IP Law Daily, TRADEMARK—TTAB: Registration of mark for character in cartel television show refused, (Aug 26, 2022)

By Ursula Furi-Perry, J.D.

While fictitious or fanciful characters may function to identify and distinguish the source of goods or services, where the usage of a character in the specimens of record failed to impart any commercial impression as a trademark or service mark, it was not registrable as such.

An applicant’s registration of the mark EL CABO, a major character on a television show, was refused because it merely identified one of many characters in a television series. The TTAB upheld the refusal, holding that the applicant’s evidence identified the applicant’s television entertainment services only in connection with the term EL CARTEL, and did not use either the word EL CABO or the composite as a source indicator for the television program (In re Caracol Televisión S.A. August 24, 2022, Cataldo, P.).

Background. The applicant sought to register the mark EL CABO, in standard characters and as a composite, in connection with various broadcasting and entertainment services in International Classes 38 and 41. The EL CABO mark is connected to a major character on El Cartel, a television show about drug cartels. The trademark examining attorney refused registration for failure to function as a mark because the applied-for marks merely identified one of many characters in a television series. The applicant appealed.

Analysis. After consolidating both co-applications, which involved common issues of law and fact on highly similar records, the TTAB deemed abandoned the application pertaining to Class 38, addressing only the issue regarding Class 41 services. The Board turned to the issue of whether the applied-for marks served to identify and distinguish the services of one person, and to indicate the source of the services. The central question in determining whether Applicant’s proposed marks function as service marks was the commercial impression they make on the relevant public, the TTAB explained, reviewing whether purchasers or potential purchasers would perceive them as identifying the applicant’s services and their source of origin.

While fictitious or fanciful characters may function to identify and distinguish the source of goods or services, the TTAB noted, where the usage of a character in the specimens of record fails to impart any commercial impression as a trademark or service mark, it is not registrable as such. The Board rejected the applicant’s argument that the character unequivocally showed use of the EL CABO service mark in clear association with the television series. Although the applicant submitted several specimens as evidence, including printouts of various webpages referencing EL CABO, the Board held that they identified the applicant’s television entertainment services only in connection with the term EL CARTEL. The specimens did not use either the word EL CABO or the composite as a source indicator for the television program.

Board action. The refusal to register was affirmed by the Trademark Trial and Appeal Board.

The case is Serial Nos. 87916944 and 87916948.

Attorneys: Susan B. Flohr (Blank Rome LLP) for Caracol Televisión S.A. John Hwang for the USPTO.

Companies: Caracol Televisión S.A.

Cases: Trademark USPTO