FINLAY

Owner

Goods & Services

Musical sound recordings; Digital music downloadable from the Internet; Pre-recorded vinyl records featuring music; Series of creative works and artist controls quality of those works The Office Action refused registration in Class 9 (musical sound recordings) on the ground that FINLAY is used merely as the name of a featured performer and thus does not function as a trademark for the goods. Applicant acknowledges that under Trademark Act §§1, 2, and 45, the title or name of a performing artist used on a single creative work (such as one album or song) is not registrable on the Principal Register because it fails to function as a source indicator. However, this rule does not apply when the mark is used to identify a series of creative works (e.g., a series of sound recordings by the artist) and the artist controls the quality of those works. See In re Polar Music Int'l AB, 714 F.2d 1567, 1572, 221 USPQ 315 (Fed. Cir. 1983); In re Arnold, 105 USPQ2d 1953 (TTAB 2013). Applicant has taken the steps outlined in the Office Action to demonstrate that FINLAY is used as a trademark for a series of musical recordings, rather than a single work. Attached herewith is evidence of a series of sound recordings released under the mark FINLAY, consisting of screenshots of at least two different EPs/singles available on Apple Music under the FINLAY name. For example, the Apple Music artist page for FINLAY shows multiple releases over several years (e.g. "dream girl - Single" (2025), "Reset - EP" (2021), "edge of mine - EP" (2020), "Bones - Single" (2019), "TIDES - Single" (2017), etc.), indicating that FINLAY is the recurring name identifying a series of sound recordings rather than one work. This satisfies the requirement of showing use on a series of works. Moreover, Applicant has provided a declaration (below) confirming that the applicant is the performer Paige Finlay Yim and that she produces the recordings and controls their quality. This attests that the FINLAY name represents an assurance of consistent quality and source in the marketplace. Specifically, Applicant has stated: "The applicant produces the goods and controls their quality." This evidence of control, combined with evidence of multiple different recordings released under the FINLAY mark, establishes that the applied-for mark functions as a trademark for the Class 9 goods. See TMEP §1202.09(a); In re Polar Music, 221 USPQ at 318 (performer's name can function as mark for series of records where the performer controls the quality). Accordingly, Applicant believes the Failure-to-Function refusal is overcome. FINLAY is not merely a personal name on a single work; it is being used as a brand on a series of musical recordings, with Applicant exercising quality control over those goods. Applicant respectfully requests withdrawal of the Class 9 refusal in view of the evidence and declaration submitted.

Posters made of paper; Stickers Class 16 (Posters and Stickers). The Office Action found the original specimen for Class 16 (posters and stickers) to be unacceptable because it was illegible or did not clearly show the mark on the goods. Specifically, the examining attorney could not see the mark "FINLAY" on the goods in the image due to the image's positioning/quality. Therefore, the specimen failed to show the applied-for mark as actually used in commerce on the Class 16 goods, as required by Trademark Act §1(a) and 37 C.F.R. §2.56(a). To correct this issue, Applicant hereby submits a Substitute Specimen for Class 16, along with the necessary verification of use. The substitute specimen consists of a screenshot of Applicant's merchandise webpage, clearly showing the mark FINLAY directly associated with the Class 16 goods (specifically, stickers and/or posters) that were offered for sale as of the application filing date. Figure 1. Substitute specimen showing the mark FINLAY on Applicant's official merchandise webpage , where FINLAY-branded goods are displayed and offered for sale. This webpage shows "FINLAY" prominently used as a source identifier in direct association with the products, with an "Add to Cart"/price visible (a point-of-sale display), thus meeting the criteria of an acceptable electronic point-of-sale specimen. Applicant verifies that this substitute specimen was in use in commerce on or before the application filing date (June 23, 2025). A declaration attesting to the specimen's use by the filing date is provided below. This substitute specimen is legible and shows the mark in a manner that purchasers would perceive as a trademark. It features the mark FINLAY next to images/descriptions of the goods and includes the requisite purchasing information (price and cart button), thereby constituting a proper "display associated with the goods" in accordance with TMEP §904.03(i). Notably, as the TMEP instructs, a webpage specimen must show the mark in association with the goods and include the information necessary to order the goods. The attached Figure 1 meets this standard: the mark FINLAY is clearly shown on the same page as the items (stickers/posters) and customers can directly purchase the items from that page. Applicant respectfully submits that this substitute Class 16 specimen, with its accompanying verification, satisfies the requirements of 37 C.F.R. §2.59(a)-(b). The original illegible specimen is hereby replaced. Please accept the substitute specimen and update the application record to reflect its submission and the verified date of first use (which remains at least as early as 02/14/2019, as originally stated). This should overcome the refusal regarding the Class 16 specimen.

Live music performances; Providing online music, not downloadable