Polar Music Intern. AB, In re

• Decision Date: 03 August 1983
• Docket Number: Nos. 83-501,83-514,s. 83-501
• Citation: 221 USPQ 315,714 F.2d 1567
• Parties: In re POLAR MUSIC INTERNATIONAL AB. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1567

714 F.2d 1567

221 U.S.P.Q. 315

In re POLAR MUSIC INTERNATIONAL AB.

Appeal Nos. 83-501, 83-514.

United States Court of Appeals, Federal Circuit.

Aug. 3, 1983.

Jerry E. Hyland, Indianapolis, Ind., argued for appellant.

Fred E. McKelvey, Arlington, Va., argued for appellee. With him on the brief was Joseph F. Nakamura, Sol., Washington, D.C.

Before BALDWIN, KASHIWA and SMITH, Circuit Judges.

KASHIWA, Circuit Judge.

This is a consolidated appeal from decisions of the Trademark Trial and Appeal Board (hereinafter board) sustaining the trademark examining attorney's refusals of two applications by appellant for registration on the principal register. It raises the issue whether the name and portrait of a musical group function as trademarks on sound recordings under the facts of this case. We hold that the specimens submitted to the Patent and Trademark Office fully evidence the trademark usage of the name of the musical group "ABBA" on such goods. We hold, however, that the portrait of the group, although potentially able to be registered as a trademark, has not been shown on the record before us to have been used as a trademark. The decision of the board is reversed in Appeal No. 83-514 and affirmed in Appeal No. 83-501.

I

Polar Music International AB, the appellant, is a Swedish corporation whose business includes the production of phonograph records and tapes. Appellant is the corporate entity of the popular musical group "ABBA." It has an agreement for the exclusive services of Agnetha Faltskog, Bjorn Ulvaeus, Benny Anderson, and Ann-Frid Lyngstad, who perform together as "ABBA." "ABBA" has been extremely successful in the United States and throughout the world, producing several albums and numerous hit singles.

In order to sell sound recordings in the United States, appellant has entered into an agreement with Atlantic Recording Corporation (hereinafter Atlantic). That agreement requires appellant to produce and deliver to Atlantic master recordings embodying the performances of "ABBA."

The agreement requires that "[e]ach master shall be completed, fully edited and mixed, prior to delivery * * * [to Atlantic] in the proper form for the production of the parts necessary for the manufacture of phonograph records." 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. Subject to certain terms and conditions, Atlantic is granted the right to use the mark "ABBA" and likenesses of the group in connection with the promotion, advertising, distribution, exploitation, and sale of records embodying the master recordings made by appellant. By express provision in the license, appellant controls the nature, and quality of the goods, and Atlantic recognizes appellant's ownership of the marks and that Atlantic's use of the marks inures to the benefit of appellant. Pursuant to the agreement, Atlantic manufactures records in the United States from master recordings supplied by appellant, and Atlantic sells the records using appellant's marks.

In addition to use on sound recordings, the mark "ABBA" has been used in the United States in connection with entertainment services and on a variety of products. Appellant owns United States Registration Nos. 1,072,398 and 1,072,394 of "ABBA" for entertainment services. Appellant also owns Registration Nos. 1,114,496, 1,129,534, and 1,177,362 of "ABBA" for photographs, posters, musical entertainment newspapers, brochures, badges, buttons, guitars, and shoes.

Appellant sought to register the two marks reproduced below for International Class 9, sound recordings: ¹

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

It submitted several specimens containing the word "ABBA" as demonstrating trademark use. These included a label affixed to a phonograph record, a record album cover, and a point of purchase display as used in record stores. In addition, appellant submitted as part of the record portions of its agreement with Atlantic and a promotional brochure. In support of its application to register the portrait mark it submitted a cover of a phonograph record. That specimen shows use of the portrait, the word "ABBA," lists the titles of the recorded songs, and indicates that the recording is "A Polar Music Production."

The trademark examining attorney refused registration of both marks. He held that the name of a recording artist or group when used on a phonograph record is not registrable as a trademark for such goods since it identifies the artist performing on the record rather than the source or origin of the goods. With regard to the portrait, he held that "the portrait of the musical singing group ABBA, in special form, is merely the portrait of the recording artists or group whose performance comprises the subject matter of the goods and hence does not function as a Trademark for sound recordings * * *."

Before the board and before us appellant argues that its marks as applied to sound recordings, record covers, and point of sale displays, indicate to the general public a source or secondary source of the records. It claims the marks are symbols of guaranty of quality which appellant has adopted and offered to the public. In addition, it argues that the mark "ABBA" is used on master recordings which appellant supplies to Atlantic and indicates to Atlantic both the source of the goods and a symbol of guaranty of quality. Appellant draws various analogies to other permitted uses of trademarks including the use of a trademark on a T-shirt and the registrability of a title to a series of books or records. See, e.g., In re Penthouse International, Ltd., 565 F.2d 679, 195 USPQ 698 (Cust. & Pat.App.1977); In re Expo '74, 189 USPQ 48 (TTAB 1975); In re Olin Corporation, 181 USPQ 182 (TTAB 1973); In re First National City Bank, 168 USPQ 180 (TTAB 1970); In re Appleby, 159 USPQ 126 (TTAB 1968).

The board found the analogies drawn by appellant to be differentiable. It agreed with the examining attorney that on the record " 'ABBA' does [no] * * * more than inform purchasers of the name of the group of artists whose performance is contained on the sound recordings to which the designation is applied." The board further held that purchasers would not have knowledge that appellant exercises quality control over the goods and that therefore the word "ABBA" did not indicate the source of the goods but rather the source of the performance. With regard to the portrait the board said:

[T]he portrait applicant seeks to register * * * serves merely to identify the group of artists whose performances comprise the subject matter of records and the like. * * * [W]e believe that purchasers of these goods would separate the source of the performance contained on the goods from the source of the physical items themselves. ²

II

A trademark "includes any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others." 15 U.S.C. § 1127. A trademark informs the public of a source of the goods and assures them of its quality. 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. See Coca-Cola Co. v. Koke Co. of America, 254 U.S. 143, 146, 41 S.Ct. 113, 114, 65 L.Ed. 189 (1920); Saalfield Publishing Co. v. G & C Merriam Co., 288 F. 1, 8 (6th Cir.), cert. denied, 243 U.S. 651, 37 S.Ct. 478, 61 L.Ed. 947 (1917).

Appellant submitted a license evidencing its right to control the quality of the sound recordings. Since appellant controls the quality of the goods, it is the source of the goods. Any trademark for the sound recordings can therefore only indicate source in appellant since no other entity is the source. ³ The source of the goods does not depend on the public's perception; the public need not know appellant's role. Thus, the board's holding that "ABBA" cannot function as a trademark for recordings because the public would not know that appellant owns the rights in "ABBA" and that it exercises quality control over the records must be rejected. E.I. Du Pont de Nemours & Co. v. Celanese Corp., 35 C.C.P.A. 1061, 167 F.2d 484, 77 USPQ 364 (1948).

III

In accord with the Lanham Act, 15 U.S.C. § 1051, appellant submitted specimens indicating the use of the mark "ABBA" and the portrait on phonograph records. The Solicitor, however, argues that the specimens submitted are prima facie evidence that the word "ABBA" and the portrait identify the artists and do not function as trademarks. He contends that the marks in question could function as trademarks but have not been shown to on the basis of the evidence submitted. We disagree.

Phonograph...