Gap Inc. and Diane Von Furstenberg’s company DVF Studio have asked the federal court in the Southern District of New York to rule on whether the heart emoticon can be protected as a trademark. Their declaratory judgment complaint filed against VeryMeri Creative Media Inc., 13 civ 8943 (December 17, 2013),  contends that VeryMeri cannot claim intellectual property rights in its stylized heart logo, which consists of or incorporates the  emoticon, since that logo/emoticon is “widely used in connection with apparel and related products,” since the stylized heart logo “is nothing more than a commonly used and well-known ‘emoticon’ or metacommunicative pictorial representation of a heart design,” and because “no one entity can be said to have the exclusive right over all forms of this [emoticon heart] design.”

VeryMeri, which has two US intent-to-use applications pending for marks consisting of or containing a heart logo design, had sent cease and desist letters to DVF and Gap alleging infringement and dilution based upon two print pattern designs which incorporated   design elements. The prints were intended to be used by the companies in connection with a line of children’s products. As of this writing, VeryMeri had not yet filed a response to the complaint.

So, the question is raised as to whether commonly used words or designs or other stylistic elements can ever function as trademarks. Generally speaking, the answer to this question is almost always a resounding “yes.” If a word, design, or other stylistic element is being used properly as a trademark on a product or as a service mark to advertise and provide a service, and does not violate any of the restrictions imposed by the Trademark Act, it can function as a trademark and be registered. The statutory restrictions set forth in the Trademark Act specifically forbid the registration of marks which:

• are immoral

• are deceptive

• are scandalous

• disparage or falsely suggest a connection with persons living or dead, institutions, beliefs, or national symbols or which bring them into contempt or disrepute

• are geographical indications use with wines or spirits which identify a place other than the origin of the goods

• consist of or comprise the flag or coat of arms or other insignia of the United States,  any State or municipality, or of any foreign nation

• consist of or comprise a name, portrait, or signature identifying a particular living individual without his written consent

• consist of or comprise the name, signature, or portrait of a deceased President of the United States during the life of his widow without the written consent of the widow

• consist of or comprise a mark likely to be confused with a prior existing registered or unregistered mark

• are descriptive or misdescriptive as used

• are geographically descriptive or deceptively misdescriptive as used

• are primarily merely a surname

• comprise any matter that, as a whole, is functional

• are generic as used

There is nothing in these restrictions which states that a word, design, or other stylistic element that is in “common use” by third parties cannot function or be registered as a trademark. Thus, if there is such use by third parties for purposes other than as a brand or source identifier, should this “common use” automatically preclude someone from adopting and using any of these items as a trademark or service mark?

As far as emoticons are concerned, the US Trademark Office has, in fact, allowed registration of emoticons as trademarks. The emoticons ; ) , :o) , : ) , *-)- , and : – (  have all been registered as trademarks by different entities for use on and for various goods and services including alcoholic beverages, clothing, online retail store services, cellular telephones, communication services, hardware and software, greeting cards, posters, art prints, calendars, postcards, and note cards. Thus, there seems to be no doubt that an emoticon per se is capable of functioning as a trademark. Of course, every case is decided based upon its own particular set of facts, and how this will play out in the above litigation will be interesting to see.

Stay tuned.