Names of Authors, Artists, Characters and Depictions of Characters
Can names of authors, performing artists, characters or depictions of characters function as trademarks? The general rule is that a mark consisting of the name of an author on a written work or a performing artist on a sound recording must be refused registration on the Principal Register if the mark is used solely to identify the writer or artist. However, there is an exception to the general rule. If the name is used on a series of written or recorded works and the name identifies the source of the series, it may register on the Principal Register. A related topic, can single titles of creative works receive federal trademark protection, is covered in our blog post, The TTAB's Recent Decision Clears A Path For Titles Of Single Works. If the applicant cannot prove both a series and that the name identifies the source of the series, then the mark can only register on the Supplemental Register.
A series means that the applicant can demonstrate that the trademark appears on at least two different works. Examples that may suffice under this circumstance would be evidence of two book covers or two CD covers. See In re Scholastic Inc., 23 USPQ2d 1774, 1992 WL 215313 (TTAB 1992), where it was held that the mark THE MAGIC SCHOOL BUS functioned as a trademark for a series of books. The mark was displayed prominently on different book covers, there was evidence that the applicant promoted the mark as a series title, and that consumers recognized the name as a source of a series of books, not simply the title of one book.
To prove that the name functions as a source identifier, the applicant can submit proof that there has been promotion and advertising of the name as a source identifier or that the author maintains control over the name and quality of the works in the series. An example of this proof could be a copy of a third-party review demonstrating use of the name to refer to a series of works. The applicant may also submit a verified statement declaring that the applicant publishes or produces the goods and controls the quality of the work.
The same logic and general rules are applied to marks that merely identify a character in a creative work, and such marks will not be registered on the Principal Register. An example can be seen in In re scholastic Inc., 223 USPQ 431, 1984 WL 63575 (TTAB 1984), where the Board held that THE LITTLES used in the title of each book in a series of children's books didn't function as a trademark where it merely identified the main characters of the book. To overcome this type of a refusal, an applicant may submit evidence showing use of the character's name as a mark on the spine of the book or on displays associated with the goods in such a manner that the name is perceived as a mark.
An exception is made for original works of art. An artist's name or pseudonym placed on an original work of art such as a painting, mural, sculpture, statue or a piece of jewelry will register on the Principal Register without a showing that the name identifies a series. See In re Wood, 217 USPQ 1345, 1983 WL 51792 (TTAB 1983), where the Trademark Trial and Appeal Board (the "Board") held that the pseudonym YSABELLA placed on an origiarrnal piece of artwork functioned as a trademark.
The issue of whether a proposed trademark identifies only the name of a particular character in a book is typically determined after the Examining Attorney reviews the specimen. This is also true of determinations of names and characters when used in conjunction with services. See In re Florida Cypress Gardens Inc., 208 USPQ 288, 1980 WL 30168 (TTAB 1980), where the Board held that the name CORKY THE CLOWN when used on flyers functioned as a trademark to identify entertainment services, namely live performances by a clown. The mark identified not only the clown character, but also the entertainment services. In the end, how you use the mark on the goods and in connection with the services often determines if the mark functions as a trademark. If you have questions relating to how to properly use a mark on goods or in connection with services, please feel free to contact our office for a courtesy consultation.