In re First Draft Inc.

Rogers, J.

First Draft, Inc. (applicant) has applied to register FERN MICHAELS on the Principal Register as a trademark for goods identified as a “series of fictional books” in Class 16. Registration of the proposed mark is sought in standard character form, i.e., without any particular stylization.

Fern Michaels

The record is clear that FERN MICHAELS is a pseudonym of Mary Ruth Kuczkir; and Ms. Kuczkir is referred to in applicant's brief as “Applicant's principal.” Also, applicant has filed a declaration by Ms. Kuczkir consenting to registration of her pseudonym “with the U.S. Patent and Trademark Office and with trademark registration authorities worldwide.” Applicant contends that Ms. Kuczkir has used her pseudonym since February 1975, has written 67 romance novels, has sold over 60 million books in the United States and throughout the world, and “has been inducted into the New Jersey Literary Hall of Fame.” The record is clear, as shown by the specimens of record, that various FERN MICHAELS books have been published as trilogies or in a series (e.g., the “Texas” series and the “Vegas” series).

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Pseudonyms, Nom de Plumes, and Fictitious Names

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. . . .

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Questions Presented

. . . There is one procedural question and there are two substantive questions we must resolve. The procedural question concerns the evidentiary value to be accorded an applicant's submission not only of copies of prior registrations but of copies of the files for those registrations. The first of the two substantive questions is whether an author's name is, as the examining attorney contends, generally to be treated as unregistrable and, if so, why. The second substantive question is whether the record in the involved application shows that FERN MICHAELS functions as a trademark.

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Analysis of Applicable Case Law

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The examining attorney's brief essentially repeats the sentence from TMEP Section 1202.09 previously quoted herein, though the examining attorney omits the prefatory and qualifying word “generally” that appears in the TMEP: “Subject matter used solely as an author's name, even on multiple books, does not function as a trademark.” The examining attorney cites, as does the TMEP, Chicago Reader as the authority for this statement.

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.

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.” 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.

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. On the other hand, in In re Scholastic Inc., 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. 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 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.

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. 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.

We turn then to the Federal Circuit's decision in Polar Music and the Board's decision in Wood, which applicant argues provide support for its position.

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.” 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. 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.

Polar Music discusses cases that hold the title for a series of books to be registrable, and found “the present situation analogous.” In turn, the Board relied on Polar Music when it decided the Scholastic case.

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.”

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. . . .

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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. 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.” 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.


Does the Evidence Show FERN MICHAELS to be a Mark?

The second substantive question presented by this case is whether the evidence of record is sufficient to establish that FERN MICHAELS is registrable under either a Polar Music or Scholastic analysis. 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. 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.

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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).

Decision

The refusal of registration under Sections 1, 2 and 45 of the Lanham Act is affirmed.