Epic Games, Inc.

Trademark Trial and Appeal Board

May 26, 2021

88233723 (T.T.A.B. May. 26, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: May 26, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Epic Games, Inc.
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Serial No. 88233723

_____

Christopher M. Thomas of Parker Poe
Adams & Bernstein LLP, for Epic Games, Inc.
Leslie L. Richards, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
_____

Before Zervas, Wellington and English,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Epic Games, Inc. (“Applicant”) seeks registration on the Principal Register of the
proposed mark1

1 For convenience, we refer to this proposed mark as “the llama,” as does Applicant in its
briefs.
Serial No. 88233723
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for (i) “downloadable video game software” in International Class 9 pursuant to
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming first use and first
use in commerce at least as early as July 18, 2017; and (ii) “entertainment services,
namely, providing online video games” in International Class 41 pursuant to Section
1(b) of the Trademark Act, 15 U.S.C. § 1051(b), claiming a bona fide intent to use the
proposed mark in commerce.2 The instant appeal, as discussed below, involves only
the Class 9 goods.

2 Application Serial No. 88233723 was filed on December 18, 2018. Color is not claimed as a
feature of the mark. The description of the mark in the application provides that “[t]he mark
consists of a fanciful cartoonish image of a llama with the design of a treasure chest on the
side portion of its saddle.”
Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs and orders
on appeal are to the Board’s TTABVUE docket system.
Serial No. 88233723
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I. Prosecution History
Applicant originally filed its application based on Section 1(a) only and identified
the goods and services as:
“stands for personal digital electronic devices, namely, cell
phones” and “video game software” in International
Class 9; and
“entertainment services, namely, providing online video
games” in International Class 41.
Applicant submitted numerous “image[s] showing use of the mark”3 as specimens
but did not identify the nature of the specimens in its original application. Only one
image, which Applicant identified as a webpage printout in its February 5, 2020
Response (TSDR 9), shows the mark intact and in its entirety (hereinafter “V3.3
Patch Notes”):4

3 Application, TSDR 1.
4 Specimen, December 18, 2018, TSDR 1
Serial No. 88233723
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Our focus in our decision hence is on the V3.3 Patch Notes image.
The Examining Attorney issued a first Office Action which, inter alia, (i) refused
registration pursuant to Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127
and 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56(a), on the ground the specimens do not show use
of the applied-for mark for the International Class 41 services; (ii) refused
registration for the International Class 41 services pursuant to Trademark Act
Sections 1 and 45 and 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56(a), on the ground the mark
shown on the drawing does not match the mark shown on the specimens; and
(iii) refused registration for the goods and services in both International Classes 9
and 41 on the ground that Applicant’s applied-for mark fails to function as a mark
and merely identifies a character under Trademark Act Sections 1, 2, 3 and 45, 15
U.S.C. §§ 1051-1052, 1127.
Serial No. 88233723
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In its Response to the first Office Action, Applicant, inter alia, amended the
application to seek registration under Section 1(b) for the International Class 41
services, obviating the first and second grounds for refusal listed above.5
After further prosecution, the Examining Attorney issued a Final Office Action
which contained a single refusal under Trademark Act Sections 1, 2 and 45 “because
the applied-for mark, as used on the specimen of record, identifies only a particular
character in a creative work; it does not function as a trademark to identify and
distinguish applicant’s goods from those of others and to indicate the source of
applicant’s goods.”6 The Final Office Action does not mention the International Class
41 services and does not cite to Section 3 of the Trademark Act pertaining to services,
but the Examining Attorney never explicitly withdrew the failure to function refusal
for the International Class 41 services. When the Examining Attorney first refused
registration of the International Class 41 services, Applicant sought registration of
its mark for such services pursuant to Section 1(a). We find that in view of the
prosecution record, and because the Examining Attorney only references the goods in
the application in discussing the failure to function refusal in her brief,7 the final
refusal is not directed to the International Class 41 services, but only to the
International Class 9 goods.8

