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  • Case Finding: In re First Draft, Inc. case of first impression regarding pseudonym cases.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • As this appeal presents questions of first impression, and to provide context for our consideration of the refusal of registration, we begin by noting that the examining attorney has not specifically argued that FERN MICHAELS is unregistrable because it is a pseudonym rather than the given name of the author of the identified novels. However, the examining attorney relies on two decisions that can be read as support for such a proposition. Accordingly, we examine pseudonym or fictitious name cases in some detail.
  • A mark can be refused on the grounds that a mere signature may not function as a trademark.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • In a pre-Lanham Act decision (one of two decisions the examining attorney cites to support the refusal), Assistant Commissioner Frazer affirmed a decision by the examiner of interferences sustaining an opposition on likelihood of confusion grounds but also held that there was "another reason … why applicant's mark must be refused registration. As used by applicant the name 'Susie Cucumber' appears only as a signature to the letters described in the application. In other words, it is employed as a pseudonym of the writer, rather than as a trade mark." Norcross v. Richardson, 68 USPQ 371, 372 (Comm'r Pat. 1946), aff'd, Richardson v. Norcross, 78 USPQ 122 (D.D.C. 1948). In support of the foregoing statements, the Norcross decision relies on Ex Parte the Ohio Grease Co., 37 USPQ 415 (Comm'r Pat. 1938), another case involving a fictitious name in signature form. Norcross also concluded that the mark was "nonregisterable in any event, because the nom de plume of a writer is not a trade mark for his writings," citing as authority Clemens v. Belford, Clark & Co., 14 F. 728 (C.C. N.D. Ill. 1883).
  • A writer's pseudonym can function as a trademark.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • Notwithstanding the above-quoted statements, we do not read Norcross as standing for the proposition that pseudonyms of writers cannot be trademarks. Rather, insofar as the refusal of registration was based on use of the proposed mark "only as a signature" (on letters bought by subscription, for mailing to children) and relies on the Ohio Grease case that also involved a signature mark (appended to lines of verse), Norcross is essentially a harbinger of what would now be viewed as a refusal based on failure of the signature, as used, to function as a mark; and we do not read it as holding that a pseudonym can never function as a mark.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • We note, in this regard, the Richardson affirmance of Norcross, which held "Susie Cucumber is incapable as a registration for a trade mark since it is used as plaintiff's pseudonym and signature and not as a true trade mark" (emphasis added). Richardson, 78 USPQ 122, citing In re Page Co., 47 App.D.C. 195 (D.C. Cir. 1917).
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • In sum, we do not view the pre-Lanham Act Norcross decision, the cases cited therein (Ohio Grease and Clemens), or the Richardson affirmance, as establishing a rule that a pseudonym or nom de plume of an author is per se incapable of functioning as a trademark. Accord In re Wood, 217 USPQ 1345, 1346 (TTAB 1983) (In discussing the reliance by the examining attorney in that case on Norcross and Clemens, the Board explained that those decisions "indicate only that the pseudonym of a writer used as a signature for a series of letters does not function as a mark [Norcross] and that an author may not prevent the republication of uncopyrighted matter under the author's name [Clemens].").
  • A given name and a pseudonym are treated alike, regardless of their protection as trademarks, and can function as marks.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • Nor should the Clemens decision be read as standing for the proposition that a pseudonym or nom de plume is per se unprotectible as a mark. That decision included a statement that "an author or writer [cannot] acquire any better or higher right in a nom de plume or assumed name than he has in his Christian or baptismal name." Clemens, 14 F. at 730. This contemplates that a given name and a pseudonym are treated alike, whether or not protectible under the trademark laws.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • As for decisions under the Lanham Act that have dealt with pseudonyms, we note two early decisions by Assistant Commissioner Leeds each affirmed a refusal to register a fictitious name. See Ex parte Toal, 111 USPQ 450 (Comm'r 1956) and Ex parte The Maytag Co., 110 USPQ 310 (Comm'r 1956). Subsequent decisions by this Board, however, make clear that there is no distinction between actual names and fictitious names. See, e.g., Wood, 217 USPQ at 1348 ("Clearly, a name, fictitious or real, can be used in such a manner to identify goods or services as well as the individual or character."); In re Stowell, 216 USPQ 620, 621 (TTAB 1982) ("…'THE DIVER' identifies applicant himself. This is applicant's call name or handle by which he identifies himself to other users of two-way radios. This fact, however, does not preclude registration of that term as a service mark to identify services rendered by applicant, provided that the specimens of record evidence use of the term not only to identify applicant as an individual but also to identify services rendered by the applicant in commerce."); and In re EKCO Products Co., 139 USPQ 138, 139 (TTAB 1963) ("we agree with applicant that fictitious names may, under proper circumstances and conditions, function as service marks").
