If you are an author, artist, or a performer of some type (e.g. a recording artist) and you want to register your name or pseudonym as a trademark, that probably seems like a reasonable thing for you to do. After all, your name tells the public something very important about your work, whether it be a book, a music CD, a work of art or some other artistic or literary creation. Unfortunately it’s not so simple. This has nothing to do with the prohibition on registering surnames (which generally does not apply to full names, pseudonyms or other made up names, although it could if for example, your recording name is simply, “Jones”). The issue with such names is that the law takes a somewhat odd view of the function of an artist’s name. While one might argue that such a name at least informs consumers that the product on which the name appears “comes from” this artist, that, according to case law and current USPTO practice, is not a trademark function.
In one of the first cases to address the subject the Court of Appeals for the Federal Circuit held that the name “ABBA” was registrable as a trademark for musical recordings, stating “just showing the name of the recording group on a record will not by itself enable that name to be registered as a trademark. Where, however, the owner of the mark controls the quality of the goods, and where the name of that recording group has been used numerous times on different records and has therefore come to represent an assurance of quality to the public, the name may be registered as a trademark since it functions as one”. The Trademark Manual of Examining Procedure states as follows:
1202.09(a) Names and Pseudonyms of Authors and Performing Artists
Any mark consisting of the name of an author used on a written work, or the name of a performing artist on a sound recording, must be refused registration under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, if the mark is used solely to identify the writer or the artist. See In re Polar Music Int’l AB, 714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983); In re First Draft, Inc. 76 USPQ2d 1183, 1190 (TTAB 2005); In re Peter Spirer, 225 USPQ 693, 695 (TTAB 1985). Written works include books or columns, and may be presented in print, recorded, or electronic form. Likewise, sound recordings may be presented in recorded or electronic form.
However, the name of the author or performer may be registered if:
- (1) It is used on a series of written or recorded works; and
- (2) The application contains sufficient evidence that the name identifies the source of the series and not merely the writer of the written work or the name of the performing artist.
If the applicant cannot show a series, or can show that there is a series but cannot show that the name identifies the source of the series, the mark may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act. These types of marks may not be registered on the Principal Register under §2(f).
See also TMEP §1301.02(b) regarding personal names as service marks.
1202.09(a)(i) Author or Performer’s Name – Evidence of a Series
In an application seeking registration of an author’s or performer’s name, the applicant must provide evidence that the mark appears on at least two different works. Such evidence could include copies of multiple book covers or multiple CD covers that show the name sought to be registered. A showing of the same work available in different media, i.e., the same work in both printed and/or recorded or downloadable format, does not establish a series.
The identification of goods need not reflect that the applicant is using the name on a series of works (either written or recorded). It is sufficient that the record contains the evidence of a series.
1202.09(a)(ii) Evidence that the Name is a Source Identifier
The use of the author’s or performer’s name on a series of works does not, in itself, establish that the name functions as a mark. The record must also show that the name serves as more than a designation of the writer or performer, i.e.,that it also serves to identify the source of the series. See In re First Draft, 76 USPQ2d 1183, 1191 (TTAB 2005) (holding pseudonym FERN MICHAELS identified only the author and did not function as a mark to identify and distinguish a series of fictional books because the “evidence of promotion” was “indirect and rather scant,” despite applicant’s showing that the name had been used as an author’s name for 30 years; that 67 separate books had been published under the name, and approximately 6 million copies had been sold; that the book jackets listed the titles of other works by Fern Michaels and promoted her as a bestselling author; that the author had been inducted into the New Jersey Literary Hall of Fame; and that there was a www.fernmichaels.com website); In re Chicago Reader Inc., 12 USPQ2d 1079, 1080 (TTAB 1989) (holding CECIL ADAMS, used on the specimen as a byline and as part of the author’s address appearing at the end of a column, merely identifies the author and does not function as a trademark for a newspaper column).
A showing that the name functions as a source identifier may be made by submitting evidence of either: (1) promotion and recognition of the name as a source indicator for the series (see TMEP §1202.09(a)(ii)(A)); or (2) the author’s or performer’s control over the name and quality of his or her works in the series (see TMEP §1202.09(a)(ii)(B)).
1202.09(a)(ii)(A) Promotion and Recognition of the Name
To show that the name of an author or performing artist has been promoted and is recognized as indicating the source of a series of written works, the applicant could submit copies of advertising that promotes the name as the source of a series, copies of third-party reviews showing others’ use of the name to refer to a series of works, or evidence showing the name used on a web site associated with the series of works. See In re First Draft, 76 USPQ2d 1183, 1191 (TTAB 2005), citing In re Scholastic Inc., 23 USPQ2d 1774, 1777 (TTAB 1992) (holding THE MAGIC SCHOOL BUS functions as a mark for a series of books, where the record contained evidence of use of the designation displayed prominently on many different book covers, as well as evidence that applicant promoted the term as a series title, that others used the designation in book reviews to refer to a series of books, and that purchasers recognized the designation as indicating the source of a series of books).
