Sedaka

Trademark Trial and Appeal Board

Jul 30, 2003

No. 75752783 (T.T.A.B. Jul. 30, 2003)

Mailed: July 30,2003
Paper No.13
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Sedaka
________
Serial No. 75/752,783
_______
Sanford J. Asman, Esq. for Neil Sedaka.
Ysa de Jesus, Trademark Examining Attorney, Law Office 101
(Angela Wilson, Acting Managing Attorney).
_______
Before Quinn, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Neil Sedaka has filed an application to register the
term "SEDAKA" as a trademark for "prerecorded music, namely[,] a
series of musical sound recordings."1
Registration has been finally refused under Sections 1,
2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127,
on the ground that as used on the specimens, the term "SEDAKA"
does not function as a trademark for applicant's goods. Instead,
according to the Examining Attorney, such term is used in an
1 Ser. No. 75/752,783, filed on July 16, 1999, which alleges a date of
first use anywhere and in commerce of December 31, 1958.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/752,783
2
informational manner to identify the author of certain songs on
applicant's series of musical sound recordings.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
As a preliminary matter, applicant in his brief asserts
by way of background that:
Applicant has been an icon in the music
business, as a songwriter, singer, and
performer, for over forty (40) years. During
that time, applicant has been known as
"SEDAKA" by millions of fans around the
world. While applicant's name has been
synonymous with him and his music, recent
trends on the Internet have allowed others to
use his name to register domains which have
been used for a variety of nefarious
purposes. Accordingly, applicant has found
the need to secure federal trademark
registration of his name in order to prevent
interlopers, some of whom have registered
[I]nternet domains solely to trade off the
long[-]standing good will applicant has
garnered, so as to enable them to use
applicant's name to lure the unsuspecting
public to sites which sell products with
which applicant neither has, nor wants any
association.
In furtherance of such efforts,
applicant registered his mark "NEIL SEDAKA"
as U.S. Trademark Reg. No. 2,318,667 in
International Class 041 for "entertainment in
the nature of live music, concerts,
prerecorded music, and personal appearances
by Neil Sedaka", and he filed the present
application [to] secure protection on his
"SEDAKA" mark.
Relying on In re Polar Music International AB, 714 F.2d
1567, 221 USPQ 315, 318 (Fed. Cir. 1983), which among other
things held in a two-to-one decision that the name of the musical
group "ABBA" was registrable as a trademark for sound recordings
Ser. No. 75/752,783
3
because the evidence established that "the mark 'ABBA' indicates
not just the source of the performance but a source of the
records and tapes and the sound recorded thereon," applicant
contends with respect to the refusal to register that such case
"makes it clear that the 'SEDAKA' ... name can function as a
trademark in the case of music recordings, and that such name
clearly projects to purchasers the source of the goods."2 The
Examining Attorney's assertion that, as used on the specimens,
the term "SEDAKA" does not function as a trademark for
applicant's goods but is used, instead, only in an informational
manner to identify the author of certain songs on applicant's
series of musical sound recordings is misplaced, according to
applicant, because:
[T]here can be no doubt that every trademark
is "informational". That a mark is
"informational" to designate and distinguish
the goods of one person from those of
another, is precisely the purpose of having
and registering trademarks. The Examining
Attorney has confused that which is
2 It is noted, however, that unlike the present appeal, the record in
Polar Music contained a portion of an agreement licensing the mark at
issue to a record company and requiring "appellant to produce and
deliver ... master recordings embodying the performances" of the
musical group. 221 USPQ at 316. The court, in particular, pointed
out that, "[b]y express provisions of the license, appellant controls
the nature and quality of the goods"; that the recording company
"recognizes appellant's ownership" of appellant's mark; and that,
under the agreement, the appellant "is solely responsible for all
recording costs incurred in the production of the masters, and is
solely responsible for paying the artists and all others in respect of
sales of recordings derived from the masters." Id. Nonetheless, the
Examining Attorney concedes in her brief that applicant exercises
control over the nature and quality of the goods for which he seeks
registration of his "SEDAKA" mark, stating that she "has never
inquired about the applicant's control over the nature and quality of
the goods" because, citing TMEP §1202.09(a) "it is only necessary to
inquire" about such "if information in the [application] record
[clearly] contradicts the applicant's verified statement that it is
the owner of the mark or entitled to use the mark."
Ser. No. 75/752,783
4
informational ... [with the fact that such
also serves] to designate the source of
particular goods (i.e., "SEDAKA" to identify
Neil Sedaka as the source of a series of
sound recordings) ....
The record in this case, besides containing, among
other things, an article which provides biographical information
on applicant and Internet excerpts listing various recordings on
which applicant has performed, also includes a declaration from
applicant in which he states that "I have been engaged in the
music industry, as a performer, recording artist, composer, and
lyricist for over forty years"; that "[m]y name, and marks, 'NEIL
SEDAKA' and 'SEDAKA' are recognized throughout the world, and
they are associated with music which I have written, my
recordings, and my personal appearances"; that "I have composed
both the music and the lyrics for numerous songs, including those
shown on the specimens submitted"; and that "[e]ach of the songs
in which I was the sole author of both the music and the lyrics,
carries my trademark, 'SEDAKA.'"
Section 45 of the Trademark Act, 15 U.S.C. §1127,
