1203.03    Matter That May Falsely Suggest a Connection

Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), bars the registration on either the Principal or the Supplemental Register of a designation that consists of or comprises matter which, with regard to persons, institutions, beliefs, or national symbols, falsely suggests a connection with them.

Section 2(a) is distinctly different from §2(d), 15 U.S.C. §1052(d),  for which the relevant test is likelihood of confusion. In University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 1375-76, 217 USPQ 505, 508-09 (Fed. Cir. 1983) (footnotes omitted), aff’g 213 USPQ 594 (TTAB 1982), the Court of Appeals for the Federal Circuit noted as follows:

A reading of the legislative history with respect to what became §2(a) shows that the drafters were concerned with protecting the name of an individual or institution which was not a technical "trademark" or "trade name" upon which an objection could be made under §2(d). . . .

Although not articulated as such, it appears that the drafters sought by §2(a) to embrace concepts of the right to privacy, an area of the law then in an embryonic state. Our review of case law discloses that the elements of a claim of invasion of one’s privacy have emerged as distinctly different from those of trademark or trade name infringement. There may be no likelihood of such confusion as to the source of goods even under a theory of "sponsorship" or "endorsement," and, nevertheless, one’s right of privacy, or the related right of publicity, may be violated.

The right to privacy protects a party’s control over the use of its identity or "persona." See U.S. Olympic Comm. v. Tempting Brands Neth. B.V., 2021 USPQ2d 164, at *20 (TTAB 2021) (quoting In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1643 (TTAB 2015)). A party acquires a protectible interest in a name or equivalent designation under §2(a) where the name or designation is unmistakably associated with, and points uniquely to, that party’s personality or "persona." Univ. of Notre Dame du Lac, 703 F.2d at 1376-77, 217 USPQ at 509; In re ADCO Indus. – Techs. L.P. , 2020 USPQ2d 53786, at *3-4 (TTAB 2020) (citing In re Nieves & Nieves LLC, 113 USPQ2d at 1643). A party’s interest in a name or designation does not depend upon adoption and use as a technical trademark or trade name. Univ. of Notre Dame du Lac, 703 F.2d at 1375-77, 217 USPQ at 508-09; Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985). Section 2(a) protection is intended primarily to prevent the unauthorized use of the persona of a person or institution and not to protect the public. In re Int’l Watchman, Inc., 2021 USPQ2d 1171, at *3 (TTAB 2021) (quoting Bridgestone/Firestone Rsch. Inc. v. Auto. Club De L’Ouest De La Fr., 245 F.3d 1359, 1363, 58 USPQ2d 1460, 1463-64 (Fed. Cir. 2001)).

Moreover, a mark does not have to comprise a person’s full or correct name to be unregistrable; a nickname or other designation by which a person is known by the public may be unregistrable under this provision of the Act. See In re Sauer, 27 USPQ2d 1073, 1074 (TTAB 1993) (finding that "Bo Jackson has achieved great fame and notoriety, so that when his nickname is used as part of the ‘Bo Ball’ and design mark on applicant’s goods, purchasers will likely make a connection between him and applicant’s products"); see also Buffett, 226 USPQ at 430 (finding evidence of record "sufficient to raise a genuine issue of material fact as to whether the term ‘MARGARITAVILLE’ is so uniquely and unmistakably associated with opposer as to constitute opposer’s name or identity such that when applicant’s mark is used in connection with its [restaurant] services, a connection with opposer would be assumed").

See TMEP §§1203.03(b)–1203.03(b)(iii) regarding false suggestion of a connection.

See Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831, 218 USPQ 1 (6th Cir. 1983), concerning the various forms of identity which have been protected under the rights of privacy and publicity.

1203.03(a)    Definitions

1203.03(a)(i)    "Persons"

Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a),  protects, inter alia, "persons, living or dead."

Section 45 of the Act, 15 U.S.C. §1127, defines "person" and "juristic person" as follows:

The term "person" and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this Act includes a juristic person as well as a natural person. The term "juristic person" includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.

The term "persons" in §2(a) refers to real persons, not fictitious characters. It also encompasses groups of persons. See Matal v. Tam, 137 S. Ct. 1744, 122 USPQ2d 1757 (2017). With respect to natural persons, they may be living or dead. However, §2(a) may not be applicable with regard to a deceased person when there is no longer anyone entitled to assert a proprietary right or right of privacy. In re MC MC S.r.l., 88 USPQ2d 1378 (TTAB 2008) (holding MARIA CALLAS not to falsely suggest a connection with deceased opera singer Maria Callas); Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 165 USPQ 459 (S.D.N.Y. 1970) (holding DA VINCI not to falsely suggest a connection with deceased artist Leonardo Da Vinci). See TMEP §1203.03(b)(i) regarding elements of a §2(a) false suggestion of a connection refusal.

In the case of a mark comprising the name of a deceased natural person, the "right to the use of a designation which points uniquely to his or her persona may not be protected under Section 2(a) after his or her death unless heirs or other successors are entitled to assert that right." U.S. Olympic Comm. v. Tempting Brands Neth. B.V., 2021 USPQ2d 164, at *20 (TTAB 2021) (quoting In re MC MC S.r.l., 88 USPQ2d at 1380). A key consideration is "whether or not there is someone (this may be a natural person, estate, or juristic entity) with rights in the name." In re MC MC S.r.l., 88 USPQ2d at 1380. Any doubt regarding the existence of heirs or successors with such rights must be resolved in favor of the applicant. See id., at 1381.