5 September 11, 2019 Response, TSDR 1.
6 March 10, 2020 Final Office Action, TSDR 1.
7 Applicant’s brief at p. 1, 8 TTABVUE 4.
8 In this regard, we note TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 2012
(Oct. 2018) which states:

Serial No. 88233723
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Applicant then filed a request for reconsideration which raised for the first time
an alternative claim of acquired distinctiveness under Section 2(f) of the Trademark
Act, 15 U.S.C. § 1052(f), stating, “assuming arguendo that the Llama is a ‘character’
and subject to refusal on that ground, Applicant respectfully submits in the
alternative that the Llama has acquired distinctiveness under Section 2(f) of the
Trademark Act ….”9 (emphasis in original). Applicant submitted evidence in support
of its claim. Because we construe the failure to function refusal as pertaining only to
the International Class 9 goods, we construe the alternative claim of acquired
distinctiveness as limited to the International Class 9 goods.
The Examining Attorney was not persuaded by the request for reconsideration
and maintained the refusal, stating:
Applicant has argued that in the alternative the llama has
acquired distinctiveness under Section 2(f) based on

The issue of whether a designation functions as a mark usually
is tied to the use of the mark, as evidenced by the specimen.
Therefore, unless the drawing and description of the mark are
dispositive of the failure to function without the need to consider
a specimen, generally, no refusal on this basis will be issued in
an intent-to-use application under §1(b) of the Trademark Act,
15 U.S.C. §1051(b), until the applicant has submitted a
specimen(s) with an allegation of use (i.e., either an amendment
to allege use under 15 U.S.C. §1051(c) or a statement of use
under 15 U.S.C. §1051(d)). However, in a §1(b) application for
which no specimen has been submitted, if the examining
attorney anticipates that a refusal will be made on the ground
that the matter presented for registration does not function as a
mark, the potential refusal should be brought to the applicant’s
attention in the first Office action. This is done strictly as a
courtesy. If information regarding this possible ground for
refusal is not provided to the applicant before the allegation of
use is filed, the USPTO is not precluded from refusing
registration on this basis.
9 May 1, 2020 Req. for Recon., TTABVUE 2.
Serial No. 88233723
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evidence submitted by applicant. However, this is not a
proper response to the refusal. The name or illustration of
a character is registrable as a trademark only where the
record shows that it is used in a manner that would be
perceived by consumers as identifying the source of the
goods in addition to identifying the character.10
Applicant next appealed the failure to function refusal to this Board. The appeal
is fully briefed. We affirm the refusal to register for the International Class 9 goods.
II. Background
Applicant’s video game which is the subject of its specimens is described as follows
in the Declaration of Christopher M. Thomas, Applicant’s attorney:
1. On July 25, 2017, what is now known as Fortnite: Save the World was broadly
released as the first game mode of Fortnite. It is a player-versus-environment
(PvE) game in which players may band together to rebuild towns left vacant in
the wake of “the Storm” and defend them from the monsters that populate this
world.

2. On September 26, 2017, the free-to-play Fortnite “Battle Royale” game mode
was broadly released to the public. Like other games in this genre, Fortnite
Battle Royale involves dropping a limited number of players into a large map.
Fortnite Battle Royale combines building skills and destructible environments,
with intense player-versus-player (PvP) combat. When players land on the
island, they gather various items - e.g., weapons and consumables such as
ammunition, shield potion, bandages, medical kits, and building materials -
they will need to survive and outlast the other players on the island.

***

8. Applicant introduced the Llama item into Fortnite on or about March 15,
2018.11 While moving about the map, a player may find a Llama item and open
it to find weapons and consumables that the player may then pick up.

10 May 30, 2020 Denial of Req. for Recon., TSDR 1.
11 Applicant does not identify the video game in which “the Llama item” appears.
Wikipedia.org explains:
V-Bucks in Save the World can be used to buy piñatas shaped
like llamas to gain a random selection of items. In “Battle
Royale”, V-Bucks can be used to buy cosmetic items like
Serial No. 88233723
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9. The Llama item is known to players, streamers, and fans as the “Loot Llama,”
“Supply Llama,” or just “the Llama.” In gameplay, the Llama item serves a
function familiar to many players (e.g., a resource cache), but is portrayed in a
unique and unusual way.

