uspto.gov
Skip over navigation

Examination Guide 04-06

Examination Guide 04-06
REGISTRABILITY OF MARKS USED ON CREATIVE WORKS
Issued November 14, 2006

I. INTRODUCTION

II. NAMES AND PSEUDONYMS OF AUTHORS/PERFORMING ARTISTS

1. Evidence of a series

2. Evidence that the name is a source identifier

a. Promotion and recognition of the name

b. Control over the nature and quality of the goods

III. ORIGINAL WORKS OF ART – ARTIST NAMES

IV. TITLE OF A SINGLE CREATIVE WORK

1. What constitutes a single creative work

2. What does not constitute a single creative work

3. Complete title of the work – evidence of a series

4. Portion of a title of the work

a. Mark must create a separate commercial impression

b. Establishing as series when the mark is a portion of the title

c. Evidence that the portion of the title is promoted or recognized as a mark

5. Identification of goods

V. CHARACTER NAMES AND DESIGNS

VI. CREATIVE WORKS IN A LIST OF GOODS OR SERVICES

___________________________________________________________________________

I. INTRODUCTION

This examination guide addresses the issues associated with the registrability of trademarks and service marks that identify the author of a written work, the performing artist on a sound recording, the creator of an original work of art, the titles of a single creative written or performed work and characters in a creative work. This examination guide supersedes the current practices set forth in the Trademark Manual of Examining Procedure (TMEP), 4th edition, to the extent that they are inconsistent with the policies herein.

II. 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 Sections 1, 2 and 45 of the Trademark Act if the mark is used solely to identify the writer or the artist. In re Polar Music Inter'l AB , 714 F.2d 1567, 221 USPQ 315 (Fed. Cir. 1983); In re First Draft , Inc. 76 USPQ2d 1183 (TTAB 2005); In re Peter Spirer , 225 USPQ 693   (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 a series but cannot show that the name identifies the series, the mark may be registered on the Supplemental Register. These types of marks may not be registered on the Principal Register under Section 2(f).

1.  Evidence of a series

In an application seeking registration of an author 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.

Identification of goods

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. 1

2. Evidence that the name is a source identifier

The use of the author or performer's name on a series of works does not in itself establish that the name functions as a mark. 2 The record must also show that the name serves as more than a designation of the writer or performer, namely that it also serves to identify the source of the series. See, In re First Draft Inc., supra , 76 USPQ2d at 1191 (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 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 (TTAB 1989) (CECIL ADAMS, used on the specimens 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 (a) of promotion and recognition of the name as a source indicator for the series; or (b) the author or performer's control over the name and quality of his or her works in the series.

a. Promotion and recognition of the name as a source indicator for a series

To show that the name has been promoted and that others recognize the name as indicating the source of a series of written works, the applicant could submit evidence of advertising that promotes the name as the source of a series, third-party reviews showing others' use of the name to refer to a series of works, or the name of the author/performer used on a display associated with the series of works. See In re First Draft Inc. , supra , citing In re Scholastic Inc. , 23 USPQ2d 1774 (TTAB 1992) (THE MAGIC SCHOOL BUS held to function 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).

b. Control over the nature and quality of the goods established by documentary evidence

Alternatively, the applicant may show that the name 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. In re Polar Music Inter'l AB , supra (the name of the musical group ABBA held to function as a mark for sound recordings where a license agreement showed that the owner of the mark 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 Inc., supra , the Board found that the applicant failed to meet the Polar Music test, noting that:

[W]e have neither any evidence bearing on such matters 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. 76 USPQ2d at 1191.

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.