In addition to natural persons, §2(a) includes juristic persons, that is, legally created entities such as firms, corporations, unions, associations, or any other organizations capable of suing and being sued in a court of law. See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (C.C.P.A. 1969); Popular Merch. Co. v. "21" Club, Inc., 343 F.2d 1011, 145 USPQ 203 (C.C.P.A. 1965); John Walker & Sons, Ltd. v. Am. Tobacco Co., 110 USPQ 249 (Comm’r Pats. 1956); Copacabana, Inc. v. Breslauer, 101 USPQ 467 (Comm’r Pats. 1954). Juristic persons do not have to be well known to be protected from the registration of a mark that falsely suggests a connection with them. See generally Gavel Club v. Toastmasters Int’l,127 USPQ 88, 94 (TTAB 1960) (noting that §2(a) protection is not limited to large, well known, or nationally recognized institutions). However, there must be a legal successor to assert the rights of a defunct juristic person or otherwise those rights are extinguished when the juristic person becomes bankrupt or ceases to exist without an assignment of interest to another. Pierce-Arrow Soc’y, 2019 USPQ2d 471774, at *6-7 (TTAB 2019) (following In re Wielinski, 49 USPQ2d 1754, 1758 (TTAB 1998), overruled on other grounds, In re WNBA Enters., LLC, 70 USPQ2d 1153 (TTAB 2003)).

Section 45 of the Act, 15 U.S.C. §1127,  also defines "person" to include the United States and its agencies and instrumentalities, as well as any state:

The term "person" also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this Act in the same manner and to the same extent as any nongovernmental entity.

The term "person" also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this Act in the same manner and to the same extent as any non-governmental entity.

It is well settled that the U.S. government is a "person" within the meaning of §2(a). 15 U.S.C.  §1127; FBI v. Societe: "M.Bril & Co.", 172 USPQ 310, 313 (TTAB 1971). Therefore, the common names of, and acronyms for, U.S. government agencies and instrumentalities are considered persons. See In re Peter S. Herrick P.A., 91 USPQ2d 1505, 1506-08 (TTAB 2009) (stating the statutory definition of "person" includes the United States and any agency or instrumentality thereof and concluding that "[t]he only entity the name ‘U.S. Customs Service’ could possibly identify is the government agency" formerly known as the U.S. Customs Service and now known as U.S. Customs and Border Protection); NASA v. Record Chem. Co., 185 USPQ 563, 566 (TTAB 1975) (finding the National Aeronautics and Space Administration (NASA) is a juristic person); FBI, 172 USPQ at 313 (noting the Federal Bureau of Investigation (FBI) is a juristic person).

1203.03(a)(ii)    "Institutions"

The term "institution" has been broadly construed. See In re Shinnecock Smoke Shop, 571 F.3d 1171, 1173, 91 USPQ2d 1218, 1219 (Fed. Cir. 2009) ("[T]he ordinary meaning of ‘institution’ suggests the term is broad enough to include a self-governing Indian nation," quoting Black's Law Dictionary 813, 1133 (8th ed. 2004), which defined "institution" as "[a]n established organization," and defined "organization" as a "body of persons . . . formed for a common purpose"); In re Int’l Watchman, Inc., ___ USPQ2d ___, 2021 TTAB LEXIS 446, at *9-14 (TTAB Nov. 30, 2021) (finding the North Atlantic Treaty Organization, which is an intergovernmental organization and military alliance of the United States and other North American and European countries, "qualifies as an ‘institution’ under Section 2(a)); U.S. Olympic Comm. v. Tempting Brands Neth. B.V., 2021 USPQ2d 164, at *15 (TTAB 2021) ("the record in this case supports the finding previously made by the Board that ‘the entire organization which comprises the Olympic Games, as a whole, qualifies as an ‘institution’ within the meaning of Section 2(a) of the Trademark Act’") (quoting In re Urbano, 51 USPQ2d 1776, 1779 (TTAB 1999)); In re White, 73 USPQ2d 1713, 1718 (TTAB 2004) ("each federally recognized Apache tribe is necessarily either a juristic person or an institution").

In addition to qualifying as a person, United States government agencies and instrumentalities, as identified by their common names and acronyms, also may be considered institutions within the meaning of §2(a). See In re Peter S. Herrick P.A., 91 USPQ2d 1505, 1506 (TTAB 2009) ("Institutions, as used in Section 2(a), include government agencies."); In re Cotter & Co., 228 USPQ 202, 204-05 (TTAB 1985) (finding the United States Military Academy is an institution and West Point or Westpoint "has come to be solely associated with and points uniquely to the United States Military Academy"). The common names of, and acronyms and terms for, United States government programs may also be considered institutions, depending on the evidence of record. See In re N. Am. Free Trade Ass’n, 43 USPQ2d 1282, 1285-86 (TTAB 1997) (finding "NAFTA [the acronym for the North American Free Trade Agreement] is an institution, in the same way that the United Nations is an institution," and noting that the "legislative history . . . indicates that the reference to an ‘institution’ in Section 2(a) was designed to have an expansive scope."); NASA v. Record Chem. Co., 185 USPQ 563, 565 (TTAB 1975) (finding NASA’s Apollo space program is an institution).