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • Notwithstanding this line of Board cases, the second of the two cases on which the current examining attorney relies, In re Chicago Reader Inc., 12 USPQ2d 1079 (TTAB 1989), at 1080, includes the statement, "A nom de plume or pseudonym of a writer is not generally regarded as a trademark for the writing," and cites as support therefor the pre-Lanham Act Norcross decision. We do not, however, view Chicago Reader as standing for a per se rule that pseudonyms or fictitious names are not registrable as trademarks for written works. Rather, we view that decision as holding only that the proposed mark CECIL ADAMS (a fictitious byline for a newspaper column) was not used in such a manner that it would be perceived as a mark, and that the fact that the proposed mark was a fictitious name rather than the name of an actual columnist did not make the proposed mark any more registrable.5 FOOTNOTE 5 "We note that the author of the Chicago Reader opinion, the recently retired Board Judge Rany Simms, also authored the earlier decision in Wood, which explained that Norcross was a failure-to-function as a mark case. Clearly, Judge Simms' subsequent citation of Norcross in Chicago Reader must be considered in light of his earlier explanation of its import."
  • The use of the prefatory term "generally" suggests that, under appropriate circumstances, examining attorneys should consider the possibility that subject matter used more than "solely as" an author's name may be registrable as a mark.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • We note that the question of exactly how examining attorneys should assess an application to register an author's name for a series of written works is not given lengthy treatment in the examination guidelines set forth in the TMEP. See TMEP Section 1202.09 ("Names of Artists and Authors") (4th ed. April 2005). This section states only: "Generally, subject matter used solely as an author's name, even on multiple books, does not function as a trademark." The section then cites to Chicago Reader, and provides a "Cf." cite to Wood.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • The use of the prefatory term "generally" suggests that, under appropriate circumstances, examining attorneys should consider the possibility that subject matter used more than "solely as" an author's name may be registrable as a mark. The TMEP guideline on this point, however, does not explain what those circumstances are. Accordingly, in this case, we can appreciate that applicant may have examined the file contents of third-party registrations for author's names in an attempt to divine the circumstances in which the Office has allowed registration of an author's name.8 FOOTNOTE 8 "To be absolutely clear, we are not suggesting that either applicant or the examining attorney were free to ignore the guidelines set forth in the TMEP and to turn instead to examination of other files to divine Office policy for reviewing the involved application. As the Federal Circuit noted in West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1664 n.8 (Fed. Cir. 1994), "While the TMEP does not have the force of law, it sets forth guidelines and procedures followed by the examining attorneys at the PTO." See also, Nett Designs, "this court encourages the PTO to achieve a uniform standard for assessing registrability of marks." 57 USPQ2d at 1566. In addition, the foreword to the TMEP (4th ed. April 2005) states that it "outlines the procedures which Examining Attorneys are required or authorized to follow in the examination of trademark applications.""
  • An author's name is not, per se, unregisterable as a trademark.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • The first of the two substantive questions presented by this appeal is whether an author's name is, as a general rule, to be treated as unregistrable matter and if so, why.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • Chicago Reader cites to Norcross, but both decisions are, as analyzed earlier, essentially decisions that held the involved names were not used in a manner that would lead to them being perceived as marks. Neither decision, therefore, supports a general rule that an author's name does not function as a mark. They simply stand for the proposition that under the circumstances presented by each of those cases, the involved author's name did not function as a mark.
