1203    Refusal on Basis of Immoral or Scandalous Matter; Deceptive Matter; Matter which May Disparage, Falsely Suggest a Connection, or Bring into Contempt or Disrepute

15 U.S.C. §1052  (Extract)

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it–

  • (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 2(9) of the Uruguay Round Agreements Act) enters into force with respect to the United States.

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The provisions of 15 U.S.C. §1052(a) apply to both the Principal Register and the Supplemental Register.

1203.01   Immoral or Scandalous Matter

Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an absolute bar to the registration of immoral or scandalous matter on either the Principal Register or the Supplemental Register.

Although the words "immoral" and "scandalous" may have somewhat different connotations, case law has included immoral matter in the same category as scandalous matter. See In re McGinley, 660 F.2d 481, 484 n.6, 211 USPQ 668, 673 n.6 (C.C.P.A. 1981), aff’g 206 USPQ 753 (TTAB 1979) ("Because of our holding, infra, that appellant’s mark is ‘scandalous,’ it is unnecessary to consider whether appellant’s mark is ‘immoral.’ We note the dearth of reported trademark decisions in which the term ‘immoral’ has been directly applied.")

The prohibition against the registration of marks that consist of or comprise immoral or scandalous matter was originally enacted as §5(a) of the Trademark Act of 1905, and was reenacted as part of §2(a) of the Act of 1946. There is little legislative history concerning the intent of Congress with regard to the provision; therefore, the term "scandalous" is interpreted by looking to "its ordinary and common meaning." In re Riverbank Canning Co., 95 F.2d 327, 328, 37 USPQ 268, 269 (C.C.P.A. 1938). This may be established by referring to court decisions, decisions of the Trademark Trial and Appeal Board and dictionary definitions. McGinley, 660 F.2d at 485, 211 USPQ at 673.

In affirming a refusal to register a mark as scandalous under §2(a), the Court of Customs and Patent Appeals noted dictionary entries that defined "scandalous" as, inter alia, shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation. McGinley, 660 F.2d at 486, 211 USPQ at 673 (holding scandalous a mark comprising a photograph of a nude, reclining man and woman, kissing and embracing, for a "newsletter devoted to social and interpersonal relationship topics" and for "social club services"). The statutory language "scandalous" has also been considered to encompass matter that is "vulgar," defined as "lacking in taste, indelicate, morally crude." In re Runsdorf, 171 USPQ 443, 444 (TTAB 1971).

The meaning imparted by a mark must be determined in the context of the current attitudes of the day. See In re Mavety Media Grp. Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994) (finding the evidence insufficient to establish that BLACK TAIL, used on adult entertainment magazines, comprises scandalous matter; noting that there were both vulgar and non-vulgar definitions of "tail," and that the record was devoid of evidence demonstrating which of these definitions a substantial composite of the general public would choose in the context of the relevant marketplace); In re Old Glory Condom Corp., 26 USPQ2d 1216 (TTAB 1993) (holding not scandalous OLD GLORY CONDOM CORP and design comprising the representation of a condom decorated with stars and stripes in a manner to suggest the American flag); In re Thomas Laboratories, Inc., 189 USPQ 50, 52 (TTAB 1975) ("[I]t is imperative that fullest consideration be given to the moral values and conduct which contemporary society has deemed to be appropriate and acceptable.")

The determination of whether a mark is scandalous must be made in the context of the relevant marketplace for the goods or services identified in the application, and must be ascertained from the standpoint of not necessarily a majority, but a "substantial composite of the general public." In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1340, 67 USPQ2d 1475, 1477 (Fed. Cir. 2003); McGinley, 660 F.2d at 485, 211 USPQ at 673 ("[T]he Lanham Act does not require, under the rubric of ‘scandalous,’ any inquiry into the specific goods or services not shown in the application itself."); In re Luxuria s.r.o., 100 USPQ2d 1146 (TTAB 2011) (finding a mark consisting of a bottle in the shape of a hand with middle finger extended upwards comprised matter that would be considered vulgar by a substantial composite of the general public); In re Wilcher Corp., 40 USPQ2d 1929 (TTAB 1996) (holding scandalous a mark for restaurant and bar services consisting of words DICK HEADS positioned directly underneath caricature of a human head composed primarily of graphic and readily recognizable representation of male genitalia, as it would be considered offensive by a substantial portion of the public); Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639 (TTAB 1988) (holding scandalous a graphic design of a dog defecating, as applied to polo shirts and T-shirts, given the broad potential audience that may view applicant’s mark in sales establishments and "virtually all public places"); In re Hepperle, 175 USPQ 512 (TTAB 1972) (holding ACAPULCO GOLD not scandalous when used as a mark for suntan lotion even though the words might be a reference to marijuana).