Institutions do not have to be large, well known, or "national" to be protected from the registration of a mark that falsely suggests a connection with them. Gavel Club v. Toastmasters Int’l, 127 USPQ 88, 94 (TTAB 1960).

While the §2(a) prohibition against the registration of matter that may falsely suggest a connection with institutions may not be applicable to a particular designation, many names, acronyms, titles, terms, and symbols are protected by other statutes or rules. See TMEP §1205.01 and Appendix C  (setting forth a nonexhaustive list of U.S. statutes protecting designations of certain government agencies and instrumentalities).

1203.03(a)(iii)    "National Symbols"

A "national symbol" is subject matter of unique and special significance that, because of its meaning, appearance, and/or sound, immediately suggests or refers to the country for which it stands. In re Consol. Foods Corp., 187 USPQ 63, 64 (TTAB 1975) (noting national symbols include the bald eagle, Statue of Liberty, designation "Uncle Sam" and the unique human representation thereof, the heraldry and shield designs used in governmental offices, and certain uses of the letters "U.S."). National symbols include the symbols of foreign countries as well as those of the United States. In re Anti-Communist World Freedom Cong., Inc., 161 USPQ 304, 305 (TTAB 1969) .

"National symbols" cannot be equated with the "insignia" of nations, which are prohibited from registration under §2(b).

The Act . . . does not put national symbols on a par with the flag, coat of arms, or other insignia of the United States, which may not in any event be made the subject matter of a trade or service mark. With regard to national symbols the statute provides merely that they shall not be . . . used as falsely to suggest a connection between the holder of the mark and the symbol.

Liberty Mut. Ins. Co. v. Liberty Ins. Co. of Texas, 185 F. Supp. 895, 908, 127 USPQ 312, 323 (E.D. Ark. 1960). See TMEP §1204 regarding insignia.

Trademark Act Section 2(a) does not prohibit registration of marks comprising national symbols; it only prohibits registration of matter that may falsely suggest a connection with them. Liberty Mut. Ins. Co., 185 F. Supp. at 908, 127 USPQ at 323 (finding marks comprising portion of the Statue of Liberty not to falsely suggest a connection with the Statue of Liberty or the United States government, the Court "[a]ssuming without deciding" that the statue is a national symbol).

Some designations have been held to be national symbols within the meaning of §2(a). E.g., In re Anti-Communist World Freedom Cong., 161 USPQ at 304 (holding a representation of a hammer and sickle to be a national symbol of the Union of Soviet Socialist Republics (U.S.S.R.)); In re Nat'l Collection & Credit Control, Inc.,152 USPQ 200, 201 n.2 (TTAB 1966) ("The American or bald eagle with wings extended is a well-known national symbol or emblem of the United States").

Other designations have been held not to be national symbols within the meaning of §2(a). E.g., NASA v. Bully Hill Vineyards, Inc., 3 USPQ2d 1671 (TTAB 1987) (holding SPACE SHUTTLE not to constitute a national symbol on the evidence of record, the Board also finding "shuttle" to be a generic term for a space vehicle or system); Jacobs v. Int'l Multifoods Corp., 211 USPQ 165, 170-71 (TTAB 1981) , aff’d on other grounds, 668 F.2d 1234, 212 USPQ 641 (C.C.P.A. 1982) ("[H]istorical events such as the ‘BOSTON TEA PARTY’ . . ., although undoubtedly associated with the American heritage, do not take on that unique and special significance of a ‘national symbol’ designed to be equated with and associated with a particular country."); In re Mohawk Air Serv. Inc., 196 USPQ 851, 854 (TTAB 1977) (stating MOHAWK is not immediately suggestive of the United States and, therefore, not a national symbol); In re Consol. Foods Corp., 187 USPQ 63 (TTAB 1975) (holding OSS, the acronym for the Office of Strategic Services, not to constitute a national symbol); In re Gen. Mills, Inc., 169 USPQ 244 (TTAB 1971) (finding UNION JACK, which applicant was using on packages of frozen fish marked "English cut cod" and in its restaurant near representations of the British national flag, did not suggest a particular country, the Board noting that it could consider only the matter for which registration was sought).

The name of a country is not a national symbol within the meaning of §2(a) of the Trademark Act nor does use of the name of a country as a mark, by itself, amount to deception or a "false connection" under §2(a). In re Fortune Star Prods. Corp., 217 USPQ 277, 277 (TTAB 1982) (citing In re Sweden Freezer Mfg. Co., 159 USPQ 246, 248-49 (TTAB 1968)).

The common names of, and acronyms for, government agencies and instrumentalities are not considered to be national symbols. In re Consol. Foods, 187 USPQ at 64 (holding OSS, acronym for the Office of Strategic Services, not a national symbol but rather merely designates a particular and long-defunct government agency).

While the prohibition of §2(a) against the registration of matter that may falsely suggest a connection with national symbols may not be applicable to a particular designation, many names, acronyms, titles, terms, and symbols are protected by other statutes or rules. See TMEP §1205.01 and Appendix C.

