Trademark Registration and the Rocker, part 3
The Classification Issue
(C) 1989, 1996 Green & Green
The performer may be a musical recording and performing group, or just a performing
group, or only a production company or only an actor. Should the group register their name
for their Class 41 performing services, Class 9 goods (recordings, videos, multimedia CDs,
Interactive WWW sites, and the like) class 25 for the many T-shirts or other classes to
cover the many types of merchandise they are likely to generate, such as buttons, posters,
comic books, plush toys and others?
In reality they usually do make and produce all of these -- the group needs to
perform and gain an identity (through its name and logo) and a fan club, establish mailing
lists, sell recordings and videos, publish books and pamphlets, sell T-shirts, buttons and
the like. They must sell something to keep going, unless the members are content to paint
houses, pump gas or serve tables to make a "living". The usual (short-sighted)
goal for many a new performer is the great record contract, TV series agreement, or movie
contract, rather than the long range career goals, publicity, fame and investments
associated with success. This short-sightedness tends to include failure to timely
register their name, thus making it subject to rip-off by another performer who likes the
name, and might have more going for him.
Entertainers usually must perform live, if front of real audiences initially in order to
gain recognition. This then is their first real use, and one that is very public, and easy
to rip off. They might face having to obtain injunctive relief very soon after they begin.
The PTO reacts in several ways, generally unpredictable, depending a lot on which examiner
reviews the mark. The potential responses to attempts to register a service mark for what
it is, the mark of a "Performing and Recording [group, entertainer, comedian,
etc.]" vary. They can include a demand to redefine the services, to exclude
"recording group"--records are goods and they are not applying in class 09
(electronic goods). They might even go so far as to limit the description to LIVE services
by a performing group!
Responses to questions regarding this requirement do not usually get around this
misconstruction of the word "recording" which in the verb form, means
"show", or "perform" and definable as the act of fixing
sounds/images in a tangible medium of expression, which is a service (to a recording
company), and not "goods" per se. Some just give up trying; let the record
company register it for the goods (although see the discussion below regarding the group
ABBA). This semantic problem seems beyond the scope of most PTO rejections based on
classification, and winds up with the examiner requiring the applicant to alter the
description of services; If one cannot get around this, it is better to alter it broader
than to limit the applicant.
If the entertainer wants to sell records/videos/Interactive media/CDI, software and to
protect their trademark in that field, they must apply in class 09. The problem here is
that the new entertainer is attempting to protect himself by this early registration;
before the record company gets to use it, and before any "product" is on the
market (before "use"). This raises the costs for the beginning entertainer and
makes registration in this class more of a bar than the PTO or the Act was designed to do.
The suggestion is to register in class 41 (entertainment services) for the intermediate
period before a record is released. This sets up another property for the label or
production company to bargain for. When records are made, then try to submit them as proof
of use in class 09.
The trend in both Trademark and Copyright seems to be to soften the formalities to allow
for this approach. One recent example of the softer approach is new Rule of Practice in 37
CFR 2.58(b). This 1988 amendment added that, "In the case of service marks not used
in printed or written form, three audio cassette tape recordings will be accepted [as the
specimens or facsimiles]."(1) Query
whether this means that a performing group that submits specimens consisting of tapes of
live performances that also sells these tapes at "gigs", could register a
service mark and support litigation to oppose or otherwise defeat the mark based on what
would be technically a class 09 (electronic goods) demonstration of use? If they had only
radio ads, stage banners, the name on their bass drum, etc. with no "printed or
written form" that could be sent to the PTO, showing the use of the mark, then might
this vague but perhaps more understanding approach allow them to submit their tape
cassettes and be able to register the service mark as a "performing and
recording" group?
An unsatisfactory solution to this problem has been to change the definition of the
services to comply with the examiner's request. This leaves the entertainer incompletely
but perhaps more accurately registered.
The best suggestion is, the less said the better. Provide in the application that the
applicant provides "Entertainment services by a musical group", or the like that
excludes the recording/performing aspects, but, by broad implication includes all possible
services by the band.
REGISTRATION FOR RECORDS IN CLASS 9:
As stated above, the best thing is to cover as many actual use areas for the mark as
can be done in a supportable way. The performer might be able to apply to register in
class 09, providing the goods are actually being sold interstate, even if the entertainer
does not perform "in commerce." Under TLRA, the bona fide intended use statute
might enable a mark to be applied for ahead of the release of records where an actual
agreement is signed or pending in good faith.(2)
Even if all this is carefully thought out by the attorney, another objection that might
come from the PTO, that is to the effect that the new entertainer has insufficient
secondary meaning to register in this class, based on 45 problems, in that the mark is
unknown to the public as representing a certain quality or "sound" or
"image".
