As a practicing Florida trademark attorney, I'm often asked about what is registrable as a trademark. Can you register a slogan? Can you register a work of art? Can you register the name of a work of art? Google's current trademark dispute illustrates the answers to some of these questions.
After much fanfare, yesterday Google made its Nexus One phone available for purchase. As promised, the phone operates Google's Android operating system. But science fiction buffs might notice the literary allusion to Phillip K. Dick's novel "Do Android's Dream of Electric Sheep?" made famous by the movie adaptation, Blade Runner, featuring Harrison Ford. The novel features androids, i.e., robotic humans, gone awry. Specifically, the novel focuses on the "Nexus-6" line of androids. The owners of Mr. Dick's estate noticed this similarity and are now threatening to sue Google for trademark infringement. But does Mr. Disk's estate own a trademark?
Phillip K. Dick's "Do Android's ... ?" novel was a single creative work not part of a series, as was the Blade Runner movie. Single creative works and, by extension, characters in those works, are generally not afforded trademark rights (see TMEP sec. 1202.08). Further, to my knowledge, the characters in the Dick movie and novel were never merchandised (such as in "action figure" form) by Dick, Dick's estate or any other licensed party. Without "use in commerce" of the "Android" term in connection with the sale of goods, trademark rights could not have been created.
Mr. Dick's estate will surely point to Verizon's licensing of the "Droid" mark from LucasFilms. The Droid mark, used in the Star Wars films to denote a robot, is now used under license by Verizon as a mark associated with its new smart phone. The Nexus One situation, however, is quite different because LucasFilm has manufactured and sold merchandise featuring the word "Droid" as far back as the 1980s. Thus, LucasFilm created trademark rights dating back decades. Further, LucasFilm's Star Wars franchise spawned a series of movies and books, not a single creative work. The title and the characters used in a series of works can be registered as a trademark (see TMEP sec. 1202.08c)
Therefore, it seems that Mr. Dick's estate is out of luck. Returning to my client's inquiries about items that are registrable as trademarks: slogans and works of art are registrable, but the title of a single creative work is not registrable unless it subsequently becomes the title of a series of works.