  • Thought Copyright law provides a general rationale for a general rule prohibiting trademark protection for an author's name, the Board's primary concern must be whether a designation would be perceived as a mark and not the ramifications for third-parties that might eventually want to reproduce a work.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • Norcross, however, does suggest that the interface with copyright law provides a rationale for a general rule prohibiting trademark protection for an author's name: "The letters are copyrighted by applicant, including the name; and upon expiration of the copyright will become public property. To register the name as a trade mark would enable applicant to perpetuate her monopoly, for without the name the balance of the copyrighted material would have no value." Norcross, 68 USPQ at 372; see also Clemens, 14 F. at 732 ("That is, any person who chooses to do so, can republish any uncopyrighted literary production, and give the name of the author, either upon the title page, or otherwise as best suits the interest or taste of the person so republishing.").
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • Similarly, the Federal Circuit has discussed the interface of copyright law and titles of individual books and concludes that copyright law provides additional support for the policy against finding proprietary rights in titles to single books. Herbko International, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162, 64 USPQ2d 1375, 1378-80 (Fed. Cir. 2002).
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • Clearly, the interface with copyright law or, looked at another way, the right of others to reproduce because works are uncopyrighted or no longer protected by copyright, has led to decisions that deny protection to the title of a single work and, in Norcross and Clemens, to an author's name.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • On the other hand, in In re Scholastic Inc., 23 USPQ2d 1774 (TTAB 1992) (THE MAGIC SCHOOL BUS, prominently displayed on the cover of a series of books, as a portion of the title of each book, has come to represent a source to purchasers and would be recognized as a trademark), the Board did not discuss this concern and specifically noted that there was sufficient evidence to allow for registration of THE MAGIC SCHOOL BUS even if it were the complete title of a single book in a series.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • This indicates that the Board's primary concern must be whether a designation would be perceived as a mark and not the ramifications for third-parties that might eventually want to reproduce a work.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • In short, we find no clear precedent dictating that the interface of trademark law with copyright law or with the rights of others to reproduce certain works should prevent an applicant from registering an author's name as a trademark for a series of written works.
  • When the name is found to serve not merely as the designation of the writer of each of the works, but also is used in such a manner as to assure the public that the works are of a certain quality and the name therefore serves as an indicator of the source of the writings, it serves the function of a mark.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • When the name is found to serve not merely as the designation of the writer of each of the works, but also is used in such a manner as to assure the public that the works are of a certain quality and the name therefore serves as an indicator of the source of the writings, it serves the function of a mark. In re Polar Music International AB, 714 F.2d 1567, 221 USPQ 315, 318 (Fed. Cir. 1983) ("In the instant case we find certain factors determinative that 'ABBA' functions as a trademark and is not just an identification of the singers.").
  • Though not discussed, another arguable rationale that a name should not be registerable is that a personal name is essentially descriptive.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • Another rationale arguably supporting a rule that an author's name should not generally be registrable as a mark is rooted in certain cases discussed by Professor McCarthy, i.e., those cases that hold a personal name is essentially descriptive. See McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition § 13.2 (4th ed. database updated 2005) and cases discussed therein.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • However, as neither applicant nor the examining attorney has discussed whether the proposed mark is descriptive, we shall not consider this as a possible rationale for the refusal.
  • The Federal Circuit has contemplated a general rule that the name of a performing group would not be registrable on a single work, but that an exception to the general rule may arise when the name of the group is used as a mark for a series and evidence that the group controls the quality of the recordings through a license.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • In Polar Music, the Federal Circuit held that the name ABBA was registrable as a trademark for recorded musical performances by the group of that name. The decision, however, cautioned that "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." Polar Music, 221 USPQ at 318.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • Accordingly, it appears clear that the Federal Circuit has contemplated a general rule that the name of a performing group would not be registrable on a single work, but that an exception to the general rule may arise when the name of the group is used as a mark for a series.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • However, even then, more is required, as the Federal Circuit did not rely solely on use of ABBA for a series of recordings and also relied on documentary evidence that the group controlled the quality of the recordings through a license.