TLRA Section 45 defines Trademark as "any word, name, symbol or
device or any combination thereof (1) used by a person, or (2) which a person has bona
fide intention to use in commerce and applies to register on the principal register
established by this Act, [the TLRA] to identify and distinguish his or her goods,
including a unique product, from those manufactured or sold by others and to indicate the
source or goods, even if that source is unknown."(3)
(Emphasis supplied)
Gone is the tedious old 1946 Act definition "Used by a manufacturer or merchant to
identify and distinguish his goods,..." This language failed to account for the
musical group who rarely will manufacture anything but promotional cassettes to "shop
around" and sell at gigs.
This tends to show that even if a band or group is not known to produce by live
performance, a certain quality product or songs, or recognizable sounds and videos the
section should not be a bar to registration, provided they have some intent to use their
mark and they have produced a series, or at least more than one, performance, record,
video, etc. A group could intend that the mark is used to identify it's records and
product from any other similar ones, but this intent does not make secondary meaning to
teams of teenagers.
As mentioned above the performer usually has contracts with Producers, Agents, managers,
attorneys, record companies, video production companies, Songwriters, and others who do
the "R&D" and are usually allowed to use the group's name and the title of
the album as source identifiers for the future records, tours and merchandise for
particular products, and services as performed in the studio on master tape as well as
live, everywhere else, to audiences yet all this still is not enough to prove the
requisite secondary meaning; there must be more, and more, and more again.
PROVING CLASS 9 USAGE--THE "SERIES" ISSUE:
The general rule in practice is that an attempt to register goods of the entertainment
type, such as titles of books, records, videos and the like, the registration is refused
on Section 2(f) grounds that the mark has not become an identifier of the source until a
series of similar or related products have been marketed using the mark. Such
identification can be tough to prove, at least for the registration, when the new
performer, as yet without a record deal, wants to (needs to) register it for his record.
Without "major distribution" such proof is difficult; no distribution and sales
data are available, and no broad public recognition has occurred Indeed, in most cases the
artist can perform for years without recognition.
To prove that the public recognizes the secondary meaning and the nature and quality of
that meaning. The "public" could, in theory, be a subset of the entertainment
audience; perhaps the documented work of critics and reviewers can be considered a
sufficient "public". Possibly, if one culls together several reviews of the
group that show that the public, represented by reviewers, identify the "group"
with group name, and if these demonstrate the public does identify its origin
through the medium of the reviews, a showing of sales and national distribution can be
made. Thereby one can show that the public have come to recognize and expect a certain
quality of the product from that source.
In order to use this theory to "make" a secondary meaning proof, the reviews
clearly should show that the public identifies the group as the source of the production.
It is to the group that the public who are interested in that type of performance or music
would look for a production of this quality and with their particular and identifiable
"sound", "image" or "look and feel". A short line of cases
illustrates how the PTO has adapted:
In re: Cooper,(4) points out that a
registration may be refused because the trademark was not only the title of a book; it was
the nondescriptive name of "Teeny Big", a character in the book. Therefore, even
though the book could be identified by the word "Book" or "Teeny Big
Book", the court held that the name did not serve as Trademark for the goods, but it
only served as a term naming a character in the book. This narrow view of the nature of
fictitious characters, and the possibility that these names can perform an identifying
function seems restrictive in light of the foregoing changes, and might not be held this
way again.
In re: Scholastic, (5), The Judge held
that the Trademark was not registerable because it was deemed that it did not identify the
work itself but was merely the name of the characters in a series of books. The book was
entitled "The Littles", and the court found that the fictitious family the books
were about, called "The Littles" was merely the name of the characters of the
book and did not identify the source of the physical commodity or indicate a source of an
expected quality of products. Therefore, reasoned the court, the Trademark did not perform
the function of identifying the reading material found between the covers of the book. The
court reasoned that "recognition of a term as a trademark is dependent upon the
commercial impression made on the public by that term." The court used the older
theory that to identify a trademark, the public must identify the source of the goods the
trademark is embodied on.
A landmark case, the case of In re: Polar Music International, AB (6) was a turn around to the previous trend. This
case involved the recording group "ABBA" who sought to register its name in
Class 009 for Electronic and Scientific/Sound Recordings. The TTAB originally refused
registration on the ground that the group name did not function as a Trademark (because it
was not a proper source identifier for records).
However, the United States Court of Appeals for the Federal Circuit, Judge Edward S.