III. ORIGINAL WORKS OF ART - ARTIST NAME

An artist's name or pseudonym affixed to an original work of art may be registered on the Principal Register without showing that the name identifies a series. An original work of art includes paintings, murals, sculptures, statues, jewelry and like works that the artist personally creates . In In re Wood, 217 USPQ 1345 (TTAB 1983), the Board held that the pseudonym YSABELLA affixed to an original work of art functioned as a mark. The Board has expressly limited this holding to cases involving original works of art, stating in Wood that “[l]est we be accused of painting with too broad a brush, we hold only that an artist's name affixed to an original work of art may be registered as a mark and that here applicant's name, as evidenced by some of the specimens of record, functions as a trademark for the goods set forth in the application.” 217 USPQ at 1350. In In re First Draft Inc., supra , the Board again stated, “ Wood is limited in its application to cases involving original works of art and there is nothing to indicate that the panel deciding that case considered novels to be encompassed by the phrase original works of art.” 76 USPQ2d at 1190,

IV. TITLE OF SINGLE CREATIVE WORK

The title, or a portion of a title, of a single creative work must be refused registration under Sections 1, 2 and 45 of the Trademark Act unless the title has been used on a series of creative works. 3 The title of a single creative work is not registrable on either the Principal or Supplemental Register. Herbko Inter'l, Inc. v. Kappa Books, Inc ., 308 F.3d 1156, 1162, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) ("the title of a single book cannot serve as a source identifier"); In re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396, 400 (C.C.P.A. 1958), cert. denied , 358 U.S. 840, 119 USPQ 501 (1958) ("A book title ... identifies a specific literary work ... and is not associated in the public mind with the publisher, printer or bookseller...."); In re Posthuma , 45 USPQ2d 2011 (TTAB 1998) (title of a live theater production held unregistrable); In re Hal Leonard Publishing Corp ., 15 USPQ2d 1574 (TTAB 1990) (INSTANT KEYBOARD, as used on music instruction books, found unregistrable as the title of a single work); In re Appleby , 159 USPQ 126 (TTAB 1968) (title of single phonograph record, as distinguished from series, does not function as mark).

1. What constitutes a single creative work

Single creative works include works in which the content does not change, whether that work is in printed, recorded, or electronic form. Materials such as books, sound recordings, downloadable songs, downloadable ring tones, videocassettes, DVDs, audio CDs and films, are usually single creative works. Creative works that are serialized, i.e. the mark identifies the entire work but the work is issued in sections or chapters, are still considered single creative works. A theatrical performance is also a single creative work, because the content of the play, musical, opera, or similar production does not significantly change from one performance to another.

2 . What does not constitute a single creative work

Single creative works do not include periodically issued publications such as magazines, newsletters, brochures, comic books, comic strips or printed classroom materials, because the content of these works change with each issue. If the creative work is labeled “volume 1” or “part 1,” it is presumed to be periodical in nature and not a single creative work. Likewise computer software and computer games are not treated as single creative works. Live performances by musical bands, television and radio series and educational seminars are presumed to change with each presentation, and therefore are not single creative works.

3. Complete title of the work - Evidence of a series

An applicant may respond to a refusal based on a title of a single creative work by submitting evidence that the title is used on at least two different creative works. A series is not established when only the format of the work is changed. The same title used on a printed version of a book and a recorded version does not establish a series. Likewise, use of the title on an unabridged and abridged version of the same work or on collateral goods such as posters, mugs, bags, or t-shirts does not establish a series.

For example, if an application for the mark HOW TO RETIRE EARLY for “books” is refused because the specimen shows the mark used on a single creative work, the applicant may submit copies of other book covers for HOW TO RETIRE EARLY and any additional evidence needed to show that it is published each year with different content. It is not necessary to show that the mark was used on the series prior to filing the application or the allegation of use. However, evidence that the applicant merely intends to use the mark on a series is insufficient.

4. Portion of a title of the work

A portion of the title of any single creative work is registrable only if the applicant can show that the portion of the title meets the following criteria:

a) creates a separate commercial impression apart from the complete title;

b) is used on series of works; and

c) is promoted or recognized as a mark for the series.

a. Mark must create a separate commercial impression from the complete title .

