Carmen D. Caserta

Trademark Trial and Appeal Board

Feb 26, 1998

No. 74448220 (T.T.A.B. Feb. 26, 1998)

Paper No. 20
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 2/26/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Carmen D. Caserta
___________
Serial No. 74/448,220
___________
Robert H. Ware of Ware, Fressola, Van Der Stuys & Adolphson
for applicant.
Jean-Marc Brun, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
____________
Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Carmen D. Caserta has filed a trademark application to
register the mark FURR-BALL FURCANIA for “children’s books
and periodical publications, namely, comic strips and comic
magazines.”1

1 Serial No. 74/448,220, in International Class 16, filed October 18,
1993, based on an allegation of a bona fide intention to use the mark in
commerce. After the notice of allowance issued, applicant filed a
statement of use, on May 15, 1995, alleging a date of first use as of
January 19, 1994, and a date of first use in commerce as of April 15,
1995.
Serial No. 74/448,220
2
The Trademark Examining Attorney has finally refused
registration under Sections 1, 2 and 45 of the Trademark
Act, 15 U.S.C. 1051, 1052 and 1127, on the ground that
applicant’s proposed mark, as used on the specimens of
record, does not function as a trademark; rather, it merely
identifies the name of a fictitious character appearing in
applicant’s publications.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
The question herein is whether the record supports a
finding that FURR-BALL FURCANIA functions as a trademark to
identify the source of the identified goods and to
distinguish them from the goods of others. This
determination is made herein based solely upon the record
before us. The court, in In re Bose Corp., 546 F.2d 893,
192 USPQ 213, 215 (CCPA 1976), stated that “[b]efore there
can be registration, there must be a trademark, and unless
words have been so used they cannot qualify.” (citation
omitted.) Noting that “the classic function of a trademark
is to point out distinctively the origin of the goods to
which it is attached,” the court stated further (citations
and footnote omitted):
An important function of specimens in a trademark
application is, manifestly, to enable the PTO to
verify the statements made in the application
regarding trademark use. In this regard, the
Serial No. 74/448,220
3
manner in which an applicant has employed the
asserted mark, as evidenced by the specimens of
record, must be carefully considered in
determining whether the asserted mark has been
used as a trademark with respect to the goods
named in the application.
Id. at 215-216.
The specimen, and only evidence of use of the mark
herein, consists of several copies of a children’s story.
The proposed mark appears on the cover page of that story as
part of the title, as shown below:
Serial No. 74/448,220
4
Additionally, the proposed mark identifies the main
character of the story and, as such, appears throughout the
story.2 Following are examples of two pages from the story:
Both applicant and the Examining Attorney agree that the
proposed mark, FURR-BALL FURCANIA, identifies the principal
character in a single children’s story and that it appears
in the title of the story and throughout the story. The
evidence of record does not contain any indication that
FURR-BALL FURCANIA is used in connection with a series of
stories or books, nor does applicant so contend.3

2 We note that the proposed mark appears in the application drawing and
on the cover page of the story submitted as a specimen as FURR-BALL
FURCANIA; whereas it appears throughout the story as FURRBALL-FURCANIA.
This appears to be an inconsequential difference between the mark as
applied for and as it appears in the body of the story. Thus, for the
purpose of our analysis, we consider the terms equivalent.
3 We note that the identification of goods herein includes “periodical
publications.” While a term may function as a mark to identify a series
of periodical publications, the mere inclusion of “periodical
publications” in the identification of goods, without any indication of
how the mark is used in connection therewith, is not sufficient to show
that the proposed mark is used to indicate source for a series of
Serial No. 74/448,220
5
The Examining Attorney contends that, as FURR-BALL
FURCANIA merely identifies the principal character of
applicant’s story and appears as part of the title thereof,
it does not serve as a trademark to identify and distinguish
applicant’s goods from those of others.
Applicant argues, essentially, that its mark is
registrable in view of third-party registrations for the
names of other principal characters in fictional works4;
that it is not necessary for such a character to be widely
known in order to serve as a trademark; and that its
trademark is prominently displayed on the cover and on