  • Case Finding: Use of a repeated mark for a series of books, in addition to evidence of promotion and recognition, means that the designation serves as a trademark.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • In Scholastic, the Board held that repeated use of THE MAGIC SCHOOL BUS in each of various titles for a series of books, in addition to evidence of promotion and recognition, meant the designation "has come to represent a source to purchasers" and that "purchasers… when they see the term, know what they are getting -- that is, another book in this particular series of children's books emanating from applicant." Scholastic, 23 USPQ2d at 1778.
  • TTAB's discussion of applicable cases for a pseudonym analysis.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • We agree with applicant that the examining attorney has placed undue reliance on Chicago Reader and Norcross, and that Polar Music should be considered a governing precedent in this case. We also find Scholastic, while not presenting the same fact situation, to be somewhat helpful, and see nothing in Polar Music that would limit an applicant seeking registration of an author's name or pseudonym to submission of the type of evidence presented in that case. In contrast, we disagree with applicant's contention that Wood aids our analysis.
  • Repeated use of an artist's name denotes a consistency of quality of the goods sold under the mark.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • Akin to the finding in Polar Music that the group ABBA controlled the quality of its recordings, the Board in Wood held that "we believe that an artist's name denotes consistency of quality of the goods sold under the mark." Wood, 217 USPQ at 1349.
  • Case Finding: The Wood case is limited in 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.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • The examining attorney, however, correctly argues against application of Wood, which concluded with the statement: "Lest 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." Wood, 217 USPQ at 1350. We agree with the examining attorney that 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.12 FOOTNOTE 12 "Wood did not directly discuss books and classify them as works of art, but only discussed the views of a commentator who posited "trademarks in the art world include arbitrary and distinctive signatures or logos on books, films, on artwork." Wood, 217 USPQ at 1348, quoting Stroup, "A Practical Guide to the Protection of Artists Through Copyright, Trade Secret, Patent, and Trademark Law," Comm/Ent Law Journal, Vol. 3, 217-224 (Winter 1980-81)."
  • As a general rule, an author's name is not registrable for a single work but may be registrable for a series of written works, when there is sufficient other indicia that the name serves more than as a designation of the writer, that is, that it also functions as a mark.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • We conclude that, as a general rule, an author's name is not registrable for a single work but may be registrable for a series of written works, when there is sufficient other indicia that the name serves more than as a designation of the writer, that is, that it also functions as a mark.
  • "Other indicia" that a name functions as a mark could include evidence that the author controls distribution of the work and controls use of the name, or evidence of promotion and recognition that when the public views the mark they "know what they are getting."
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • This may be shown by providing evidence of the sort presented in Polar Music, i.e., evidence establishing that the author controls the quality of her distributed written works and controls use of her name, so as to indicate the quality of those works; or it may be shown, akin to the showing in Scholastic, by submitting evidence of promotion and recognition of the author's name so that prospective readers, when they see the name, "know what they are getting." Scholastic, 23 USPQ2d at 1778.
  • Evidence of promotion and recognition of the mark has to be of a type that identifies the author as the source of the series of works.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • In addition, evidence of promotion and recognition of the author's name would have to be of the type that would identify the author as the source of a series of works.
  • Evidence: Provide evidence that the author's name as been used for a series of publications.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • As noted earlier, there is no doubt that FERN MICHAELS has been used as the author's name for a series of publications, so under either analysis, the series requirement has been met.