Smith, opined that, "Phonograph records and tapes are much more than pieces of
plastic". Since they are the embodiment of sound, he found that people purchased
sound recordings because of the sounds they contained, not the physical medium. It was the
sound that gave a recording it's uniqueness. The quality of sound encompasses both the
quality of the sounds themselves and of the material on which the sounds are recorded.
Judge Smith set out three factors that led him to reverse the TTAB and allow the
"ABBA" musical group to register their trademark. Firstly, it was registerable
because "It is well settled that the title to the series of records or books
is able to function and be registered as a Trademark." Secondly, where the public
has come to expect and associate a certain quality of sounds, how the sounds are produced
on a record, and the physical qualities of the record itself with the musical group
"ABBA", the mark indicates not just the source of the performance but the source
and quality of the records and tapes that the sounds are recorded on. Lastly, Judge Smith
held that where there are contracts between the recording producers and a record
company permitting the record company (and presumably any producers of parts of the album)
to use the group's name for the term of the contract, this proved that the mark was
recognized as a valuable asset owned by the Producers, the "ABBA" group.
Thus to register in class 09 and protect that part of the performer's services as a
"recording group", there must be another record or video using the mark, and
this should be shown in reviews of the work that indicate that the public has determined,
through the voices of the various critics, that this record or video is of a particular
quality, including some very memorable scenes or songs, stunt camera video, original
music, and other features that make it unique and identifiable. The Mark should be proven
to not only have been used on one video or record, but to also have been applied to the
previous record(s) or video(s) using the mark on Copyrighted separate works.
It is good to demonstrate to the examiner that the performer has also applied the mark to
posters, T-shirts and other goods, and that, if this be the case, there is presently
pending in the Trademark office a separate application to register the mark for services
in class 041 (entertainment, etc. services) or other goods.
The performer needs to show that the mark fulfills the Polar Music Factors
including (1) that it is a title to a work that (2) the public has come to expect and
associate with a certain quality. (3) There are several contracts between the performer
and Producers, Distributors, Poster Manufacturers and Songwriters allowing them to use the
mark for manufacture, production and distribution for the titles and themes of songs
written for the particular production, advertising and promotion. Lastly, the performer
should be able to demonstrate that (4) he considers the mark to be an extremely valuable
Trademark, not only from the point of view of selling records or videos, but also from
marketing other products and merchandise. Reviews tend to demonstrate that element (2) can
be shown if the public comes to associate the name with a certain quality of source of the
goods (the newer test used by the courts) through reviews of the product, and that a
strict "series" need not be shown.
OTHER CLASSES--TO REGISTER OR NOT TO REGISTER:
It is generally advisable to quickly register all possible names for use on the
Internet with InterNIC, so that one is not subject to the pirates who merely register
famous marks to later sell them by scalping trademark rights. It may be expensive, but
today one should strive to register a performer's name, at least as an intent to use
appicalant, as a mark for all conceivable items of merchandise unless the performer
intends to market an exclusive line of goods that he wants to absolutely control, and can
finance or contract for such a venture. The problem, for example of registering such a
mark in the "clothing" class for example is that clothes are really NOT what the
performer does primarily. He might be better off settling on class 41 and 09 registrations
and leave the merchandising to the multi national and larger manufacturers of such goods.
Opposing a large firm interested in obtaining exclusive use of the same or similar mark
for clothes could involve the entertainer in litigation, Inter Se proceedings, and other
time consuming deviations from their usual business that it is usually not worth the
benefits. The registrations as performer and record seller would tend to prevent others
from selling "performer group" t-shirts, for example, or buttons, and the like.
Performers also have two other major legal avenues to protect their mark in the realm of
bootleg merchandise capitalizing on the name of the group, performer or sports figure or
team. The law of unfair competition can be used to prevent a "palming off" type
of infringement, and could show in this case an unauthorized implied endorsement of their
group by the "bootleg" shirts, buttons, etc. The common law rights of publicity
are also fodder for much litigation and protective possibilities, but these are both
beyond the scope of this article.
As in all articles of this type, the discussions are theoretical and general and not
intended to resolve or solve any particular legal problem. The reader is cautioned against
relying on the foregoing and is encouraged to seek the aid, consultation and help of a
qualified attorney who practices trademark law to deal with any particular legal problems.
1. 37 CFR 2.58, "Specimens".
2. See TLRA, 1989 1051 (b)(1).
3. 15 U.S.C. 1127, eff.Nov. 16, 1989.
4. See In Re Cooper, 254 F.2d 611 (CCPA 1958)
5. See In re: Scholastic, 223 USPQ 431 (TTAB 1984)
6. See: In re: Polar Music International, AB 714 F.2d 1567
(U.S.C.A. Fed. Cir., 1983)