Trademarks That Falsely Suggest A Connection With Other Persons

Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a) bars registration of marks that are immoral, deceptive, scandalous or if the mark falsely suggests a connection with persons (living or dead), institutions, national symbols, or beliefs. These provisions apply both to the Principal Register and the Supplemental Register. This provision of the Trademark Act works to protect one’s right to privacy and to prevent the unauthorized use of the persona of a person or institution. Unlike most of the trademark laws, this provision does not protect the public, but instead the individual or institution. Section 1203.03 of The Trademark Manual of Examining Procedure (TMEP) provides additional information on this topic.

The Examining Attorney at the United States Patent & Trademark Office (USPTO) has the burden to prove the elements for a false suggestion of a connection refusal. Any doubts are to be resolved in favor of the Applicant. A mark does not have to include a person’s full or correct name to be barred. This was decided in the case of Buffet v. Chi-Chi’S, Inc., 226 U.S.P.Q. 428, 430, (TTAB 1985). In Buffet, the Board held that the term MARGARITAVILLE was uniquely associated with the Opposer, as to constitute the Opposer’s name and when the Applicant used the mark for its restaurant services, a false connection with the Opposer would be assumed.

To prove that a proposed trademark falsely suggests a connection with a person or an institution, the Examiner must demonstrate that:

(1) The trademark is the same as or a close approximation of the name or identity previously used by another person or institution;
(2) The Applicant’s trademark is recognized as uniquely pointing to the other person;
(3) There must be no connection with the other person or institution and the Applicant’s goods or services; and
(4) The person’s name or likeness must be sufficiently famous so that a connection would be apparent by the consumer.

Examining Attorneys will raise this refusal in an Office Action. Applicants will be given an opportunity to refute the refusal. If the Applicant is not successful, then a final refusal may be issued. The Applicant may appeal the decision to the Trademark Trial and Appeal Board (the “Board”). In the case of Lesley Hornby a/k/a Lesley Lawson a/k/a Twiggy v. TJX Companies, Inc., 87 USPQ2d 1411 (TTAB 2008), the Board granted the petition to cancel the registration of TWIGGY for children’s clothes because it determined that there would be a false suggestion of a connection with the internationally famous model TWIGGY. In 2004, the Board refused the registration for the mark APACHE for cigarettes. It held that there would be a false suggestion of a connection with nine recognized Apache tribes.

A recent attempt to register the mark BLUE IVY CARTER NYC was refused by the USPTO. In his Office Action, the Examiner attached evidence showing that Blue Ivy Carter is the famous infant of singer Beyonce´ and rap artist Jay-Z. Therefore, the purchasing public will incorrectly presume that there is a connection between Blue Ivy Carter (through the control of her parents) and the Applicant’s clothing line.

Another provision of the Trademark Act that seeks to protect rights of privacy and publicity is Section 2(c) of the Trademark Act, 15 U.S.C. §1052(c). This section bars the registration of a trademark that consists of a name, portrait, or signature that identifies a particular living person, or a deceased U.S. President during the life of his widow, unless there is written consent. For additional information concerning this rule see TMEP §1206. Whether consent is necessary depends on whether the public would recognize and understand the trademark to identify a particular person. Multiple applications have been refused at the USPTO on this basis because the marks have incorporated President Obama’s name. In those cases, the Examining Attorney will require the written consent of President Barack Obama for the trademark application to proceed. Examples of recent refusals under Section 2(c) of the Trademark Act are DOES OBAMACARE? for hats and t-shirts, THE OBAMA COLLECTION for art prints, BRONX OBAMA for entertainment services, and OBAMA WORLD for entertainment services.

These two provisions are among many that an Examining Attorney will use to refuse an Applicant’s trademark application. Once the issue is raised in an Office Action, the filing fees and other expenses are lost if you cannot successfully persuade the Examiner that the trademark application is entitled to registration. The likelihood of a successful prosecution increases with the assistance of experienced trademark counsel. The attorneys at our firm would be happy to speak with you and discuss any trademark matters of concern, including an Office Action Refusal. Please feel free to contact one of our New York trademark attorneys for a courtesy consultation.