Sometimes an artist's name may “simply identify the source of the performance contained on the record,” which is not enough to establish that the artist's name functions as a mark for the recording. In re Polar Music Int'l AB, 714 F.2d 1567, 221 USPQ 315, 318 (Fed. Cir. 1983); see also In re Spirer, 225 USPQ 693, 694 (TTAB 1985) (while a performing artist's name may identify their records, “that does not mean that [the artist's name] necessarily serves as a trademark for [the artist's] records”)

To function as a mark for recordings, a performing artist's name typically must be used for a series of recordings. In re Polar Music, 221 USPQ at 318 (citing In re Cooper, 254 F.2d 611, 117 USPQ 396, 400 (CCPA 1958) (“The name for a series, at least while it is still being published, has a trademark function in indicating that each book of the series comes from the same source as the others.”).

Second, there also must be evidence that the name functions as a mark.

This may include evidence establishing that the author controls the quality of their distributed works and controls use of their name, so as to indicate the quality of those works. In re Polar Music, 221 USPQ at 318.

Or, 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.” In re Scholastic Inc., 23 USPQ2d 1774, 1778 (TTAB 1992) (“Where the designation THE MAGIC SCHOOL BUS has been used in each title of each book of the series and also has come to represent a source to purchasers, the designation may be registered as a trademark since it functions as one.”).

In addition, evidence of promotion and recognition of the author's name should be of the type that would identify the author as the source of the series of works. In re First Draft Inc., 76 USPQ2d 1183, 1190 (TTAB 2005); see also In re Arnold, 105 USPQ2d 1953 (TTAB 2013) (finding that the performer's name was used for a series but did not identify the source of the series).

BOYS WORLD

On June 14, 2023, The Trademark Trial and Appeal Board recently designated a May 1, 2023 decision as precedential which involved a trademark application for “BOYS WORLD,” the name of a musical “girl group” that is sometimes referred to as “the Gen Z Spice Girls,” in Class 9 for “audio recordings featuring music.” In re ZeroSix, LLC, 2023 USPQ2d 705 (TTAB May 1, 2023).

There was no dispute on appeal that the name had been used for a series of recordings. Thus, the only issue was whether there was sufficient evidence of promotion and recognition such that the performing artist's name, BOYS WORLD, in the mark would be perceived by consumers as identifying the source of the series and not merely the recording artist.

The evidence included Apple Music and Amazon Music listings for BOYS WORLD recordings, through which consumers are able to play or purchase BOYS WORLD music, or watch BOYS WORLD music videos; as well as YouTube, Spotify, Instagram, Tik Tok and Twitter pages; and the BOYS WORLD website at <boys.world>. For example, at the time of the TTAB appeal, the BOYS WORLD YouTube page had 154,000 subscribers and the “Girlfriends” official music video had been viewed 2.1 million times on YouTube (as of the posting of this blog, there are now 185K YouTube subscribers and 2.4M views of the video).

There also were a number of articles published in BILLBOARD and PEOPLE, as well as online publications, about the group.

Boys World is consistently identified − by streaming services and social, print and web media – as the source of BOYS WORLD audio recordings featuring music. . . . As a result, consumers “know what they are getting” when they purchase BOYS WORLD “audio recordings featuring music.” Thus, BOYS WORLD functions as a mark.

Even though KYN Entertainment was identified in copyright notices as an owner of certain BOYS WORLD recordings; a trademark “need not be the name of the manufacturer of the goods and the public need not know the name of the owner of the mark,” and “the public need not know [Kyn Entertainment's] role.” In re Polar Music, 221 USPQ at 317.

The refusal to register was reversed.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.