***

11. A player opens the Llama item by pressing on the hand symbol hovering over
the Llama item, as shown in the first screenshot above.

12. When opened, the Llama item disappears completely and the objects within
fall to the ground, along with confetti ….12

III. Evidence
A. Evidence submitted by the Examining Attorney
● A definition of “character” from MERRIAM-WEBSTER DICTIONARY, including “one
of the persons of a drama or novel.”13
● Webpages regarding Applicant and third-party websites referring to
“characters” in video games, for example:
• Fortnite.fandom.com - “The Loot Llama’s location
is in random places inside of the safe zone”; “The
Loot Llama is called Fred”; and “the Loot Llama is a
cartoon-like piñata in the shape of a llama.”
• Gamedesigning.org – “Our 50 Favorite Video
Game Characters” listing the proposed mark.14

character models or the like or can also be used to purchase the
game’s Battle Pass, a tiered progression of customization
rewards for gaining experience and completing certain
objectives during the course of a “Battle Royale” season.
March 10, 2020 Final Office Action, TSDR 15.
12 Declaration of Christopher M. Thomas, February 5, 2020 Response, TSDR 24-27.
13 March 10, 2020 Final Office Action, TSDR 2.
14 May 30, 2020 Denial of Req. for Recon., TSDR 22-25.
Serial No. 88233723
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B. Evidence submitted by Applicant
● A dictionary entry for “character” from THE AMERICAN HERITAGE DICTIONARY
OF THE ENGLISH LANGUAGE (5th ed. 2019), including “[a] person portrayed in an
artistic piece, such as a drama or novel,” and “[a] person or animal portrayed with a
personality in a comics or animation: a cartoon character.”15
● Mr. Thomas’ Declaration, which also states:
3. Since its broad release, Fortnite has garnered over
250 million registered accounts. During regular gameplay,
Fortnite has had concurrent player counts of over
8.3 million, and higher than that during special event
gameplay.
4. Fortnite gameplay is streamed and broadcasted on
platforms such as YouTube, Twitter, and Twitch, and is
viewed by millions. Fortnite is reportedly one of the most
watched video games on such platforms.
5. Fortnite is also a popular e-sport. The Fortnite World
Cup was held in July 2019 in New York City at Arthur
Ashe Stadium in front of a sold-out crowd of 19,000 fans
and millions more online. The Fortnite World Cup was the
most-watched competitive gaming event of all time outside
of China.16
● On-line articles about Applicant and its video game, some of which mention the
llama, from nbcnews.com, nymag.com, forbes.com, usatoday.com, variety.com,
popsugar.com, yahoo.com, cnn.com, intelligerncer.com, businessinsider.com,
trendhunter.com, cnbc.com, and theguardian.com.17

15 February 5, 2020 Response, TSDR 110.
16 February 5, 2020 Response, TSDR 25.
17 May 1, 2020 Req. for Recon. Exhs. A-E, J-R, TSDR 14-30; 60-109; Feb 5, 2020 Response,
TSDR 41-85.
Serial No. 88233723
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● Search results for “fortnite llama” and “fortnite and llama” on google.com and
walmart.com.18
● Webpages from walmart.com offering a “Fortnite 7″ “Llama Loot Plush,” a
“Fortnite Llama Loot Pinata,” a “Fortnite Jumbo Llama Loot Pinata” and an “8 Ft
Light-Up Loot Llama Inflatable Decoration – Fortnite.”19
● Webpages from retailers (Journeys, Kohl’s and Spencer’s) offering goods such as
knapsacks, bedding and cups bearing the proposed mark, or only the llama’s head, as
designs on the goods.20
● Articles discussing the llama in Applicant’s game, for example:
• Newsweek article dated February 22, 2019 titled “Toy Fair 2019: ‘Fortnite’
Makes Llamas the Industry’s Hot New Trend.” The article states:
Whether it is an unspoken consciousness among toy
companies or a secret plot by Big Llama, the llama has
come to take over the 2019 toy market.
***
But where has all this llama attention come from? Has the
llama always been popular? All the people we talked to had
one response: Fortnite, the popular video game whose
primary mascot is a llama in pixilate form. The Fortnite
llama is found in the battle royal game in the form of a loot
box. Find one randomly and the treasure within can be
yours. Fortnite has become so popular that numerous toy
companies are vying for the hot license.21

