First Draft, Inc.

Trademark Trial and Appeal Board

Sep 20, 2005

No. 76420605 (T.T.A.B. Sep. 20, 2005)

Mailed:
September 20, 2005

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.

This Opinion Is
Citable as Precedent
of the TTAB
Ser. No. 76420605
2
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
Ser. No. 76420605
3
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.
Ser. No. 76420605
4
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."
Ser. No. 76420605
5
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
Ser. No. 76420605
6
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
Ser. No. 76420605
7
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].").
Ser. No. 76420605
8
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").
Ser. No. 76420605
9
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.

Ser. No. 76420605
10
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.
Ser. No. 76420605
11
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.

Ser. No. 76420605
12
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
Ser. No. 76420605
13
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.
Ser. No. 76420605
14
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).
Ser. No. 76420605
15
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.
Ser. No. 76420605
16
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.
Ser. No. 76420605
17
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
Ser. No. 76420605
18
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
Ser. No. 76420605
19
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
Ser. No. 76420605
20
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.

Ser. No. 76420605
21
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."
Ser. No. 76420605
22
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).
Ser. No. 76420605
23
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.
Ser. No. 76420605
24
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
Ser. No. 76420605
25
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
Ser. No. 76420605
26
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
Ser. No. 76420605
27
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,
Ser. No. 76420605
28
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
Ser. No. 76420605
29
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.