Janis Ian

Trademark Trial and Appeal Board

Sep 2, 1999

No. 75155657 (T.T.A.B. Sep. 2, 1999)

Paper No. 10
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT. 2, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Janis Ian
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Serial No. 75/155,657
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Jill M. Pietrini of Manatt, Phelps & Phillips, LLP. for
Janis Ian.
Joyce A. Ward, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Seeherman, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
On August 26, 1996 Janis Ian filed an application to
register the mark RUDE GIRL and design as shown below for
“music publishing services.”1

1 Application Serial No. 75/155,657 alleging dates of first use
at least as early as March 1995.
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2
The application stated that the mark is used “on
advertising, brochures, promotional materials, and in other
ways customary to the trade.” As specimens, applicant
submitted copies of what it terms a music biography on
which RUDE GIRL and design appears.
The Examining Attorney, in her first Office Action,
held that “[t]he specimens are unacceptable as evidence of
actual service mark use because the specimens are
promotional materials which display the applicant’s mark
but fails (sic) to show the mark used in connection with
the identified music publishing services.” The Examining
Attorney then required that applicant submit substitute
specimens.
Applicant, in its response, submitted copies of an
insert from one of applicant’s audio cassettes on which
RUDE GIRL and design appears. Applicant argued that both
the original and substitute specimens showed use of the
Ser No. 75/155,657
3
mark in connection with music publishing services. The
Examining Attorney found that the substitute specimens were
unacceptable and made final the requirement for acceptable
specimens.
Applicant has appealed from the requirement. The case
has been fully briefed, but an oral hearing was not
requested.
The Examining Attorney maintains that the original
specimens are no more than letterhead stationery and in the
absence of a specific reference to applicant’s music
publishing services, are not acceptable specimens.
According to the Examining Attorney, this material merely
describes applicant, the artist, and does not evidence the
sale or advertisement of music publishing services.
The first page, along with other excerpts from the
original specimens, are reproduced below, in reduced size:
Ser No. 75/155,657
4
Ser No. 75/155,657
5
Applicant, in urging reversal of the refusal to
register, points out that she writes or co-writes all of
her songs and that she operates her music publishing
services under the mark RUDE GIRL and design. According to
applicant, music publishing consists primarily of licensing
songs to other persons to use, perform, or record in
exchange for payment. Applicant’s services are directed to
performance rights societies, the music industry, and the
motion picture and television industries. Applicant
maintains that the music publishing industry is unusual in
that music publishers do not advertise in the traditional
sense, for example, they do not place advertisements in
trade journals. According to applicant, one method by
which music publishers “advertise” their services is by
distributing written materials, such as a music biography,
which lets potential customers know what songs are
available for use. Applicant maintains that “[her] music
biography, which is distributed to third parties,
identifies the songs that are available for license and
therefore, operates as an ‘advertisement’ of Applicant’s
music publishing services.” (Brief, p. 12).
With respect to the Examining Attorney’s argument that
the specimens are letterhead stationery, we are cognizant
of the Trademark Manual of Examining Procedure, Section
Ser No. 75/155,657
6
1301.04, which provides, in pertinent part, that
“[l]etterhead stationery or business cards bearing the mark
may be accepted if the services are clearly indicated
thereon.” However, this is not a situation where the
specimens are simply letterhead stationery. Here, the
specimens bear more than just the mark and a company name
and address. In particular, they bear information about
applicant’s musical background, the specific songs she has
written, and previous users of her songs. Applicant states
that she has distributed this music biography to third
parties interested in using her songs.
Granted, the distribution of a biography is an unusual
method of advertising services. Generally speaking, a
biography or other written material about an applicant,
would not consititute acceptable specimens of service mark
use. Nonetheless, in this case, it appears that the
distribution of a music biography which includes the songs
that are available for use by other persons is a customary
method by which music publishers advertise their services.
There is nothing in this record to the contrary. Potential
purchasers of applicant’s music publishing services would,
therefore, understand that applicant’s music biography is
an advertisement for those services.
Ser No. 75/155,657
7
Finally, we should point out that TMEP Section
1301.04, on which the Examining Attorney relies, also
states that “[g]enerally, the applicant is able to submit
more varied types of specimens in a service mark
application [than in an application involving goods] . . .”
In this case, when we consider that it is the practice for
music publishers to advertise their services by
distributing a music biography such as the one submitted by
applicant and the fact that RUDE GIRL and design appears on
applicant’s music biography, we find that the original
specimens are acceptable.
In view of our decision herein, we need not reach the
question of whether the substitute specimens, i.e., the
cassette inserts, are acceptable. We note, however, that
there is nothing in this record to indicate that it is the
practice of music publishers to advertise their services by
distributing cassettes of their music.
Ser No. 75/155,657
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Decision: The refusal to register is reversed.
E. J. Seeherman
P. T. Hairston
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board