publications. In this case the only evidence of use of FURR-BALL
FURCANIA is in connection with a single publication. Thus, the mere
inclusion of “periodical publications” in the identification of goods
does not affect our consideration of the issues in this case.
4 With its request for reconsideration, applicant submitted a list, from
an unidentified source, of third-party registered marks. The Examining
Attorney objects, correctly, to the adequacy of this evidence.
Applicant contends, in response, that the characters listed and their
manner of use are so well-known to the public that the Board would be
“well justified” in taking judicial notice thereof. However, the Board
will not take judicial notice of third-party registrations. In order to
make registrations of record, soft copies of the registrations
themselves, or the electronic equivalent thereof, i.e., printouts of the
registrations taken from the electronic records of the Patent and
Trademark Office’s (PTO) own data base, must be submitted. See,
Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992).
Even if applicant had properly made of record the third-party
registrations, they would be unpersuasive. It is irrelevant to this
case either that third-party registered marks may be names of fictional
characters, regardless of whether such characters may be well-known, or
that such marks may be registered in connection with a wide variety of
goods. With respect to those third-party marks registered for books
and/or periodicals, we do not have the records of the listed
registrations, so we do not know what evidence was before the Examining
Attorney in those cases. Our determination of whether FURR-BALL
FURCANIA functions as a mark must be based upon its manner of use on the
specimens in the application before us. That a term identifying a
fictional character may function as a trademark in another case, which
record is not before us, is not determinative of the question in this
case. See, In re Hechinger Investment Co. of Delaware Inc., 24 USPQ2d
1057 (TTAB 1991).
Serial No. 74/448,220
6
nearly every page of the publication submitted as a specimen
herein.
We agree with the Examining Attorney that, on this
record, the designation FURR-BALL FURCANIA is used in
association with, and as the name of, a fictitious character
which is featured as the main character in, and as part of
the title of, applicant’s illustrated children’s story.
There is no question that the name of a fictitious
character may be registrable as a trademark or a service
mark if that name is used on or in association with the
goods in such a manner as to identify the goods and
distinguish them from those of others, and the goods are
sold or transported in commerce. Likewise, as applicant
correctly notes, a finding that the fictitious character’s
name is well-known is not a prerequisite to the
registrability of that name as a trademark. Rather, the
sole issue is whether the name of the fictitious character
is used in such a manner that it is likely to be perceived
as a trademark in connection with the identified goods.
This is quite distinct from a finding that a mark is well-
known, which involves consideration of the renown of the
mark among relevant consumers.
Contrary to applicant’s contention, the mere fact that,
as this record establishes, FURR-BALL FURCANIA is the main
character’s name and this name appears prominently on the
Serial No. 74/448,220
7
cover and on every page of applicant’s children’s story is
insufficient to warrant a conclusion that FURR-BALL FURCANIA
functions as a trademark. Such use, without more, simply
reinforces the conclusion that the name merely identifies
the main character in the story.
Further, applicant’s use of a “TM” in proximity to
FURR-BALL FURCANIA as it appears on the cover page of
applicant’s story does not require a different conclusion.
In the analogous case of In re Frederick Warne & Co., Inc.,
218 USPQ 345 (TTAB 1983), the Board found that the proposed
mark, an illustration of a frog, was merely a cover
illustration for a book and served no other purpose than as
a depiction of the main character of the book. The Board
stated the following about the illustration of the main
character and the use of a “TM” in proximity thereto:
It may be that at some point applicant intended
that [the illustration] should serve a trademark
purpose. The use of the letter “TM” in proximity
to the figure on the cover attests to that
intention. But we do not know when applicant
embraced that objective. Nor do we have a
particle of evidence which shows what steps, if
any, were taken to convert the illustration to
trademark usage or to educate the public as to its
conversion.
(Id. at 347-348.)
Similarly, the appearance of the proposed mark as part
of the title of applicant’s story does not establish the
registrability of such subject matter in connection with the
identified goods. In the seminal case on the registrability
Serial No. 74/448,220
8
of titles of books as trademarks, In re Cooper, 254 F.2d
611, 117 USPQ 396, 398 (CCPA 1958),5 the court found the
title of a book to be unregistrable as a trademark for books
because, essentially, titles of books are considered to be
nothing more than the name by which the book may be
identified in much the same way that other items of
merchandise are identified. The court opined (supra at
400):
[H]owever arbitrary, novel or non-descriptive of
contents the name of a book – its title – may be,
it nevertheless describes the book. Appellant
has nowhere attempted to answer the question, How
else would you describe it – What else would you
call it? If the name or title of a book were not
available as a description of it, an effort to
denote the book would sound like the playing of
the game “Twenty Questions.”
However, the court reiterated the general principle that
whether certain subject matter is a trademark in connection
with books must be determined on the specific facts
pertaining to the manner of use thereof (supra at 398):
No one has asserted that a word may not be used as
a trademark for books or that there cannot be
trademarks for books, in the form of a word or
otherwise, or that trademarks for books cannot be
registered under the Lanham Act. Appellant
appears to assume that [its applied-for mark] has
been used as a trademark for books in asking that
it be registered, but that is what we have to
decide. Nothing we say should be taken as

