the PR risk should be more heavily weighed. As a pre-emptive
matter, brand owners with unyielding and persistent infringement
concerns should consider launching a proactive PR campaign educating
the public that they are shutting down infringing uses not because
they are bullies, but because they care about protecting their valued
customers from marketplace confusion.
Brand mascots are unique IP assets with the potential for great
longevity. Even more, they are an ideal case study of the benefits of
overlapping IP protection and the importance of marketing and legal
working closely together throughout their legal lifecycle. WTR
Purvi J Patel is a partner at Haynes and Boone LLP
[email protected]
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