Shelia Monique Mayv.MayCo II Entertain-ment

Trademark Trial and Appeal Board

Nov 14, 2001

No. 75534652 (T.T.A.B. Nov. 14, 2001)

11/14/01 Paper No. 12
RLS/TAF

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Shelia Monique May d.b.a. MayCo II Entertainment
________

Serial No. 75/534,652
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Christine Karol Roberts, Esq., for Shelia Monique May.

Kevon L. Chisolm, Trademark Examining Attorney,
Law Office 109 (Michael Hamilton, Managing Attorney).
_______

Before Simms, Hohein and Chapman, Administrative Trademark
Judges.

Opinion by Simms, Administrative Trademark Judge:

Shelia Monique May, d.b.a. MayCo II Entertainment
(applicant), has appealed from the final refusal of the
Trademark Examining Attorney to register the mark SEELEY
for audio compact discs, audiocassettes and videocassettes
featuring children’s stories.1 The Examining Attorney has
refused registration on the ground that applicant’s
asserted mark does not function as a trademark indicating

1 Application Serial No. 75/534,652, filed August 11, 1998, based
upon allegations of use and use in commerce since January 1993.
Applicant amended the application to seek registration on the
Supplemental Register on September 27, 1999.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/534,652
2
origin of applicant’s goods but merely identifies a
featured character of the stories contained in and
appearing on applicant’s goods.2
Applicant and the Examining Attorney have submitted
briefs but no oral hearing was requested.
We affirm.
Noting that the name “SEELEY” appears next to an
angelic cartoon-like character on one of applicant’s
specimens (a CD label, shown below), the Examining Attorney

2 The Examining Attorney has refused registration under Sections
1, 2, 3 and 45 of the Act, 15 USC §§1051, 1052, 1053 and 1127.
However, because the Examining Attorney accepted applicant’s
amendment to the Supplemental Register, refusal under Sections 1,
2 and 3, which pertain to the Principal Register, is not
appropriate. Rather, refusal should have been made under Section
23 of the Act, 15 USC §1091, which pertains to the Supplemental
Register. See In re Eilberg, 49 USPQ2d 1955, 1956 n. 2 (TTAB
Ser. No. 75/534,652
3
contends that, while the name of a real or fictitious
person may be registrable as a trademark if the name is
used as a mark in connection with the goods to identify and
distinguish those goods from those of others, here
applicant’s specimens fail to demonstrate that the name
functions as a trademark. The Examining Attorney points to
the language on one of applicant’s specimens that
“Yesterday’s tales are portrayed in the vivid voice of an
awkward yet heavenly little angel ‘Seeley.’ Seeley takes
kids into a world where faith and honesty prevail, good
triumphs over evil, and childhood fears are conquered.”
The Examining Attorney maintains that the commercial
impression created by the name “SEELEY” on applicant’s
specimens is that of a character (or narrator) in
applicant’s fairytales. Therefore, the asserted mark does
not function as a trademark identifying and distinguishing
applicant’s goods.
Applicant, on the other hand, maintains that, while
the name SEELEY is the name of a character or narrator of
applicant’s fairytales, it also has the dual role as a
trademark indicating source of applicant’s goods.
Applicant points to the CD label showing an angelic figure,

1998). This technical defect is not critical, however, because
applicant fully understood the nature of the refusal.
Ser. No. 75/534,652
4
below and to the left of which is the designation
“Seeley”. Applicant argues that consumers will discern
that “SEELEY” is also intended to function as a trademark.
Further, applicant argues that the prominent display of a
mark is not necessary to establish trademark use because
the Act does not require any particular size or degree of
prominence.
As the Examining Attorney has recognized, the name of
a fictitious character may be registrable as a trademark if
the name is used in the manner of a trademark to identify
the goods and distinguish them from those of others. In re
DC Comics, Inc., 689 F.2d 1042, 215 USPQ 394 (CCPA 1982);
and In re Caserta, 46 USPQ2d 1088, 1090 (TTAB 1998). But,
as the Examining Attorney has noted, not all words, designs
and symbols used in connection with goods function as
trademarks. In re Chicago Reader Inc., 12 USPQ2d 1079,
1080 (TTAB 1989). One must, of course, look to the
specimens of record in order to determine whether or not
the asserted mark functions as a trademark to identify and
distinguish applicant’s goods from those of others and in
order to ascertain the commercial impact created by the
asserted mark. In re Caserta, supra, at 1090 n. 4; In re
Hechinger Investment Co. of Delaware Inc., 24 USPQ2d 1053,
1056 (TTAB 1991); and In re Chicago Reader Inc., supra.
Ser. No. 75/534,652
5
Here, we are in agreement with the Examining Attorney
that applicant’s asserted mark will likely be perceived
only as identifying a character, specifically the narrator
of applicant’s fairytales, and not as a trademark
indicating origin of the goods in applicant. In this
regard, the name SEELEY is shown in close proximity to the
depiction of an angelic-like figure and, in addition, it is
clear from applicant’s specimens that this is the name of
the narrator of applicant’s fairytales. See, for example,
In re Caserta, supra (FURR-BALL FURCANIA unregistrable
because it is merely part of a title and identifies the
principal character in applicant’s children’s books and
periodical publications); and In re Scholastic Inc., 223
USPQ 431 (TTAB 1984)(THE LITTLES, as used in the title of
each book, would be viewed as identifying the main
character in the book). Further, contrary to applicant’s
contention, the mere use of the designation “TM” next to a
name or symbol does not make that term or symbol a
trademark. In re Caserta, supra, at 1090. Rather, it is
the commercial impression as a whole which one gleans from
the specimens of record from which this determination is
made. And, as noted above, that impression is that this
name functions merely to identify the narrator of
applicant’s stories.
Ser. No. 75/534,652
6
Decision: The refusal of registration is affirmed.