1203.03(b)    False Suggestion of a Connection

Section 2(a) prohibits the registration of a mark that consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols. See TMEP §1203.03(a)(i) regarding persons, TMEP §1203.03(a)(ii) regarding institutions, TMEP §1203.03(a)(iii) regarding national symbols, and TMEP §1203.03 for information about the legislative history of §2(a).

1203.03(b)(i)    Elements of a §2(a) False Suggestion of a Connection Refusal

To establish that a proposed 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.

Piano Factory Grp., Inc. v. Schiedmayer Celesta GmbH, 11 F.4th 1363, 1377, 2021 USPQ2d 913, at *11 (Fed. Cir. 2021) (citing In re Jackson, 103 USPQ2d 1417, 1419 (TTAB 2012)); U.S. Olympic Comm. v. Tempting Brands Neth. B.V., 2021 USPQ2d 164, at *17-18 (TTAB 2021) (citing Pierce-Arrow Soc’y v. Spintek Filtration, Inc., 2019 USPQ2d 471774, at *4 (TTAB 2019)); see In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *3 (TTAB 2020); In re Pedersen, 109 USPQ 2d 1185, 1188-89 (TTAB 2013); In re Jackson Int’l Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417, 1419 (TTAB 2012); In re Peter S. Herrick, P.A., 91 USPQ2d 1505, 1507 (TTAB 2009); In re MC MC S.r.l., 88 USPQ2d 1378, 1379 (TTAB 2008); Ass’n Pour La Def. et la Promotion de L'Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838, 1842 (TTAB 2007); In re White, 80 USPQ2d 1654, 1658 (TTAB 2006); In re White, 73 USPQ2d 1713, 1718 (TTAB 2004); In re Nuclear Research Corp., 16 USPQ2d 1316, 1317 (TTAB 1990); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985); In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983) (providing foundational principles for the four-part test used to determine false connection).

First element. The term at issue need not be the actual, legal name of the party falsely associated with the applicant’s mark. See, e.g., Hornby v. TJX Cos., 87 USPQ2d 1411, 1417, 1424 (TTAB 2008) (finding TWIGGY to be the nickname of professional model Lesley Hornby); Buffett v. Chi Chi’s, Inc., 226 USPQ at 429-30 (finding MARGARITAVILLE to be the public persona of singer Jimmy Buffett). "[A] nickname or an informal reference, even one created by the public, can qualify as an entity's ‘identity,’ thereby giving rise to a protectable interest." Bos. Athletic Ass'n v. Velocity, LLC, 117 USPQ2d 1492, 1496 (TTAB 2015). A term may also be considered the identity of a person "even if the person has not used that term." In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *4 (citing In re Nieves & Nieves LLC, 113 USPQ2d 1629, 1644 (TTAB 2015); In re Urbano, 51 USPQ2d 1776, 1779 (TTAB 1999)). In addition, the fact that a term identifies both a particular group of people and the language spoken by some of the members of the group is not evidence that it fails to identify the group. In re Pedersen, 109 USPQ 2d at 1190 (rejecting applicant’s argument that, because the term LAKOTA identifies a language, it does not approximate the name or identity of a people or institution).

Second element. The requirement that the proposed mark would be recognized as pointing uniquely and unmistakably to the person or institution does not mean that the term itself must be unique. In re Jackson Int’l Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d at 1419, 1420; Hornby, 87 USPQ2d at 1426. Rather, the question is whether, as used with the goods or services in question, consumers would view the mark as pointing uniquely to the person or institution, or whether they would perceive it to have a different meaning. E.g., Univ. of Notre Dame du Lac, 703 F.2d at 1377, 217 USPQ at 509 (finding NOTRE DAME did not point uniquely and unmistakably to the appellant, the University of Notre Dame in Indiana, because the name identifies a famous religious figure and is used in the names of churches dedicated to this figure such as the Cathedral of Notre Dame in Paris, France); Schiedmayer Celesta GmbH v. Piano Factory Grp., Inc., 2019 USPQ2d 341894, at *7 (TTAB 2019) (quoting In re White, 73 USPQ2d at 1720) (finding SCHIEDMAYER pointed uniquely and unmistakably to petitioner based on evidence that the name had been associated with a family prominent in the keyboard musical instrument industry for hundreds of years and had no other meaning), aff’d, 11 F.4th 1363, 2021 USPQ2d 913 (Fed. Cir. 2021); Hornby, , 87 USPQ2d at 1427 (finding TWIGGY pointed uniquely and unmistakably to petitioner, who was recognized as a famous British model, and that the dictionary meaning of "twiggy" as resembling or abounding in twigs would not be the consumers’ perception of the name for respondent’s children’s clothing).

In addition, unassociated third-party use of a term does not in and of itself establish that that the term does not point uniquely or unmistakably to a particular people or institution. In re Pedersen, 109 USPQ2d at 1196 (finding consumer exposure to third-party use of LAKOTA on products and services unrelated to applicant’s insufficient to show that applicant’s use of LAKOTA does not point uniquely to the Lakota people)); Hornby, 87 USPQ2d at 1427 (finding evidence of third-party registrations showing registration of the term "TWIGGY" for goods unrelated to children’s clothing to have "no probative value").

