First Draft, Inc.

This Opinion Is

Citable as Precedent

Mailed:

September 20, 2005 of the TTAB

UNITED STATES PATENT AND TRADEMARK OFFICE

________

Trademark Trial and Appeal Board

________

In re First Draft, Inc.

________

Serial No. 76420605

_______

Oliver R. Chemin of McLaughlin & Stern, LLP for First

Draft, Inc.

Naakwama Ankrah, Trademark Examining Attorney, Law Office

106 (Mary Sparrow, Managing Attorney).1

_______

Before Hohein, Chapman and Rogers,

Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

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

16.2 Registration of the proposed mark is sought in

1

Leslie L. Richards examined the application; the above-named

examining attorney filed the brief on appeal.

2

The application was filed based on a claim of use of the mark

in commerce and lists February 1975 as the date the mark was

first used and first used in commerce.

Ser. No. 76420605

standard character form, i.e., without any particular

stylization.

The examining attorney has refused registration of the

proposed mark under Sections 1, 2 and 45 of the Lanham Act,

15 U.S.C. §§ 1051, 1052 and 1127, on the ground that FERN

MICHAELS, as used on the specimens of record, only

identifies the author of applicant's books and does not

also function as a mark to identify and distinguish the

books from those of others, and to indicate the source of

the books. When the refusal of registration was made

final, applicant filed an appeal. Applicant and the

examining attorney have filed briefs, but applicant did not

request an oral hearing.

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

2

Ser. No. 76420605

been inducted into the New Jersey Literary Hall of Fame."3

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).

The specimens applicant has made of record are book

jackets that, among other things, provide information on

"Fern Michaels."4 The jackets are for works entitled "To

Have and To Hold" and "Vegas Sunrise." In each instance,

the exterior of the book jacket shows the designation FERN

MICHAELS above the title of the book, both on the front

face and on the spine.

The inside jacket of "To Have and To Hold," published

by Headline Book Publishing, includes the following: "Fern

Michaels is the internationally bestselling author of the

Texas quartet. She lives in South Carolina and has five

3

Applicant's counsel provided this information in a response to

an office action, rather than in the preferred affidavit form.

Nonetheless, we have considered the representations because the

examining attorney did not object to their form and the

representations are not contradicted by anything in the record.

To be clear, however, the better practice is to present such

information in affidavit or declaration form with supporting

documentation. See TBMP Section 1208 (2d ed. rev. 2004) and In

re EBSCO Industries Inc., 41 USPQ2d 1917, 1923 n.5 (TTAB

1997)(examining attorney never objected to attorney's

representations, and advertising and sales figures uncontradicted

by any other information in record; but attorney's representation

as to length of use of configuration was contradicted by record).

4

The specimens are too large and of insufficient copying quality

to reproduce herein.

3

Ser. No. 76420605

children, two grandchildren and four dogs. She is an

animal-rights activist. Her previous bestselling novels,

Seasons of Her Life, Texas Sunrise and For All Their Lives,

are available from Headline." On the page facing the title

page of "To Have and to Hold," there is a list of six other

works by FERN MICHAELS, including the three works

referenced in the above-quoted statement from the book

jacket and what would appear to be the other volumes from

the "Texas quartet."

The jacket for "Vegas Sunrise," published by

Kensington Books, displays on the front and the spine, "New

York Times Bestselling Author Fern Michaels." On the back

of the jacket, the header "Acclaim for the Novels of New

York Times Bestselling Author Fern Michaels" introduces

quotes from reviews of two other FERN MICHAELS titles,

including, in regard to "Vegas Rich," the assertion

"'Sweeping Drama. Won't Disappoint Her Fans.' –Kirkus

Reviews." The inside jacket of "Vegas Sunrise," in its

preview of the book's contents, includes another reference

to "the New York Times bestselling author" and one to

"… Fern Michaels a beloved bestselling author." Under a

photo of "Ms. Michaels" is a reference to other "acclaimed"

novels and the information that "Ms. Michaels divides her

time between New Jersey and South Carolina."

4

Ser. No. 76420605

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.

Accordingly, we examine pseudonym or fictitious name cases

in some detail.

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

5

Ser. No. 76420605

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).

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. 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

6

Ser. No. 76420605

USPQ 122, citing In re Page Co., 47 App.D.C. 195 (D.C. Cir.

1917).

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 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].").

