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In the United States, trademark law can protect "any word, name, symbol, or device”, and this broad scope encompasses emojis. The paper says the US Trademark Office has already registered emoji trademarks.
Goldman identified 385 records in a search in January. Most of these were pending trademark applications, with only 62 actual registrations. Of those, most are word marks with no design elements.
The few with design elements usually incorporated an emoji within the design rather than constituting an actual emoji itself. Goldman did find a couple of trademark registrations of emojis, including a key and a winking face. "Undoubtedly, other emoji-like designs have been registered without using the term," the paper says.
In an interview with Managing IP, Goldman said the question is: why register emoji as a trademark. “I am intrigued and nervous about what emoji trademark registrations are going to be used for, and I am especially concerned that they are going to be used to interfere with the ordinary ways people talk to each other,” he says. “One of my concerns is that someone will get a registration for a garden variety emoji and then start looking for people who are using that emoji in ordinary context and assert the trademark registration against them. Some might call it trademark trolling or we could coin the new phrase emoji trolling.” Goldman says such a lawsuit probably would not be meritorious. “But the whole point would be to create uncertainty and doubt in the minds of defendants and maybe extract settlement to avoid the cost of litigation,” he says.
Emojis can be registered as trademarks only when they are used to distinguish goods or services in the marketplace. Most everyday usage of emojis – such as a user adding an emoji to a non-commercial social media message – typically will not constitute trademark infringement. However, trademark law’s boundaries of commerciality are not always clear and as the number of emojis protected by trademark law grows rapidly “we are going to see an expansion of trademark disputes over when it’s OK to use identical or confusingly similar emojis," says the paper.
Goldman adds that if an emoji is just used in ordinary conversation it wouldn’t normally qualify for a use in commerce supporting trademark rights. “The more likely scenario is someone will use an emoji in merchandise or as part of a product and then come back and try to claim the trademark for other contexts as well,” he says.
The paper predicts “an ever-growing thicket of IP rights involving emojis", and says it will be crucial that the key players in the IP system – including the Copyright Office, Trademark Office and courts – carefully apply IP law to emojis.
Goldman suggests one area for brand owners to think about is obtaining proprietary emoji and the brand consequences of doing that.
“Could I take my logo and have it created as emoji, either in the official Unicode emoji set or as a proprietary emoji that is specific to a particular platform?” Goldman asks. “Thinking through the trademark implications of taking a trademark-protectable logo and converting it into an emoji that users could use to chat to each other is an interesting issue. I don’t think we’d normally see brand owners running into some of the possible consequences that arise form that.”
Goldman says it could be analogous to when trademark owners turned their word trademarks into verbs. “You start to run into whether there might be genericide or loss of control over the brand,” he says.