TMEP 1202.09(a)(iii): Names of Authors and Performing Artists in §1(b), §44, and §66(a) Applications

This is the October 2015 Edition of the TMEP

Previous: §1202.09(a)(ii)(B) | Next: §1202.09(b)

1202.09(a)(iii)    Names of Authors and Performing Artists in §1(b), §44, and §66(a) Applications

The issue of whether a proposed mark identifies only an author or performing artist is usually tied to use of the mark, as evidenced by the specimen. Therefore, generally, no refusal will be issued in an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), until the applicant has submitted specimen(s) with an allegation of use under §1(c) or §1(d) of the Trademark Act, 15 U.S.C. §1051(c) or (d).

In a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal will be made on the ground that the proposed mark identifies only an author or performing artist, the potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. In cases where the record indicates that the mark identifies only an author or performing artist, the examining attorney may make the refusal prior to the filing of the allegation of use.

In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for examining attorneys to issue the refusal where the record, even without a specimen, reflects that the proposed mark identifies only an author or performing artist. Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen based, in a §66(a) application).