Friday, June 16, 2023

Precedential No. 18: BOYS WORLD Functions Not Only as the Name of a Musical Group, But Also as a Trademark

The Board reversed a failure-to-function refusal of BOYS WORLD for "audio recordings featuring music," ruling that the term not only identifies the musical group but also serves as a trademark for the group's recordings. In re ZeroSix, LLC, 2023 USPQ2d 705 (TTAB 2023] (Opinion by Judge Michael B. Adlin).

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, 221 USPQ at 318. "Typically, in order to function as a mark for recordings, a performing artist’s name must be used for a series of recordings." Id. (citing In re Cooper, 254 F.2d 611, 117 USPQ 396, 400 (CCPA 1958). There must also be evidence "that the name functions as a mark."

This may be shown by providing evidence of the sort presented in Polar Music, i.e. evidence establishing that the author controls the quality of her distributed 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 the series of works.

The Examining Attorney conceded that the first element - evidence of a series of works - was satisfied. The Board then reviewed the record with regard to promotion and recognition of BOYS WORLD as a source indicator for the series of recordings. 

Apple Music and Amazon Music listings, the group's YouTube page, numerous social media pages, and the group's website prominently display the BOYS WORLD mark and provide access to the group's recordings. Articles in Billboard and People Magazine contributed to the widespread recognition of BOYS WORLD and Applicant’ s identified goods that bear the BOYS WORLD mark. 

Boys World is consistently identified − by streaming services and social, print and web media as the source of BOYS WORLD audio recordings featuring music. This is not surprising because BOYS WORLD has been heavily promoted and widely recognized as the source of the group’s music. As a result, consumers “know what they are getting” when the y purchase BOYS WORLD “audio recordings featuring music." Thus, BOYS WORLD functions as a mark.

And so, the Board found that BOYS WORLD functions as a trademark for the group's recordings, and it therefore reversed the refusal to register.

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TTABlogger comment: Why precedential? Seems to be a combination of Polar (the ABBA case) and Scholastic (THE MAGIC SCHOOL BUS).

Text Copyright John L. Welch 2023.


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