defines a "trademark" as "any word, name, symbol, or device, or
any combination thereof," which serves "to identify and
distinguish [a person's] ... goods ... from those manufactured or
sold by others and to indicate the source of the goods, even if
that source is unknown." It is well settled, however, that not
all words, designs or symbols used in the sale or advertising of
goods function as trademarks, regardless of an applicant’s intent
that they do so. 1 J. McCarthy, McCarthy on Trademarks & Unfair
Competition, Section 3:3 (4th ed. 2003). Rather, in order to be
Ser. No. 75/752,783
5
protected as a valid mark, a designation must create "a separate
and distinct commercial impression, which thereby performs the
trademark function of identifying the source of the goods to the
customers." In re Chemical Dynamics, Inc., 839 F.2d 1569, 5
USPQ2d 1828, 1829-30 (Fed. Cir. 1988). A term or name does not
function as a trademark unless it is used in a manner which
projects to purchasers a single source of the goods. In re
Morganroth, 208 USPQ 284, 287 (TTAB 1980). Thus, as set forth in
In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215-16 (CCPA 1976)
(italics in original; citations and footnote omitted):
The Trademark Act is not an act to
register mere words, but rather to register
trademarks. Before there can be
registration, there must be a trademark, and
unless words have been so used they cannot
qualify. ....
An important function of specimens in a
trademark application is ... to enable the
PTO to verify the statements made in the
application regarding trademark use. In this
regard, the 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. ....
In the present case, applicant has submitted specimens
showing the name "SEDAKA" underneath various song titles on three
separate sound recordings consisting of compact discs entitled
"THE IMMACULATE NEIL SEDAKA," "TIMELESS" (subtitled "THE VERY
BEST OF NEIL SEDAKA") and "The Singer & His Songs NEIL SEDAKA."3
3 Although the record also contains as a specimen a fourth compact disc
which is entitled "SEDAKA'S BACK," such specimen uses the name "Neil
Sedaka" instead of "Sedaka" to designate the author of certain songs
on the album and thus is not germane to the ground of refusal herein.
Ser. No. 75/752,783
6
For example, the album "THE IMMACULATE NEIL SEDAKA" demonstrates
use of the name "SEDAKA" in connection with the titles of two of
the 16 songs thereon as follows:4
STANDING ON THE INSIDE
SEDAKA
and
LONELY NIGHT (ANGEL FACES)
SEDAKA.
Such manner of use, according to the Examining
Attorney, "merely serves as an indication of the particular
song's authorship." While agreeing with applicant that it is a
"common practice" in the recording industry "to show the
composer/lyricist of a particular song on the line underneath the
song's title" on the list of contents of the recording, she
maintains that, contrary to applicant's position, "a consumer of
an artist's pre-recorded compact disc will not recognize a name
underneath the title of a particular song as a trademark for that
sound recording." Instead, the Examining Attorney insists, "the
consumer will recognize it as an indication of authorship."
Furthermore, as to the manner of use of the name
"SEDAKA" as illustrated by the specimens, the Examining Attorney
accurately points out that (footnote omitted):
There are additional reasons why the
mark would not be perceived as a trademark.
4 Other song titles, by contrast, show use in the same manner of such
names as "SEDAKA/GREENFIELD" for the tunes "SING ME," "OH CAROL,"
"STAIRWAY TO HEAVEN," "LITTLE DEVIL" and "CALENDAR GIRL";
"GREENFIELD/SEDAKA" for the songs "HAPPY BIRTHDAY SWEET SIXTEEN,"
"LOVE WILL KEEP US TOGETHER" and "BREAKING UP IS HARD TO DO"; and
"SEDAKA/CODY for the tunes "LAUGHTER IN THE RAIN," "NEW YORK CITY
BLUES," "SOLITAIRE," "SAD EYES," "BAD BLOOD" and "IMMIGRANT."
Ser. No. 75/752,783
7
For one, the mark appears buried in text with
other informational matter. In the ...
compact disc, TIMELESS[, which is subtitled]
THE VERY BEST OF NEIL SEDAKA, the proposed
mark SEDAKA appears underneath various songs
in the compact disc. Next to that, [there]
is the copyright symbol for phonorecords, the
year in which it was recorded and the holder
of the copyright. For example, track one of
said compact disc [is listed as follows].
1. DESIREE
(SEDAKA)(P) 1982 Neil Sedaka/Flying Music
The mark is amongst other informational
elements. The informational elements are
non-distinctive words and symbols that
describe copyright information rather than
identify a single source of origin for the
sound recordings. The use of the letter P
for example, is the copyright notice for
phonorecords embodying a sound recording.
The use of the proposed mark in a closely
related manner to these elements adds to the
impression that SEDAKA is additional
copyright information and/or informational
matter. Thus, the mark fails to function as
a trademark because it is informational as
used on the specimens and does not clearly
project to purchasers a single source for
sound recordings.
We agree that, as cogently explained by the Examining
Attorney, the name "SEDAKA" is not used on the specimens in a
manner calculated to project to consumers and prospective
purchasers of sound recordings an indication of the source or
origin of such goods. Instead, due to its manner of use
underneath the titles of certain songs which appear as part of
the list of the contents of the music contained on each compact
disc, the name "SEDAKA" merely informs customers who wrote such
songs, given the common practice, to which the purchasing public
is accustomed, of displaying on sound recordings the name(s) of
the composer/lyricist(s) of a song in direct association with the
Ser. No. 75/752,783
8
song's title. Consequently, as used on the specimens, the name
"SEDAKA" does not function as a trademark for applicant's goods.
Cf. In re Chicago Reader Inc., 12 USPQ2d 1079, 1080 (TTAB 1989)
["the name 'CECIL ADAMS' as used in the specimens of record [as a
byline at the bottom of a newspaper column bearing the title 'THE
STRAIGHT DOPE'] merely serves to identify the author of the
article and is not used nor would be recognized as a trademark
identifying and distinguishing applicant's column"].
Decision: The refusal to register is affirmed.