18 Feb 5, 2020 Response, TSDR at 86-89.
19 Id. at 90-97.
20 Id. at 105-108.
21 May 1, 2020 Req. for Recon. Exh. F, TSDR 40-44.
Serial No. 88233723
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• CNET article titled “Blame Fortnite for making llamas the hottest toy this
year,” stating:
Llama tell ya, Fortnite is a big influence on toys.
The popular battle royale game made its mark at this
year’s Toy Fair in New York.
***
And then there are llamas. So many llamas. Llama board
games. Llama collectible figurines. Spitting llamas.
Twerking llamas. Rainbow unicorn llamas. Experts point
the finger at the game Fortnite, when a loot-filled llama
piñata became an informal mascot of sorts.22
The article includes:
23
• Games Radar article titled “Where are the best Fortnite llama locations?”
“If you’ve had any sort of interaction with the world of
Fortnite, then you should instantly recognize the iconic

22 May 1, 2020 Req. for Recon. Exh. G, TSDR 46-47.
23 May 1, 2020 Req. for Recon. Exh. G, TSDR 46.
Serial No. 88233723
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colourful piniatas that are Fortnite llamas and have
become a well[-]known symbol of the game.”24
IV. Arguments by Applicant and the Examining Attorney
The Examining Attorney argues that a “design of a character is registrable as a
trademark only where the record shows that it is used in a manner that would be
perceived by consumers as identifying the goods in addition to identifying the
character,”25 and:
[T]he specimen(s) shows the applied-for mark used only to
identify a character and not as a trademark for applicant’s
goods because it merely shows use of the proposed mark as
a character that appears while consumers are playing
applicant’s games. As shown on applicant’s specimens of
use submitted with the application, the proposed [mark]
merely appears as a character in the games or is used in
advertising applicant’s games and frequently appears as
only a portion of the proposed mark.26
The Examining Attorney adds that “[t]he only specimen showing the entire
proposed mark appears to be under the ‘NEWS’ tab on applicant’s website, which
appears to provide information or news about applicant’s goods. On that specimen,
the mark merely floats around the background of the screen multiple times as a
character appearing in the game.”27
Applicant disagrees that the llama is a character in its game. It argues that
“character” is defined in relevant part as a “person or animal portrayed with a

24 Id., Exh. H, TSDR 49. Although this article uses British spelling, an icon at the top of the
webpage indicates that it is the “US Edition.”
25 Examining Attorney’s brief, 8 TTABVUE 5.
26 Id.
27 Id.
Serial No. 88233723
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personality in comics or animation: a cartoon character”; and that “[t]he Llama does
not move, speak, or otherwise interact in any way with players or other objects. The
Llama has no personality because it is an inanimate object within Fortnite. Lacking
any personality, Applicant’s Llama simply does not meet the definition of
the word ‘character.’”28 (emphasis in original.) Applicant concludes, “because the
Llama has no personality, it cannot be a ‘character’ and therefore it cannot, as the
Examining Attorney claims, identify ‘a particular character in a creative work.’ For
this reason, Applicant respectfully requests that the refusal be reversed.”29
V. Analysis
“[A] proposed trademark is registrable only if it functions as an identifier of the
source of the applicant’s goods or services.” In re DePorter, 129 USPQ2d 1298, 1299
(TTAB 2019) (citing 15 U.S.C. §§ 1051-1052, and 1127). The critical question in
determining whether a proposed mark is capable of functioning as a trademark is the
commercial impression it makes on the relevant public, i.e., whether the term sought
to be registered would be perceived as a mark identifying the source of the goods or
something else. See In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006)
(“the mark must be used in such a manner that it would be readily perceived as
identifying the specified goods. ... A critical element in determining whether matter
sought to be registered as a trademark is the impression the matter makes on the
relevant public.” (citations omitted)); In re Volvo Cars of N. Am. Inc., 46 USPQ2d