Third element. A connection with an entity is established when the record establishes a specific endorsement, sponsorship, or the like of the particular goods and services, whether written or implied. In re White, 80 USPQ2d 1654, at 1660-61. In In re Sloppy Joe’s International Inc., 43 USPQ2d 1350, 1353-54 (TTAB 1997) , the Trademark Trial and Appeal Board held that Ernest Hemingway’s friendship with the original owner of applicant’s bar, his frequenting the bar, and his use of the back room as an office did not establish the kind of "connection" that entitled applicant to register a mark consisting in part of a portrait of Hemingway. Rather, a commercial connection, such as an ownership interest or commercial endorsement or sponsorship of applicant’s services would be necessary to entitle the applicant to registration. Id.

If it is unclear whether the person or institution is connected with the goods sold or services performed by the applicant, the examining attorney must make an explicit inquiry under 37 C.F.R. §2.61(b). If the examining attorney independently confirms that the person or institution is connected with the goods sold or services performed by the applicant, a Note to the File must be entered in the record to reflect that no further action is required as to the issue of false suggestion of a connection. See TMEP §710.02.

Fourth element. To establish the fame or reputation of the person or institution under this factor, one is not required to show the fame or reputation of the name "in the entire United States." Ass’n Pour la Defense et la Promotion de L'Oeuvre de Marc Chagall Dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d at 1843, 1844 (finding the evidence sufficiently showed the fame and reputation of Russian artist Marc Chagall where his work had been featured in exhibits in several major U.S. cities in several regions as well as in permanent public displays, including large stained glass windows installed at the United Nations).

Further, the Court of Appeals for the Federal Circuit has stated

[A] party's name may be famous among the particular consumers of those goods and services even if it is not famous among members of the general public. And a party's name may be associated with particular goods such that a false association may be established with goods or services of that type even if it would not have been established with respect to entirely different goods or services.

Piano Factory Grp., Inc., 11 F.4th at 1380, 2021 USPQ2d 913, at *14-15 (citing In re Nieves & Nieves, LLC, 113 USPQ2d at 1633; In re Pedersen, 109 USPQ2d at 1202; U.S. Navy v. U.S. Mfg. Co., 2 USPQ2d 1254, 1260 (TTAB 1987); 7 Louis Altman & Mall Pollack, Callmann on Unfair Competition, Trademarks & Monopolies §26.21, at 26-103-04 (4th ed. 2021)).

Intent. Intent to identify a party or trade on its goodwill is not a required element of a §2(a) claim of false suggestion of an association with such party. S & L Acquisition Co. v. Helene Arpels, Inc., 9 USPQ2d 1221, 1224 (TTAB 1987) ; Consol. Natural Gas Co. v. CNG Fuel Sys., Ltd., 228 USPQ 752, 754 (TTAB 1985) . However, evidence of such an intent could be highly persuasive that the public would make the intended false association. Piano Factory Grp. Inc., 11 F.4th at 1380-81, 2021 USPQ2d 913, at *15 (citing Univ. of Notre Dame du Lac, 703 F.2d at 1377, 217 USPQ at 509; In re Pedersen, 109 USPQ2d at 1202; In re Peter S. Herrick, P.A., 91 USPQ2d at 1509; Ass’n Pour la Defense et la Promotion de L'Oeuvre de Marc Chagall Dite Comite Marc Chagall, 82 USPQ2d at 1843).

Prior user. A refusal on this basis requires, by implication, that the person or institution with which a connection is falsely suggested must be the prior user. In re Nuclear Rsch. Corp., 16 USPQ2d at 1317 (citing In re Mohawk Air Servs., Inc., 196 USPQ 851, 854-55 (TTAB 1977)); see In re Wielinski, 49 USPQ2d 1754, 1758 (TTAB 1998) (citing In re Kayser-Roth Corp., 29 USPQ2d 1379, 1384-85 (TTAB 1993); Kardex Sys., Inc. v. Sistemco N.V., 221 USPQ2d 149, 151 (TTAB 1983)). However, it is not necessary that the prior user ever commercially exploit the name as a trademark or in a manner analogous to trademark use. In re Pedersen, 109 USPQ2d at 1193; see In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *4. A false suggestion of a connection may be found when the party’s right to control the use of its identity is violated, even if there is no juristic entity having the authority to authorize use of the mark. In re Pedersen, 109 USPQ2d at 1193.

1203.03(b)(ii)    Government Agencies and Instrumentalities

Registration of matter that may falsely suggest a connection with a United States government agency or instrumentality is prohibited under §2(a). See TMEP §1203.03(b)(i) (setting out the four-element test). Some names, acronyms, titles, terms, and symbols of United States government agencies or instrumentalities are also protected by separate statute. See TMEP §1205.01 for information about statutorily protected matter and Appendix C  for a nonexhaustive list of United States statutes protecting designations of certain government agencies and instrumentalities. Many of these statutes allow third parties to use the protected matter when authorized by an agency official. This authorization to use, by itself, should not be construed to extend to authorization to register marks that include matter the applicant does not own. See generally TMEP §1201 regarding the ownership requirement. Where it appears from the record that the applicant is not the agency or instrumentality referenced in the mark, but the record suggests an affiliation between the applicant and the referenced agency, the examining attorney must require the applicant to establish its authorization to register the mark by requesting information pursuant to 37 C.F.R. §2.61(b). See TMEP §1201.06(c).