7

Ser. No. 76420605

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").

8

Ser. No. 76420605

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

Questions Presented

Now that we have reviewed the import of the two

decisions (Norcross and Chicago Reader) on which the

examining attorney has relied, and established a framework

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.

9

Ser. No. 76420605

within which to consider the instant application, we may

focus on the questions presented by this appeal. 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.

The Significance of the Third-Party Registration Files

We address the procedural question referenced above

because of the course of prosecution of the involved

application. After the examining attorney refused

registration of FERN MICHAELS, applicant responded by,

inter alia, referencing the names of three other authors

that have each been registered by the USPTO for a series of

books. Applicant did not, however, include any arguments

about why these third-party registrations were significant.

10

Ser. No. 76420605

The examining attorney discounted the mere submission

of TARR printouts6 regarding the registrations by explaining

that, "without reviewing the specimens of record, it is

impossible to determine the manner in which such marks were

used" (examining attorney's final refusal). Applicant then

submitted, with its notice of appeal from the final

refusal, and to "complete the record on appeal," copies of

"TARR printouts and file wrappers" for seven registrations

for author's names (including two of the three

registrations previously referenced by applicant and five

new ones). Applicant again, however, did not present any

arguments regarding the significance of the registrations

or file wrappers or what the examining attorney should

conclude from a review of them. The Board acknowledged the

notice of appeal, suspended the appeal because of the new

evidence submitted therewith, and remanded the application

to the examining attorney for consideration of that

evidence. The examining attorney denied the request for

reconsideration and the appeal was then resumed.

In its appeal brief (pages 11-18) applicant argues

generally that the seven third-party registrations and

6

TARR is the USPTO's Trademark Application and Registration

Retrieval system, available at http://tarr.uspto.gov and may be

used to obtain information about, and the status of, particular

registrations or applications.

11

Ser. No. 76420605

their accompanying file wrappers have evidentiary value and

presents specific arguments about the significance of the

records for the respective registrations. On the general

point, applicant asserts that, "If … it is the Trademark

Examining Attorney's position that the records of other

registration[s] are never of evidentiary value, this

clearly does not comport with the view of the Court of

Appeals for the Federal Circuit or the TTAB." (Brief, p.

13).

The examining attorney, in the responsive brief,

acknowledges that "The TARR print-outs and file wrappers

submitted by the applicant show current registrations for

seven marks composed of a name and used on a series of

books." Nonetheless, the examining attorney went on to

argue that, "Prior decisions and actions of other trademark

examining attorneys in registering different marks are

without evidentiary value and are not binding upon the

Office. Each case is decided on its own facts, and each

mark stands on its own merits (citations omitted)."

There can be no doubt that "the Board … must assess

each mark on the record of public perception submitted with

the application." In re Nett Designs Inc., 236 F.3d 1339,

57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Thus, the mere fact

that applicant has submitted copies of the contents of the

12

Ser. No. 76420605

third-party registration files, i.e., the underlying

applications, office actions and responses which are

evidence of the course of examination that led to issuance

of the registrations, cannot change our mandate to review

the registrability of the involved mark on the record

created during prosecution of the involved application.7

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. 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

7

In Chicago Reader, for example, CECIL ADAMS, a fictitious name

used as a byline for a recurring newspaper column, was not

approved for registration even though the applicant therein "made

of record copies of the registration files for the marks ANN

LANDERS and JIMMY THE GREEK." Chicago Reader, 12 USPQ2d at 1080.

13

Ser. No. 76420605

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

We hasten to emphasize, however, that the Board must,

in any case brought before it, determine the registrability

of the mark based on not only the record presented in the

application, but also based on the provisions of the Lanham

Act and applicable case law. Thus, the Board is not bound

by the examination guidelines set forth in the TMEP9 or by

the file wrappers applicant has submitted, even if we were

to conclude that the file wrappers tend to establish a

practice contrary to the refusal made by the current

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."

9

West Florida Seafood, supra, 31 USPQ2d at 1664 n. 8. See also,

In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 n. 2 (TTAB

1995), citing In re Wine Society of America Inc., 12 USPQ2d 1139,

1141 (TTAB 1989).

14

Ser. No. 76420605

examining attorney in reliance on the TMEP. Finally, we

note that even proof that various examining attorneys have

registered a particular type of mark in the past does not

establish that there is an Office practice holding such

marks are generally registrable. See In re International

Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513

(Fed. Cir. 1999) (Applicant failed to establish the

existence of a prior Office practice for registering

"phantom marks").