28 Reply brief at pp. 3-4, 9 TTABVUE 4-5.
29 Reply brief at p. 6, 9 TTABVUE 7.
Serial No. 88233723
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1455, 1459 (TTAB 1998); In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB
1987); In re Morganroth, 208 USPQ 284, 287 (TTAB 1980).
“The mere fact that a designation appears on the specimens of record does not
make it a trademark.” In re Aerospace Optics, 78 USPQ2d at 1862 (citing In re
Safariland Hunting Corp., 24 USPQ2d 1380 (TTAB 1992)). For Applicant’s design to
function as a mark, the design must be displayed on the specimens in a manner in
which customers will recognize it as a mark. See In re Morganroth, 208 USPQ at 288
(“This necessitates a determination as to whether it is used and provided in such a
manner so as both to make it known to purchasers and to have such individuals
associate it with the goods as an identification symbol.”); see also In re Osterberg, 83
USPQ2d 1220, 1223 (TTAB 2007) (finding that CONDOMTOY CONDOM was not
displayed so prominently on web page specimen that consumers would recognize it
as a trademark for condoms). “We determine whether this has been achieved by
examining the specimens of use along with any other relevant material submitted by
applicant during prosecution of the application.” In re Aerospace Optics, 78 USPQ2d
at 1862 (citation omitted).
As noted earlier in this decision, only the V3.3 Patch Notes webpage shows the
mark intact and in its entirety. “In an application under section 1(a) of the Act, the
drawing of the mark must be a substantially exact representation of the mark as used
on or in connection with the goods and/or services.” Trademark Rule 2.51(a), 37 C.F.R.
§ 2.51(a). The V3.3 Patch Notes webpage is duplicated again below for convenience:
Serial No. 88233723
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The entire llama is displayed twice in muted colors, once in the near background
on the right and again in the distant background on the left. The images of the entire
llama are not the most prominent images on the webpage – portions of the llama are
depicted twice in the foreground in colors which are far more vivid than the colors
used on the proposed mark, thereby giving additional prominence to those designs.
The repetition of the llama on the specimen in varying sizes, portions and vividity
detracts from Applicant’s claim that the single llama depicted in its drawing would
be recognized as its mark. In addition, consumers considering the source of the
webpage can look to the term FORTNITE which appears at the top left portion of the
specimen. We thus find that the applied-for mark displayed on the V3.3 Patch Notes
webpage is not used in a manner showing trademark use and does not function as a
mark.
Serial No. 88233723
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Applicant sought to demonstrate through evidence of acquired distinctiveness
“that Fortnite is an immensely-popular cultural phenomenon and that the Llama is
widely recognized as a symbol/mascot of Fortnite.”30 However, as the Examining
Attorney explained, the issue here is whether the Applicant uses the design in a
manner that it will be perceived as a trademark use, and not merely that of a
character or game piece in the software game. Thus evidence showing other uses to
establish acquired distinctiveness are off the mark. If it is used in such a manner as
to be perceived as a trademark, then a showing of acquired distinctiveness is
unnecessary. Conversely, if it is not used in a manner that it may be perceived as a
trademark, evidence of use to establish acquired distinctiveness is unavailing. See In
re The Ride, Inc., 2020 USPQ2d 39644, at *33 (TTAB 2020) (“no amount of evidence
of acquired distinctiveness can overcome a failure to function refusal [of tap dancing
man]”); TMEP § 1212.02(i) (“[W]here the examining attorney has determined that
matter sought to be registered is not registrable because it is not a mark within the
meaning of the Trademark Act, a claim that the matter has acquired distinctiveness
under § 2(f) as applied to the applicant’s goods or services does not overcome the
refusal.”). Because we have concluded that the llama design as displayed on
Applicant’s V3.3 Patch Notes webpage fails to function as a mark, Applicant’s claim
of acquired distinctiveness in the alternative does not overcome that refusal.
We cannot ignore Applicant’s evidence, however, and must consider the entire
record in determining whether Applicant’s proposed mark as displayed on its