5 See also, In re Scholastic Inc., 223 USPQ 431 (TTAB 1984) (Scholastic
I); Paramount Pictures Corp. v. Romulan Invasions, 7 USPQ2d 1897, 1899
(TTAB 1988); In re Hal Leonard Publishing Corp., 15 USPQ2d 1574 (TTAB
1990); In re Scholastic Inc., 23 USPQ2d 1774 (TTAB 1992) (Scholastic
II); and In re Phil Postuma and Cordell Langeland, __ USPQ2d __ (S.N.
74/664,809, February 24, 1998).
Serial No. 74/448,220
9
implying that no trademark for books can be
registered; but before there can be registration
there must be a trademark and a trademark exists
only where there has been trademark use.
(emphasis in original.)
Cooper and the cases following it have consistently
reaffirmed the principle that subject matter that is merely
the title of a single work is not used as a trademark.
While subject matter which is used to identify a series of
works may be a registrable trademark, such use is not the
case herein.6 Although pertaining to a series of works, the
Board’s analysis in In re Scholastic Inc., 223 USPQ 431
(TTAB 1984) (Scholastic I), is pertinent to the case before
us. In Scholastic I, the Board affirmed the refusal to
register THE LITTLES for a series of educationally oriented
children’s books, for the improvement of reading skills.
The Board found that, while applicant did produce a series
of books, the record in that case did not support a finding
that THE LITTLES was used as a trademark in connection
therewith. Rather, the Board concluded that, as used in the

6 The Board, in In re Scholastic Inc., 23 USPQ2d 1774 (TTAB 1992)
(Scholastic II), found THE MAGIC SCHOOL BUS, which formed part of the
title of each book in a series of children’s books, to be a registrable
trademark in connection with “a series of non-fiction picture books for
children.” In that case, there was substantial evidence showing the
prominent and distinctive display of the phrase THE MAGIC SCHOOL BUS on
book covers in the series; as well as evidence of reviews in widely
circulated publications referring to “the Magic School Bus series” and
similar terminology; substantial promotional materials for “THE MAGIC
SCHOOL BUS” series; and recognition by the public of the phrase as a
mark. While this case is inapposite to the extent that it pertains to
the use of a phrase to identify a series of books, which is not the case
herein, it demonstrates the nature and scope of an evidentiary showing
which may establish trademark use of a phrase in connection with books.
Serial No. 74/448,220
10
title of each book in the series, THE LITTLES would be
viewed only as identifying the main characters in that book
and not as a trademark for a series of books. The case
herein is analogous to Scholastic I, and distinguishable
from Scholastic II, because of the lack of evidence, in both
Scholastic I and this case, of use of the subject matter as
a trademark. In this case, as in Scholastic I, FURR-BALL
FURCANIA appears only as part of the title and in the text
of the book to identify and describe the main character in
the story. We cannot find, on this record, that FURR-BALL
FURCANIA functions as a trademark in connection with
children’s books and periodical publications, namely, comic
strips and comic magazines.
Serial No. 74/448,220
11
Decision: The refusal under Sections 1, 2 and 45 of
the Act on the ground that FURR-BALL FURCANIA, as used on
the specimens of record, does not function as a trademark
for the identified goods is affirmed.
E. J. Seeherman
T. J. Quinn
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board