Trademark Suggests a False Connection

Does your trademark suggest a false connection to someone or something famous? Did your trademark get rejected for suggesting a false connection?

If your mark contains a famous place, part of someone’s name or nickname, refers to a group of people or even title of a famous song, the USPTO might reject your mark under Section 2(a) of the Trademark Act.  The examining attorneys will typically state in the office action that your trademark is rejected for suggesting a false connection to the group, person, place, or institution at issue under Section 2(a) .

Like any other trademark application, you have the right to respond to the office action and lay out your best arguments as to why your proposed mark does not suggest any connection to the “famous” name.  I have to say that throughout my research, I have not seen any successful office action responses.  What I saw was rather lean responses from attorneys saying that the mark does not suggest any connection and lay out some arguments.  Most of these cases end up going to appeal and that’s when I saw the Trademark Trial and Appeal Board (the Board) reverse some of these refusals and issue the mark if they agree with the applicant’s arguments.

I. Trend in overcoming the rejection

Our research shows that most people cannot overcome the trademark suggesting false connection rejection on Office Action.

I’m not sure whether these marks keep getting rejected by examining attorneys because these responses are not very comprehensive or whether the USPTO attorneys do not want to jeopardize the case by issuing something they shouldn’t.  This is something I am currently investigating and will update the post when I come up with a better answer. After all, the reasons for these rejections are very understandable as explained in the paragraph below.

II. Reason behind the rejection

The logic behind refusing the marks for suggesting a false connection is very understandable.  The essence of Trademark law is to prevent a likelihood of consumer confusion between products’ brand names (Trademark Act Sec. 2(d), 15 U.S.C. § 1052(d)).  Taken a step further, certain protections are given through names of people and institutions or even famous places. Think Cuban cigars or rums, or Paris fashion.  If you were to buy a cigar and the brand states Havana Cigars or Cigar de Cuba, you would assume that the cigars are in fact from Cuba.  And that’s the goal of Section 2(a), protecting these people, places, and institutions from having their names misused even when those names or identities are not used to sell closely related goods, or services rather than goods. This section protects against an invasion of privacy or violation of the right of publicity, which is arguably a more serious issue than a likelihood of confusion and probably the main reason trademark examining attorneys are hesitant to allow these cases even when the same arguments made on appeal make the Board reverse the rejection and allow the mark.  Throughout my search, I did see some pretty funny marks like the “Obama Pajama” and others containing names of U.S Presidents.

III. The 4 Factor Test in a False Connection rejection

In the leading case concerning the false connection rejection University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., the University of Notre Dame appealed the decision of the U.S. Patent and Trademark Office (USPTO). The Federal Court held that the mark NOTRE DAME and design, for cheese, did not falsely suggest a connection with the University of Notre Dame. As the Board noted, “‘Notre Dame’ is not a name solely associated with the University. It serves to identify a famous and sacred religious figure and is used in the names of churches dedicated to Notre Dame, such as the Cathedral of Notre Dame in Paris, France. It cannot be said that the only ‘person’ which the name possibly identifies is the University and that the mere use of NOTRE DAME by another appropriates its identity.”

The Federal Circuit found that, even while there might be no trademark confusion as to the source of goods, Section 2(a) prevented the violation of a person or institution’s right of privacy or publicity.  In its decision, the Federal Court announced a 4-factor test for deciding whether a false suggestion or association exists.  To say that a mark falsely suggests a connection with a person or an institution, it must be shown that:

1) the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution;

2) the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;

3) the person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and

4) the fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed.

1) Factor 1: the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution;

To establish that a mark falsely suggests a connection with a person or an institution, the first factor to be determined is whether the mark is the same as, or a close approximation of the name or identity of a person or institution.

In Buffett v. Chi-Chi’s, Inc., 226 U.S.P.Q. 428, 429 (TTAB 1985), “Margaritaville” was one of Jimmy Buffet’s song titles, which also happened to have strong ties to the singer, and in re Wielinski, 49 U.S.P.Q.2d 1754 (T.T.A.B. 1998), the Board stated that “the person with whom the marks are said to falsely suggest a connection must have rights in its name or identity which are prior to those of the applicant.” In those cases, the Board mentioned that if the mark suggests a connection with an entity and no one currently maintains rights in the entity’s name, the Section 2(a) bar does not apply. This is true whether the entity is a corporation or an individual.