30 Applicant’s brief at p. 8, 6 TTABVUE 9.
Serial No. 88233723
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specimens will be perceived as a mark serving to indicate source rather than simply
displaying part of the product, in this case a character or game piece in the software
game. See In re Aerospace Optics, 78 USPQ2d at 1864 (“We determine whether this
has been achieved by examining the specimens of use along with any other relevant
material submitted by applicant during prosecution of the application.” (citation
omitted));31 In re Safariland Hunting, 254 USPQ2d at 1381 (“However, we may also
consider other evidence bearing on the question of what impact applicant’s use is
likely to have on purchasers and potential purchasers.”). We look primarily, however,
at Applicant’s specimen. Id. (“Since the specimens of record show how the applied-for
mark is actually used in commerce, we must primarily look to the specimens to see if
the designation would be perceived as a source indicator.” (citations omitted)).32
Much of Applicant’s evidence concerns the number of players of Applicant’s video
games and comments in the press about Applicant, some of which mention the llama.

31 Of course, Applicant’s argument that the Examining Attorney conceded that Applicant’s
proposed mark has acquired distinctiveness because the Examining Attorney did not further
discuss the issue of acquired distinctiveness is meritless. Applicant’s citation to In re Rolf
Dietrich, 91 USPQ2d 1622 (TTAB 2009), for support is misplaced. In that case, one issue was
whether the configuration therein would be registrable with an appropriate Section 2(f)
showing. In this case, acquired distinctiveness is not an issue in connection with the failure
to function refusal. Rolf Dietrich is clearly inapposite.
32 Altman, Louis, CALLMANN ON UNFAIR COMPETITION, TRADEMARKS AND MONOPOLIES
§ 17A:3, fn.1 (4th ed. Dec. 2020 update) explains:

For federal registration purposes, however, non-trademark use
in the specimens which are submitted with the registration
application may be supplemented by other examples of use of the
mark, to establish that the mark would be perceived as a
trademark for the goods, even though such other uses are not
sufficient in themselves to support registration because they are
on documents which are not affixed to or associated with the
goods.
Serial No. 88233723
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This is not helpful in demonstrating the central issue before us, whether Applicant’s
llama design as used on the V3.3 Patch Notes functions as a source indicator. Neither
is the numerous plush llama toy animals or llama piñatas available through retailers
such as Walmart and Amazon, because these do show use on Applicant’s video games.
Turning to the Declaration, Mr. Thomas describes how the llama design appears
when a player begins to play Applicant’s video game:
17. … Upon opening Applicant’s free-to-play version of
Fortnite, a home screen appears. The Llama item is
prominently displayed at the bottom of the home page
under the option to begin gameplay by clicking on the
“PLAY” button:

Serial No. 88233723
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18. After pressing the “PLAY” button on the home screen,
players may see a loading screen before gameplay begins.
Such loading screen also displays the Llama item:
33
Our precedent requires us to consider non-specimen uses of a proposed mark. In
Safariland Hunting, the Board considered whether the term SAFARILAND in the
phrase or slogan “Made by the Good Ole Boys at Safariland!” on specimens functioned
as a mark. In re Safariland Hunting, 254 USPQ2d at 1381. In addition to the
specimens, the Board considered a product catalog which included (i) a listing of
“Contents” on the inside cover with “Tink’s Safariland” as the first listing; and (ii) a
back cover with the statements, “A Greatly Expanded Magazine ad schedule cements
the Tink’s Safariland & Ben Lee names in the hunter’s mind” and “Hunters
everywhere will be seeing Tink’s Safariland & Ben Lee ads in popular hunting
publications through its greatly increased advertising schedule.” Id. at 1382. The
Board concluded:

33 February 5, 2020 Response to Office Action, TSDR 29-30.
Serial No. 88233723
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Such uses of SAFARILAND in applicant’s catalog enhance
the use on applicant’s containers that is to say, the catalog
convinces us that purchasers, when seeing SAFARILAND
on the containers, would perceive the designation as
indicating source or origin. We think that SAFARILAND,
as shown by the record taken as a whole, functions as a
trademark and will be recognized in itself as an indication
of origin for animal scents.
Id.
Mr. Thomas’ testimony and the screenshots displayed in his Declaration do not
persuade us that consumers encountering the applied-for llama design on Applicant’s
V3.3 Patch Notes specimen would perceive it as an indicator of source. First, the
applied-for design is not depicted in the first image; the saddlebag on the home screen
differs from that on the drawing page. Second, the llama in the loading screen appears
in what seems to be a scene from the video game and is not used in a manner to
indicate source. Third, there is no claim of trademark rights through the designation
“TM.” See In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)
(“Though not dispositive, the ‘use of the designation ‘TM’ … lends a degree of visual
prominence to the term.’” (quoting In re Dell Inc., 71 USPQ2d 1725, 1729) (TTAB
2004)).
Applicant also argues:
It makes no sense to refuse a mark on the academic ground
that it fails to function as a mark when the undisputed
evidence demonstrates that it in fact does function as (and
therefore is) a trademark. Indeed, this principle is
consistent with that which the Office and the courts apply
with respect to the registration of product design; it is
impossible to use the shape of a product itself as a
trademark, yet an applicant asserting rights in product
design may avail itself of Section 2(f) to prove that, in fact,
the product design has acquired distinctiveness in the
Serial No. 88233723
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minds of consumers and should be registered as a
trademark.34
Applicant’s argument ignores that a specimen must be submitted demonstrating
use of the applied-for mark as a trademark or service mark. See Trademark Act
§ 1(a)(1); Trademark Rules 2.34(a)(1)(iv), 2.56(a), 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56(a);
see also TMEP §§ 904.03(e) (i), 904.07, 1202.10. As explained in In re Caserta, 46
USPQ2d 1088, 1090 (TTAB 1998):
There is no question that the name of a fictitious character
may be registrable as a trademark or a service mark if that
name is used on or in association with the goods in such a
manner as to identify the goods and distinguish them from
those of others, and the goods are sold or transported in
commerce. Likewise, as applicant correctly notes, a finding
that the fictitious character’s name is well-known is not a
prerequisite to the registrability of that name as a
trademark. Rather, the sole issue is whether the name of
the fictitious character is used in such a manner that it is
likely to be perceived as a trademark in connection with
the identified goods. This is quite distinct from a finding
that a mark is well known, which involves consideration of
the renown of the mark among relevant consumers.
Applicant submitted a webpage as a specimen of use for “downloadable video
game software,” and hence must meet the requirements for demonstrating that the
webpage demonstrates use of the proposed mark as a source indicator for such goods.
Its specimens of use do not show use of the llama as a mark to demonstrate that it
functions as a source indicator for such goods.

34 Applicant’s brief at p. 13, 6 TTABVUE 14.
Serial No. 88233723
- 22 -
VI. Conclusion
As used on Applicant’s specimens, the proposed mark fails to function as a mark
under Trademark Act Sections 1, 2 and 45 for “downloadable video game software” in
International Class 9.
Decision: The refusal to register the proposed mark is affirmed for the goods in
International Class 9 because it fails to function as a mark.
The application will otherwise proceed to await the filing of a statement of use for
the International Class 41 services.