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 Arnold, 105 USPQ2d 1953, 1959-60 (TTAB 2013) (holding BLATANCY fails to function as a mark because it merely identifies the name of a performer featured on applicant’s musical recordings, and finding the evidence relating to control over the mark and the nature and quality of the goods conflicting and of uncertain meaning); In re First Draft, 76 USPQ2d 1183, 1191 (TTAB 2005) (holding pseudonym FERN MICHAELS identifies only the author and does 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)). In re Arnold, 105 USPQ2d at 1958.

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 website 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." In re Arnold, 105 USPQ2d 1953, 1958 (TTAB 2013) .