In order to state a claim under this provision, the opposer or USPTO must assert some type of “linkage or relationship” with that individual to be able to assert his or her rights.  In Nike, Inc. v. Palm Beach Crossfit, Inc., 116 U.S.P.Q.2d 1025 (T.T.A.B. 2015), the board found that a licensing relationship with an individual and use of his or her image in trademarks may give a sufficient right, but the claim was dismissed for failure to assert that such relationship gave the company a right to assert the claim.

2) Factor 2: the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution

The second factor in determining whether the false connection exists is whether the disputed mark points uniquely to the suggested connection or whether a false connection would likely be presumed.  In the leading case applying the false connection provision, the University of Notre Dame sued a cheese company over the use of “Notre Dame”. The Federal Circuit held that a cheese packaged with a sketch of the Notre Dame Cathedral in Paris does not point uniquely to University of Notre Dame; nor would a person likely presume a connection between the University and the cheese.  Similarly, in an opposition by the Ritz Hotel to the use of RITZ-Z for toilet seat covers (Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1241–42, 73 U.S.P.Q.2d 1350 (Fed. Cir. 2004), the Board held that the opposer, Ritz Hotels, failed to show that the mark “points uniquely to the opposer, a necessary element of a claim that a mark falsely suggests a connection with one’s identity or persona.” In fact, the circuit held that RITZ was not famous after a century of use, annual sales of over $5 million, and hundreds of thousands of annual national advertising.

Similarly, in Internet, Inc. v. Corporation for National Research Initiatives, 38 U.S.P.Q.2d 1435 (T.T.A.B. 1996), the word mark INTERNET did not point uniquely to petitioners’ or anyone else’s name or identity, but is the name of the “network of networks”. In a case involving the mark DaVINCI, a federal court held that the use of the mark for jewelry and giftware “is scarcely likely to mislead any substantial number of purchasers into believing that Leonardo DaVinci was in any way responsible for the design or production of the goods.”

3) Factor 3: the person or institution named by the mark is not connected with the activities performed by the applicant under the mark

The third factor in the Section 2(a) false suggestion analysis is whether there is a commercial connection between the applicant and the opposing individual or institution related to the particular goods and services, which can be obvious from the adversarial nature of the opposition or cancellation proceeding.

There must be a specific endorsement or sponsorship of the particular goods and services, but it is acceptable if that endorsement is merely implied.  In re Los Angeles Police Revolver & Athletic Club, Inc., 69 U.S.P.Q.2d 1630 (T.T.A.B. 2004), the Board reversed the refusal to register the mark TO PROTECT AND TO SERVE, applied for by a police athletic club. The identical phrase was the well-known slogan of the Los Angeles Police Department (LAPD). In this case, the Board found that although there was no formal agreement between the applicant and the LAPD, the evidence showed that the LAPD had “openly advanced the commercial activities of the applicant”; consequently, it found that there was “a substantial commercial connection between the applicant and the LAPD.”

4) Factor 4: The fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed

The fourth factor courts look at to determine whether a trademark suggests a false connection is whether the person or institution is sufficiently well known that when the mark is used in conjunction with the applicant’s good or service, a connection would be presumed.

In Board of Trustees of University of Ala. v. BAMA-Werke Curt Baumann, 231 U.S.P.Q. 408 (T.T.A.B. 1986), the Board held that when Bo Jackson’s “nickname is used without his surname in connection with the goods of applicant, an association between him and the goods or with the applicant’s business would be assumed by purchasers of such products.” It might have been possible to register BO soda or BO laptop computers, however, because the public probably would not have associated the mark BO with Bo Jackson in those instances.

IV. In conclusion

These trademark rejections suggesting a false connection can be hard to overcome and require a great deal of technical knowledge.  Some of these cases need to be appealed for the mark to be allowed.

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