Registration must be refused if the nature of the mark and the nature of the goods or services is such that a United States government agency or instrumentality would be presumed to be the source or sponsorship of the applicant’s goods or services. In re Peter S. Herrick, P.A., 91 USPQ2d 1505, 1507-08 (TTAB 2009) (finding "U.S. CUSTOMS SERVICE" is a close approximation of the former name of the government agency, United States Customs Service, which is now known as the United States Customs and Border Protection but which is still referred to as the U.S. Customs Service by the public and the agency itself, that the seal design in the proposed mark is nearly identical to the seal used by the former United Stated Customs Service, that the only meaning the "U.S. Customs Service" has is to identify the government agency, and that a connection between applicant’s attorney services and the activities performed by the United States Customs and Border Protection would be presumed); In re Nat'l Intelligence Acad., 190 USPQ 570, 572 (TTAB 1976) (stating NATIONAL INTELLIGENCE ACADEMY, for educational and instructional services in intelligence gathering for law enforcement officers, falsely suggests a connection with the United States government since intelligence gathering is a known function of a number of government agencies and "[a] normal outgrowth and development of such activities would be the training of officers in intelligence gathering"); In re Teasdale Packing Co., 137 USPQ 482 (TTAB 1963) (holding U. S. AQUA and design unregistrable under §2(a) on the ground that purchasers of applicant’s canned drinking water would be misled into assuming approval or sponsorship by the United States government in view of the nature of the mark, including a red, white, and blue shield design, and the nature of the goods, the Board noting a program for stocking emergency supplies of water in fallout shelters and the setting of standards for drinking water by United States government agencies).

The record must include evidence showing that the designation in the mark references the agency or instrumentality and that the goods or services are such that a connection with that agency or instrumentality would be presumed, particularly when it is not readily apparent that the wording or acronym in the mark refers to the agency or instrumentality. Compare In re Mohawk Air Serv. Inc., 196 USPQ 851, 855 (TTAB 1977) (holding MOHAWK 298, for airplanes, to not falsely suggest a connection with the U.S. Army and the Army’s use of the term "Mohawk" to identify one of its airplanes, since there was no evidence of record that the Army continuously used the term since 1958, that the public was aware of such use, or that the public would associate "Mohawk" named airplanes with the U.S. Army), with In re U.S. Bicentennial Soc’y, 197 USPQ 905, 906-07 (TTAB 1978) (holding U.S. BICENTENNIAL SOCIETY, for ceremonial swords, to falsely suggest a connection with the American Revolution Bicentennial Commission and the United States government, based on applicant’s claims in the specimen of record and the fact that "swords have historically been presented by grateful sovereigns and governments to persons who have been honored by such gifts and that ceremonial swords are on display in the museum at Mt. Vernon").

Furthermore, the question of the registrability of a mark under §2(a) "is determined in each case by the nature of the goods or services in connection with which the mark is used and the impact of such use on the purchasers of goods or services of this type." NASA v. Record Chemical Co. Inc., 185 USPQ 563, 568 (TTAB 1975) . Thus, the identified goods or services must be scrutinized in the context of the current marketplace to determine whether they are of the type to be offered by United States government agencies and instrumentalities. For instance, if the evidence supports a finding that it is commonplace for government agencies to sell or license the sale of consumer merchandise featuring agency names or acronyms, such as clothing, toys, key chains, and calendars, a false connection with a government agency would be presumed if that agency name or acronym is used in connection with those goods and, therefore, the mark should be refused registration under §2(a).

The §2(a) false suggestion of a connection refusal and the procedures stated above also apply to marks containing names of, and acronyms and terms for, United States government programs (e.g., Medicare or FAFSA), military projects (e.g., BigDog), and quasi-government organizations (e.g., Smithsonian Institution). The examining attorney may also require the applicant to provide additional information about the mark and/or the goods or services, under Trademark Rule 2.61(b). 37 C.F.R. §2.61(b).

Disclaiming the name of, or acronym for, the United States government agency or instrumentality to which the mark refers generally will not overcome the §2(a) refusal. See TMEP §1213.03(a) regarding unregistrable components of marks. If the test for false suggestion of a connection under §2(a) is not met, the examining attorney must still determine whether the applicant is authorized to register the designation in the mark. If, based on the record, the applicant lacks authorization from the government agency or instrumentality to register the mark, the examining attorney must refuse under §§1 and 45 of the Trademark Act. See TMEP §1201.06(c).

