Suppose I create a popular TV show in which a character (an endearing anthropomorphic Persian cat with a “lion” furcut) owns and operates a small restaurant called “Little Buddy Burgers.” I actually did a trademark search (my first ever!) and found that Little Buddy Burgers is not currently registered with the USPTO. Some combinations of “Buddy” and “Burger” have been registered, but abandoned, which makes me wonder if it’s a cursed business model.
Question 1) If Little Buddy Burgers only exists as a fictional restaurant, but the TV show is broadcast nationwide, can the producer of the show register “Little Buddy Burgers” as a trademark on the theory that it is “in commerce” as part of a television show (which is a for-profit enterprise)? If not, could I secure the trademark by making and selling “Little Buddy Burger” t-shirts/hats/mugs etc?
This question is easy if “Little Buddy Burger” shirts and hats are being sold nationwide. It is a little trickier if the restaurant is part of the show, but not featured in the title or in the advertising for the show. If you don’t have either t-shirts or advertising material, you might be able to get a trademark on a theory of secondary meaning through an expensive consumer survey.
Question 2) Suppose that some other person loves my show and decides to open an actual Little Buddy Burger restaurant with a menu and decor patterned after the restaurant in the show. Would my registration of “Little Buddy Burgers” preclude his efforts to register that trademark?
Yeah, if I can get it registered, I can enforce it all day and night against him. If I don’t already have it registered, we return to the analysis for above, but a consumer survey showing confusion over whether the restaurant is affiliated with the show will be a strong piece of evidence. (Remember though: the standard in trademark law is “likely” confusion; actual confusion is just a bonus for the plaintiff.) I’m a tremendous advocate of looking for non-litigious solutions to these kind of problems; it would be way better for everyone to work out a licensing agreement to use “Little Buddy Burgers.” It advertises the show, the show advertises the restaurant, everybody wins. And that’s being Little Buddies.
The core issue in this hypothetical is: Can you trademark fictional elements within a work in commerce? This has potentially massive applications in videogame licensing. For example, RiotGames owns a trademark on “Pentakill.” Should they? Is it really distinctive? Or is it just a generic announcement of 5 kills? They can overcome the claim that it is a generic announcement with a consumer survey showing that “Pentakill” has acquired secondary meaning unique to League of Legends. What about “Kill-a-man-jaro,” in a distinctive deep, masculine voice- can Bungie Studios trademark that? The closest case law I know of that relates to these questions is the case of Conan Properties v. Conan Pizza, in which a pizza parlor themed itself after the comics “Conan the Barbarian.” The case was settled by the fact that a majority owner of Conan Properties went to Conan Pizza and said he loved it, which was considered “acquiescence” to the pizzeria’s use of the trademark (so Conan Properties couldn’t win their claim of trademark infringement).