While we have considered the registrations and file

wrappers submitted by applicant, the decisions made by

examining attorneys to register those marks are not binding

on the Board. We disagree with applicant's

characterization that the files establish an Office

practice contrary to the refusal advanced in this case,

and, in any event, most of the limited number of

registrations submitted by applicant are distinguishable

from the present case.10

10

The fact that a few third-party registrations have been allowed

over a long period of time hardly establishes current Office

policy. There may very well be as many or more abandoned

applications wherein registration was refused on similar records.

The Board's responsibility is to focus on the record at hand. We

do not think it a useful exercise for applicants and examining

attorneys to spend inordinate resources combing through large

numbers of registration or abandoned application files when

application of the law to the record at hand should suffice.

15

Ser. No. 76420605

We now turn to the two substantive questions presented

by this case.

Analysis of Applicable Case Law

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.

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.

16

Ser. No. 76420605

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."). 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).

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

17

Ser. No. 76420605

title of a single work and, in Norcross and Clemens, to an

author's name. 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. 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

18

Ser. No. 76420605

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.").

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. 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

19

Ser. No. 76420605

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. 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." Polar Music, 221 USPQ at 318. In

turn, the Board relied on Polar Music when it decided the

Scholastic case.11

11

While applicant did not argue the applicability of the

Scholastic decision, we have considered it, so as to be thorough

in our analysis of applicant's arguments, because that decision

relies, in part, on Polar Music.

20

Ser. No. 76420605

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.

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.

In Wood, the Board found the pseudonym YSABELLA

registrable as a mark for various "original works of art."

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."

21

Ser. No. 76420605

Wood, 217 USPQ at 1349. 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

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

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).

22

Ser. No. 76420605

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. 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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Ser. No. 76420605

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

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Ser. No. 76420605

application of a Polar Music analysis, it has not

established that FERN MICHAELS is registrable under such

analysis.

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

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Ser. No. 76420605

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 its brief, applicant argues that it has obtained a

registration from the USPTO for the mark FERN MICHAELS for

services identified as "providing information about authors

and new book releases of others by means of the Internet;

providing an on-line news column in the field of romance

literature, fan club, providing a web site featuring

entertainment information in the field of romance

literature and featuring an on-line guest book and

suggestion box; providing links to web sites of others

featuring romance literature." In addition, applicant

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Ser. No. 76420605

notes that the same examining attorney that issued the

refusal in this case approved registration of the mark FERN

MICHAELS for those services.

Applicant submitted a TARR printout for this

registration with its appeal brief and apparently views the

record created in that registration file as evidence of

promotion of the FERN MICHAELS name for the goods in the

involved application: "Clearly, Applicant should not be

penalized because it chose to apply for a series of books

in one application and for services that show use of the

mark on advertising and/or promotional materials in another

application, rather than combining these goods and services

in one application." (Brief, p. 17).

Submission of the TARR printout with its appeal brief,

however, is an untimely submission of this evidence. See

Trademark Rule 2.142(d). We are not persuaded by

applicant's argument that we should allow this untimely

submission. Specifically, applicant argues that the

examining attorney did not discuss the question of the

significance of promotional materials in other

registrations until after applicant filed its notice of

appeal. Of course, the examining attorney only did so

because applicant filed the third-party registration files

with its notice of appeal and, as previously explained,

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Ser. No. 76420605

because the Board remanded the application to the examining

attorney for consideration of such evidence. Moreover,

even if we were to consider the TARR printout for

applicant's service mark registration, that by itself is

not evidence of promotion of FERN MICHAELS as a mark.

Evidence of promotion of the name FERN MICHAELS, at least

by implication of applicant's argument, is present in the

file for that service mark registration; and applicant has

not submitted copies of the material from that file. We

also note that applicant was on notice since the refusal of

registration was first made that an issue in this case was

whether FERN MICHAELS would be perceived by consumers as a

mark; that applicant could have submitted promotional

material during prosecution of the involved application;

that the service mark registration had already issued when

applicant filed its notice of appeal; and that applicant

could have submitted the contents of its own service mark

registration file when it submitted the copies of the

third-party registration files, but did not.

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

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Ser. No. 76420605

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.

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