1203.03(b)(iii)    False Suggestion of a Connection: Case References

Some designations have been held to falsely suggest a connection to a person or an institution within the meaning of §2(a). E.g., Piano Factory Grp., Inc. v. Schiedmayer Celesta GmbH, ___ F.4th ___, 2021 USPQ2d 913, at 15-16 (Fed. Cir. 2021) (holding SCHIEDMAYER for pianos falsely suggests a conection with the well-known Schiedmayer Celesta GmbH business that has manufactured and sold quality keyboard musical instruments for nearly 300 years); In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218 (Fed. Cir. 2009) (holding SHINNECOCK BRAND FULL FLAVOR and SHINNECOCK BRAND LIGHTS, both for cigarettes, falsely suggest a connection with the Shinnecock Indian Nation); In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786 (TTAB 2020) (holding TRUMP-IT MY PACKAGE OPENER MAKE OPENING PACKAGES GREAT and design and TRUMP-IT MY PACKAGE OPENER and design, both for utility knives, falsely suggest a connection with Donald Trump); In re Jackson Int’l Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417 (TTAB 2012) (holding BENNY GOODMAN COLLECTION THE FINEST QUALITY (stylized) for fragrance and cosmetics falsely suggests a connection with the deceased musician Benny Goodman; the record showed that Benny Goodman’s estate had a business representative that granted people the use of his name and/or persona); In re Peter S. Herrick, P.A., 91 USPQ2d 1505 (TTAB 2009) (holding U.S. CUSTOMS SERVICE and seal design for attorney services falsely suggests a connection with the government agency formerly known as the U.S. Customs Service and now known as the U.S. Customs and Border Protection); Hornby v. TJX Cos., 87 USPQ2d 1411 (TTAB 2008) (holding TWIGGY for children’s clothing falsely suggests a connection with the internationally known British model and actress who was a major celebrity in the late 1960s, finding that she retained a sufficient degree of fame or reputation that a connection would still be presumed by consumers seeing the mark TWIGGY on children’s clothing as of the date on which respondent’s registration issued in 2000); Ass'n Pour La Def. et la Promotion de L'Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838 (TTAB 2007) (holdinig MARC CHAGALL for vodka falsely suggests a connection with the painter Marc Chagall); In re White, 80 USPQ2d 1654 (TTAB 2006) (holding MOHAWK for cigarettes falsely suggests a connection with the federally recognized tribe the St. Regis Band of Mohawk Indians of New York); In re White, 73 USPQ2d 1713 (TTAB 2004) (holding APACHE for cigarettes falsely suggests a connection with the nine federally recognized Apache tribes); In re Urbano, 51 USPQ2d 1776 (TTAB 1999) (holding SYDNEY 2000, used for advertising and business services and communication services, falsely suggests a connection with Olympic Games, since the general public would recognize phrase as referring unambiguously to Olympic Games to be held in Sydney, Australia in 2000; entire organization that comprises Olympic games qualifies as "institution."); In re N. Am. Free Trade Ass’n, 43 USPQ2d 1282 (TTAB 1997) (holding NAFTA, used on "promotion of trade and investment" services, falsely suggests a connection with the North American Free Trade Agreement; NAFTA qualifies as institution because it encompasses treaty, supplemental agreements, and various commissions, committees and offices created by those documents); In re Sloppy Joe’s Int’l Inc., 43 USPQ2d 1350 (TTAB 1997) (holding SLOPPY JOE’S, with design that includes portrait of Ernest Hemingway falsely suggests a connection with deceased writer); In re Sauer, 27 USPQ2d 1073 (TTAB 1993) holding BO BALL for oblong shaped leather ball with white stitching falsely suggests a connection with athlete Bo Jackson, aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994); Bd. of Tr. of Univ. of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986) (granting petition to cancel registration of BAMA, for shoes, slippers, stockings because BAMA pointed uniquely to the University of Alabama and thus falsely suggests a connection with the University); In re Cotter & Co., 228 USPQ 202 (TTAB 1985) (holding WESTPOINT, for shotguns and rifles, falsely suggests a connection with an institution, the U.S. Military Academy); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985) (denying applicant’s motion for summary judgment since evidence of record supported an association of MARGARITAVILLE with the public persona of opposer Jimmy Buffett); In re U.S. Bicentennial Soc'y, 197 USPQ 905 (TTAB 1978) (holding U.S. BICENTENNIAL SOCIETY, for ceremonial swords, falsely suggests a connection with the American Revolution Bicentennial Commission and the U.S. government); In re Nat'l Intelligence Acad., 190 USPQ 570 (TTAB 1976) (holding NATIONAL INTELLIGENCE ACADEMY, for educational and instructional services in intelligence gathering for law enforcement officers, falsely suggests a connection with the U.S. government); In re Nat’l Collection & Credit Control, 152 USPQ 200 (TTAB 1966) (holding the word "national" along with an outline representation of the United States or a representation of an eagle, for collection and credit services, falsely suggests a connection with the U.S. government).