  • Evidence: Evidence as to quality control or promotion and recognition.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • However, it is additional evidence, either as to quality control, or as to promotion and recognition, that we must find if the refusal of registration is to be reversed and the mark allowed for publication.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • Turning to the question of quality control and whether applicant meets the Polar Music test, we note that the specimens show FERN MICHAELS novels from two different publishers. In addition, applicant's counsel has explained that First Draft, Inc. is a corporation in which Mary Ruth Kuczkir is the principal. We would not have been surprised if applicant had made representations that the corporation was formed to be the "corporate entity" of Ms. Kuczkir and to negotiate contracts, licensing, and other issues related to FERN MICHAELS publications, just as Polar Music International AB was the corporate entity for the performing group ABBA in the Polar Music case. It would not be surprising to find that a prolific and successful author has leverage to negotiate with publishers regarding such matters. However, we 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. In short, we find that even though applicant has argued for application of a Polar Music analysis, it has not established that FERN MICHAELS is registrable under such analysis.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • We therefore consider whether there is sufficient evidence of promotion and recognition of FERN MICHAELS as an indicator of the source of a series of books, so that the designation would be registrable under a Scholastic analysis. FERN MICHAELS has been used, at least as an author's name, for 30 years; there have been 67 separate works published under that name; and the number of books sold is approximately 60 million. FERN MICHAELS has been inducted into the New Jersey Literary Hall of Fame and there is a web site www.fernmichaels.com. There is very limited evidence, however, of promotion of the novels of FERN MICHAELS, and that appears only on one of the two book jackets submitted as specimens. That book jacket promotes FERN MICHAELS as a bestselling author, lists other works by this author, and reprints excerpts of favorable reviews, one of which implies the existence of an established fan base for FERN MICHAELS novels. While the length of use and number of books sold far exceed that which was present in Scholastic, the evidence of promotion is indirect and rather scant. We do not have, as in Scholastic, full reviews showing the manner in which others use the designation FERN MICHAELS. Nor do we have promotional materials touting FERN MICHAELS novels. We do not, for example, have reprints of any pages from the FERN MICHAELS web site or information regarding the New Jersey Literary Hall of Fame. We also have no information whatsoever regarding advertising or promotion expenditures. Applicant's counsel makes certain representations about what fans of FERN MICHAELS look for in her novels, but we have no declarations from publishers, retailers, purchasers or readers, whereas in Scholastic, there were such declarations. In short, all that is shown by the specimens of record is use of FERN MICHAELS as the name of the author of each book.
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • In short, while we agree with applicant that an author's name may, under appropriate circumstances, be registered as a trademark for a series of written works, applicant has failed to establish that such circumstances are present in this case. Applicant's proof fails under the test applicant has advocated (Polar Music), as well as under the alternative test we have considered (Scholastic).
In re First Draft, Inc., Serial No. 76420605, (TTAB 2005) Grand Total
Herbko International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002) 1
In re Nett Designs, 236 F.3d 1297, 57 USPQ2d 1564 (Fed. Cir. 1999) 1
West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ 1660 (Fed. Cir. 1994) 1
In re Scholastic Inc., 223 USPQ 431 (TTAB 1984) 1
In re Chicago Reader Inc., 12 USPQ2d 1079 (TTAB 1989) 1
In re Polar Music International AB, 714 F.2d 1567, 221 USPQ 315 (Fed. Cir. 1983) 1
In re Wood, 217 USPQ 1345 (TTAB 1983) 1
In re Stowell, 216 USPQ 620 (TTAB 1982) 1
In re EKCO Products Co., 139 USPQ 138 (TTAB 1963) 1
Ex parte The Maytag Co., 110 USPQ 310 (Comm'r 1956) 1
Ex parte Toal, 111 USPQ 450 (Comm'r 1956) 1
Norcross v. Richardson, 68 USPQ 371, 372 (Comm'r Pat. 1946), aff'd, Richardson v. Norcross, 78 USPQ 122 (D.D.C. 1948) 1
Ex Parte the Ohio Grease Co., 37 USPQ 415 (Comm'r Pat. 1938) 1
In re Page Co., 47 App.D.C. 195 (D.C. Cir. 1917) 1
Clemens v. Belford, Clark & Co., 14 F. 728 (C.C. N.D. Ill. 1883) 1
Grand Total 15 15
No Statutes Listed.

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