When registration is sought for a portion of the title, the mark must be a separable element as used on the specimen. The examining attorney should consider the size, type font, color, and any separation between the mark and the rest of the title when making this determination. In re Scholastic Inc. , supra, ( the words THE MAGIC SCHOOL BUS are prominently displayed on the books' covers, and are in a larger, bolder style of type and different color from the remainder of each title. Moreover, the words appear on a separate line above the remainder of each title). If the portion of the title sought to be registered is not separable, the examining attorney should refuse the mark because it is not a substantially exact representation of the mark as it appears on the specimens. TMEP 807.12(d)

b. Establishing a series when the mark is a portion of the title

An applicant may establish that the portion of the title of a creative work is used on a series by submitting more than one book cover or CD cover with the mark used in all the titles. For example, if the mark on the drawing is “THE LITTLE ENGINE” and on the book it appears as “THE LITTLE ENGINE THAT WENT TO THE FAIR,” registration would be refused because the mark is a portion of a title of a single work. The applicant may respond by submitting additional books such as “THE LITTLE ENGINE GOES TO SCHOOL,” and “THE LITTLE ENGINE AND THE BIG RED CABOOSE.”

c. Evidence that a portion of the title is promoted or recognized as a mark

When a mark is used merely as a portion of the title of a creative work, the applicant has a heavier burden in establishing that the portion for which registration is sought serves as a trademark for the goods. The mere use of the same words in more than one book title is insufficient to establish the words as a mark for a series . The applicant must show that the public perceives the portion sought to be registered as a mark for the series. In re Scholastic Inc. , supra , (the mark THE MAGIC SCHOOL BUS used as a portion of a book title in “THE MAGIC SCHOOL BUS AT THE WATERWORKS” and “THE MAGIC SCHOOL BUS INSIDE THE EARTH,” held to function as a mark for a series because the record contained evidence of repeated use of the designation displayed prominently on book covers, as well as evidence that applicant promoted THE MAGIC SCHOOL BUS 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).

5. Identification of goods

The identification of goods need not reflect that the applicant is using the title on a series of works (either written or recorded); it is sufficient that the record contains the evidence of a series.

V. CHARACTER NAMES AND DESIGNS

Marks that merely identify a character in the creative work, whether used in a series or in a single work , are not registrable. In re Scholastic Inc., 223 USPQ 431 (TTAB 1984) (THE LITTLES, used in the title of each in a series of children's books, does not function as a mark where it merely identifies the main characters in the books). Cf. In re Caserta , 46 USPQ2d 1088 (TTAB 1998) (FURR-BALL FURCANIA, used as the principal character in a single children's book, was found not to function as a mark even though the character's name appeared on the cover and every page of the story); In re Frederick Warne & Co. Inc ., 218 USPQ 345 (TTAB 1983) (an illustration of a frog used on the cover of a single book served only to depict the main character in the book and did not function as a trademark).

The applicant may submit evidence that the character name does not merely identify the character in the work. For example, the applicant may submit evidence showing use of the character name as a mark on the spine of the book, or on displays associated with the goods.

VI. CREATIVE WORKS IN A LIST OF GOODS OR SERVICES

Any of the above refusals can be made regardless of whether the creative work is the sole item in the identification of goods or is listed with other items. If the record contains information or if information is available outside the application that the mark identifies a character in a creative work, or title of a single creative work, the examining attorney should issue a partial refusal as to the relevant goods and/or services. In addition, the examining attorney should request evidence that shows use of the mark on these items. 37 CFR 2.61(b).

For example, an application for “newspapers, books in the field of finance, pencils, and coloring books” would be partially refused if the examining attorney determined, either from the application or from an outside source, that the mark identified the title of the “books in the field of finance.” 4


1 This examination guide changes the policy in TMEP § 1202.09(a) that requires an amendment to the identification to indicate a series when the goods are sound recordings. The TMEP will be updated accordingly.

2 This examination guide changes the policy in TMEP §1202.09(a) that states that evidence of a series is sufficient to support the registration of a name of a performing artist on sound recordings. The TMEP will be updated to reflect this new policy.

3 Registration is only refused if the mark is used as the title or a portion of the title of these works. Marks that are used on books to identify the publisher or other similar uses are not “titles” and therefore are not refused.

4 The use of the same mark on other non-creative matter such as the pencils and coloring books does not overcome the refusal.

United States Patent and Trademark Office
This page is owned by Trademarks.
Last Modified: 7/4/2009 7:28:47 PM