Other designations have been held not to falsely suggest a connection to a person or institution within the meaning of §2(a). E.g., Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1377, 217 USPQ 505, 509 (Fed. Cir. 1983) (holding NOTRE DAME and design, for cheese, not to 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. Thus 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."), aff’g 213 USPQ 594 (TTAB 1982); U.S. Olympic Comm. v. Tempting Brands Neth. B.V., 2021 USPQ2d 164, at *2-3, 22, 32-33 (TTAB 2021) (holding PIERRE DE COUBERTIN for a variety of personal goods, including toiletries, jewelry, and clothing, not to falsely suggest a connection with opposer the U.S. Olympic Committee because, although Coubertin is widely recognized for launching the Olympic movement in the late 19th century, evidence did not show his name pointing uniquely to the USOC or the Olympic movement); Pierce-Arrow Soc’y v. Spintek Filtration, Inc., 2019 USPQ2d 471774, at *6-8 (TTAB 2019) (holding PIERCE-ARROW for automobilies not to falsely suggest a connection with the Pierce-Arrow Society because the evidence did not show the society was a legal successor of the Pierce-Arrow Motor Car Company, the sociey’s preservation efforts of the car made by and protection of the marks of that company did not uniquely point to the society, and the former company and its abandoned trademarks were not famous or had any reputation that transferred to the society); Bos. Athletic Ass'n v. Velocity, LLC, 117 USPQ2d 1492, 1496-99 (TTAB 2016) (oholding MARATHON MONDAY for clothing not to falsely suggest a connection with opposer because the evidence did not establish that MARATHON MONDAY is perceived by the relevant public as a close approximation of the name or identity of opposer, and frequent and various third-party uses of MARATHON MONDAY indicated that the term does not point uniquely and unmistakably to opposer); In re MC MC S.r.l.,88 USPQ2d 1378, 1381 (TTAB 2008) holding MARIA CALLAS for jewelry and other goods not to falsely suggest a connection with Maria Callas, the famous deceased opera singer, her heirs or her estate because the record contained contradictory evidence as to the existence of anyone currently possessing rights in the name "Maria Callas," and resolving doubt in favor of applicant "removes the possibility that we might be denying registration to an applicant based on non-existent rights," and because a person or entity claiming rights in a name or persona has recourse since §2(a) is not time barred); In re L.A. Police Revolver & Athletic Club, Inc., 69 USPQ2d 1630 (TTAB 2004) (holding slogan TO PROTECT AND TO SERVE, used by applicant Los Angeles Police Revolver and Athletic Club, Inc., not to falsely suggest a connection with the Los Angeles Police Department, where evidence showed an actual longstanding commercial connection, publicly acknowledged and endorsed by both parties); Internet Inc. v. Corp. for Nat’l Resch. Initiatives, 38 USPQ2d 1435 (TTAB1996) (holding cancellation petitioners failed to state claim for relief where they had not alleged, and could not reasonably allege, that the term INTERNET points uniquely and unmistakably to their own identity or persona); Ritz Hotel Ltd. v. Ritz Closet Seat Corp., 17 USPQ2d 1466, 1471 (TTAB 1990) (holding RIT-Z in stylized form for toilet seats not to falsely suggest a connection with opposer, where there was no evidence showing a connection between applicant’s mark and opposer corporation, The Ritz Hotel Limited); In re Nuclear Rsch. Corp., 16 USPQ2d 1316 (TTAB 1990) (holding NRC and design, for radiation and chemical agent monitors, electronic testers, and nuclear gauges, not to falsely suggest a connection with the U.S. Nuclear Regulatory Commission in view of applicant’s use of NRC long prior to the inception of that agency); NASA v. Bully Hill Vineyards, Inc., 3 USPQ2d 1671, 1676 (TTAB 1987) (dismissing opposition to the registration of SPACE SHUTTLE for wines and holding "shuttle" to be a generic term for a space vehicle or system; "[w]here a name claimed to be appropriated does not point uniquely and unmistakably to that party’s personality or ‘persona,’ there can be no false suggestion" of connection); In re Mohawk Air Serv. Inc., 196 USPQ 851 (TTAB 1977) (holding MOHAWK 298 not to falsely suggest a connection with the U.S. Army and the Army’s use of the term "Mohawk" to identify one of its airplanes, since there was no evidence that the Army continuously used that term since 1958, the public was aware of such use, or the public would associate "Mohawk" named airplanes with the Army); NASA v. Record Chem. Co., 185 USPQ 563 (TTAB 1975) (dismissing opposition to registrations of APOLLO 8 for moth preventatives and mothproofing agent-air freshener because, while NASA is a juristic person and prior user of the terms APOLLO and APOLLO 8 for its space missions, it is unlikely that the average purchaser of applicant’s goods would assume NASA to be source or sponsorship of the goods or mistakenly believe that the goods were of NASA space exploration technology); FBI v. Societe: "M.Bril & Co.", 172 USPQ 310 (TTAB 1971) (dismissing opposition to registration of FBI FABRICATION BRIL INTERNATIONAL for clothing since it was unreasonable that the public would assume applicant’s goods originated with, were sponsored or endorsed by, or associated with the Federal Bureau of Investigation, finding that "FBI" represents "Fabrication Bril International" and purchasers would see the entire composite mark on the goods and not just "FBI," and noting that both the U.S. government and the Federal Bureau of Investigation are juristic persons); In re Horwitt, 125 USPQ 145, 146 (TTAB 1960) (holding U. S. HEALTH CLUB registrable for vitamin tablets. "Considering both the nature of the mark and the goods, it is concluded that the purchasing public would not be likely to mistakenly assume that the United States Government is operating a health club, that it is distributing vitamins, or that it has approved applicant’s goods."); Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 165 USPQ 459 (S.D.N.Y. 1970) (holding DA VINCI not to falsely suggest a connection with deceased artist Leonardo Da Vinci).