T.M.E.P. § 1202.09
Names of Artists and Authors
Executive summary:
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1202.09 Names of Artists and Authors
Generally, subject matter used solely as an author's name, even on multiple books, does not function as a trademark. See In re Chicago Reader Inc., 12 USPQ2d 1079 (TTAB 1989) (CECIL ADAMS, as used on the specimens, merely identifies the author and is not used as a trademark). Cf. In re Wood, 217 USPQ 1345 (TTAB 1983) (artist's pseudonym YSABELLA, affixed to an original work of art, functioned as a trademark).
See TMEP §1202.09(a) regarding the registrability of the names of performing artists used on sound recordings.
See also TMEP §1301.02(b) regarding the registrability of the names of characters and personal names as service marks.
1202.09(a) Names of Performing Artists Used on Sound Recordings
Subject matter that, as used on sound recordings, merely serves to identify the artist or artists whose performance comprises the content of the recording is not registrable as a trademark for the recordings. In re Spirer, 225 USPQ 693 (TTAB 1985). As noted by the Court of Appeals for the Federal Circuit in In re Polar Music International AB, 714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983), "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." Personal names of individuals or groups function as service marks for entertainment services only if they identify anddistinguish the services recited and not merely the individual or group. See TMEP §1301.02(b).
The following guidelines must be followed to ensure consistent action on applications to register the names of performers for sound recordings in accordance with In re Polar Music International AB and In re Spirer.
- First, the names of performers may only be registered as a trademark if the mark is used on a series of sound recordings. The identification of goods must specifically indicate that there is a series. If the application does not identify the goods in this fashion, the examining attorney must require an appropriate amendment.
- Secondly, the applicant must provide evidence that the mark has been applied to at least two different recordings in the series. In an intent-to-use application, the applicant must provide evidence of use on at least two recordings at the time the applicant files either the amendment to allege use or the statement of use. The examining attorney should provide advance notice of this requirement during initial examination, where appropriate. If the applicant is unable to demonstrate use on a series, the mark may be registered on the Supplemental Register, provided it is otherwise proper. These procedures apply specifically to performers' names used on recordings and not to other types of marks used on other types of artistic material.
- Finally, it is only necessary to inquire about the applicant's control over the nature and quality of the goods if information in the application record clearly contradicts the applicant's verified statement that it is the owner of the mark or entitled to use the mark.
Similarly, the name of a performer is not registrable as a service mark for entertainment services unless the record shows the name identifies a continuing series of presentations, performances or recordings. See TMEP §1301.02(d).