1202.09(a)(ii)(B) Control over the Nature and Quality of the Goods
Alternatively, an applicant may show that the name of an author or performing artist functions as a source indicator by submitting documentary evidence that the author/performer controls the quality of his or her distributed works and controls the use of his or her name. Such evidence would include license agreements and other documentary or contractual evidence. See In re Polar Music Int’l AB, 714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983) (holding the name of the musical group ABBA functions as a mark for sound recordings where a license agreement showed that the owner of the mark, ABBA, controlled the quality of the goods, and other contractual evidence showed that the owner also controlled the use of the name of the group).
In In re First Draft, 76 USPQ2d 1183, 1191 (TTAB 2005), the Board found that the applicant failed to meet the Polar Music test, noting that:
[W]e have neither any evidence bearing on [the question of applicant’s control over the quality of the goods] nor even any representations by counsel regarding such matters. This is in stark contrast to Polar Music, wherein there was detailed information and documentary (i.e., contractual) evidence regarding the relationship between the performing group ABBA and its “corporate entity,” as well as evidence of the control such corporation maintained in dealings with a manufacturer and seller of its recordings in the United States.
If the applicant maintains control over the quality of the goods because the goods are published or recorded directly under the applicant’s control, the applicant may submit a verified statement that “the applicant publishes or produces the goods and controls their quality.”
Clearly, the law does not view the creator of the underlying work contained in a physical product such as a book, a CD or even a piece of art as a “source”. This seems odd on its face as one might assume that without knowing anything else about the product, it is the artist’s name that would communicate to the consumer the most possible information about it. However, one must dig deeper into trademark theory to fully grasp the rationale for the above “rules” from the TMEP. in determining ownership of a trademark, the law places its focus on quality control. Quality control is the essence of trademark ownership, that is, the owner of a trademark is the entity that ultimately control the nature and quality of the goods or services sold under the trademark. When one considers a music CD, for example, the performer is a mere contributor – an ingredient of the product if you will (strange as that sounds). Thus the requirement that the trademark applicant demonstrate that he or she as the author/artist, etc. does in fact have ultimate control over the quality of the goods sold. When it comes to services, the strict rules do not apply. This makes sense when one considers that nobody but the performer herself can possibly control the nature and quality of the services she performs.
A recent case illustrates how difficult it can be for an artist to register his name as a trademark. The first part of the test is straightforward. it requires that the name be used on at least two different products (i.e. a series). That also pertains to titles and there is little controversy over that rule because without a second product, there is no trademark function played by a designation for a single work (it is merely the work’s title, or in the case of an author the book’s author).
In the recent TTAB decision of In Re Ethan A. Arnold, the Applicant, who went by the name “Blatancy” failed to convince the TTAB that he controlled the nature of the goods at issue, namely, musical CD recordings. The TTAB stated that the appearance of various other party names in the evidence submitted raised questions about exactly who controlled the quality of the CDs.
Interestingly, there is an easy way for an applicant who truly believes that he or she does in fact control the nature of the goods involved. If the applicant maintains control over the quality of the goods because the goods are published or recorded directly under the applicant’s control, the applicant may submit a verified statement that “the applicant publishes or produces the goods and controls their quality.” In the case being discussed, the applicant refused to do this (this raises questions that simply can not be answered based on a reading of the case).
An alternative to showing control over the nature of the goods is showing that there has been promotion of the author’s name such that it has become recognized as a source indicator for a series of works. This is very difficult to show as exemplified in the case In re First Draft, 76 USPQ2d 1183, 1191 (TTAB 2005). In that case the author, who used the pseudonym FERN MICHAELS, was unable to make the required showing. The TTAB held that FERN MICHAELS identified only the author and did not function as a mark to identify and distinguish a series of fictional books because the “evidence of promotion” was “indirect and rather scant,” despite applicant’s showing that the name had been used as an author’s name for 30 years; that 67 separate books had been published under the name, and approximately 6 million copies had been sold; that the book jackets listed the titles of other works by Fern Michaels and promoted her as a bestselling author; that the author had been inducted into the New Jersey Literary Hall of Fame; and that there was a www.fernmichaels.com website.
by Trademark Attorney Gene Bolmarcich