Protecting Fictional Trademarks in the Real World

Fictional trademarks can play a crucial role in films, books, or video games. Their use allows for the creation of a more vivid and believable fictional universe. In fact, fictional trademarks can achieve significant recognition in pop culture, with iconic examples such as the fast-food chain Los Pollos Hermanos from Breaking Bad, Homer Simpson's beloved Duff Beer, or the famous Wonka Bars from Willy Wonka. But can these fictional trademarks also be protected as trademarks in the real world?

The legal challenges for registration

The same rules apply to registering a fictional trademark as to registering a real one.The key requirements are that the trademark must not be descriptive and must possess sufficient distinctiveness. This is where some fictional trademarks encounter difficulties.

Descriptive fictional trademarks. Some fictional trademarks fail to meet the requirements because they are descriptive. For instance, fictional trademarks like Good Burger and The Grand Budapest Hotel from their respective films merely describe the goods and services they relate to.

Lack of distinctiveness. Another common challenge is the lack of distinctiveness. When a fictional trademark becomes too well-known in pop culture, the public may perceive it solely as a reference to the film or its characters. As a result, the trademark is no longer seen as an indicator of the origin of specific products or services. A notable example is Pinocchio, for which Disney was unable to secure trademark registration due to insufficient distinctiveness.

The obligation to use: a challenge for fictional trademarks

Even if a fictional trademark is successfully registered, the trademark owner must comply with the obligation to use it. Trademark law requires that a trademark is genuinely used for the registered goods or services within five years of its registration. If normal use cannot be demonstrated, the registration may be revoked at the request of a third party.

Proving use for fictional trademarks for a fictional beer brand like Duff, use might be demonstrated for entertainment services, such as the sale of DVDs, but not for an actual beer brand. The fact that the name is used in a fictional work is insufficient to prove use for a beer brand in the real world.

Can a fictional trademark be protected against third parties?

What happens if a third party attempts to register a fictional trademark in the real world? The rightful owner of the fictional trademark can still take action. Not only can they possibly rely on the lack of distinctiveness or the descriptive nature of the trademark, but also on the grounds of bad faith.

Bad faith occurs when the fictional trademark is well-known, and the trademark application is filed for the same goods or services for which the fictional trademark was used in the film. Copyright law and common law also provide avenues to challenge the registration or unauthorized use of a fictional trademark.

Protection beyond trademark registration

Although registering fictional trademarks in the real world is not straightforward, this does not mean they are completely unprotected.
In addition to trademark law, copyright or common law can also be invoked to protect the interests of the rightful owner. It is therefore strongly discouraged to register or use a fictional trademark without permission.

Want to learn more about fictional trademarks? Be sure to check out our previous blog on this topic, where we delve deeper into product placement and defictionalization.