Therefore, to support a refusal on the ground that a proposed mark is immoral or scandalous, the examining attorney must provide evidence that a substantial portion of the general public would consider the mark to be scandalous in the context of contemporary attitudes and the relevant marketplace. Mavety Media, 33 F.3d at 1371-72, 31 USPQ2d at 1925-26. This evidence could include dictionary definitions, newspaper articles, and magazine articles. The examining attorney should not rely solely on an earlier decision holding a term to be scandalous in support of a refusal. The Trademark Trial and Appeal Board has held that an earlier decision is insufficient to warrant the same finding in a future case. In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006) (rejecting examining attorney’s argument that the Board’s 1981 decision in In re Tinseltown, Inc., 212 USPQ 863 (TTAB 1981) finding BULLSHIT to be scandalous is sufficient to warrant the same finding in a later case). Rather, the facts underlying the earlier decision must be looked at to determine, first, whether it has any relevance to the present case, and, if so, whether that earlier finding is equally applicable today, for example, by looking at other evidence such as recent dictionary definitions. Red Bull, 78 USPQ2d at 1381.

Dictionary definitions alone may be sufficient to establish that a proposed mark comprises scandalous matter, where multiple dictionaries, including at least one standard dictionary, all indicate that a word is vulgar, and the applicant’s use of the word is limited to the vulgar meaning of the word. Boulevard Entm't, 334 F.3d at 1341, 67 USPQ2d at 1478 (holding 1-800-JACK-OFF and JACK OFF scandalous, where all dictionary definitions of "jack-off" were considered vulgar); Boston Red Sox Baseball Club Ltd. P’ship v. Sherman, 88 USPQ2d 1581 (TTAB 2008) (sustaining an opposition and finding that SEX ROD was immoral and scandalous under §2(a) based on dictionary definitions designating the term "ROD" as being vulgar, and applicant’s admission that SEX ROD had a sexual connotation); Red Bull, 78 USPQ2d at 1381-82 (finding multiple dictionary definitions indicating BULLSHIT is "obscene," "vulgar," "usually vulgar," "vulgar slang," or "rude slang" constitute a prima facie showing that the term is offensive to the conscience of a substantial composite of the general public).

"Whether applicant intended the mark to be humorous, or even whether some people would actually find it to be humorous, is immaterial." In re Luxuria, s.r.o., 100 USPQ2d at 1149 (quoting Boston Red Sox Baseball Club, 88 USPQ2d at 1588). A refusal is proper if the evidence shows that "the term would be perceived and understood as vulgar by a substantial portion of the purchasing public." Id.

It has been noted that the threshold is lower for what can be described as "scandalous" than for "obscene." Refusal to register immoral or scandalous matter has been found not to abridge First Amendment rights, because no conduct is proscribed and no tangible form of expression is suppressed. Also, the term "scandalous" has been held sufficiently precise to satisfy due process requirements under the Fifth Amendment. McGinley, 660 F.2d at 484-85, 211 USPQ at 672.

The prohibition in §2(a) of the Act against the registration of scandalous matter pertains only to marks that are scandalous. The authority of the Act does not extend to goods that may be scandalous. See In re Madsen, 180 USPQ 334, 335 (TTAB 1973) (holding WEEK-END SEX for magazines not scandalous and observing that whether the magazine contents may be pornographic was not an issue before the Board).

The examining attorney may look to the specimen(s) or other aspects of the record to determine how the mark will be seen in the marketplace. See McGinley, 660 F.2d at 482 n.3, 211 USPQ at 670 n.3 (containing excerpts from appellant’s newsletters pertaining to their subject matter); In re Hershey, 6 USPQ2d 1470, 1472 (TTAB 1988) (finding BIG PECKER BRAND for T-shirts not scandalous and considering the labels that were submitted as specimens in determining the question of how the mark might be perceived. "[T]he inclusion of the bird design would make it less likely that purchasers would attribute any vulgar connotation to the word mark and we note that it is proper to look to the specimens of record to determine connotation or meaning of a mark.")

To ensure consistency in examination with respect to immoral or scandalous matter, when an examining attorney believes, for whatever reason, that a mark may be considered to comprise such matter, the examining attorney must consult with his or her supervisor.

1203.02   Deceptive Matter

Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an absolute bar to the registration of deceptive matter on either the Principal Register or the Supplemental Register. Neither a disclaimer of the deceptive matter nor a claim that it has acquired distinctiveness under §2(f) can obviate a refusal under §2(a) on the ground that the mark consists of or comprises deceptive matter. See Am. Speech-Language-Hearing Ass’n v. Nat'l Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984); In re Charles S. Loeb Pipes, Inc., 190 USPQ 238, 241 (TTAB 1975).

1203.02(a)   Types of Deceptive Marks

A deceptive mark may be comprised of: (1) a single deceptive term; (2) a deceptive term embedded in a composite mark that includes additional non-deceptive wording and/or design elements; (3) a term or a portion of a term that alludes to a deceptive quality, characteristic, function, composition, or use (see Am. Speech-Language-Hearing Ass’n v. Nat'l Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984)); (4) the phonetic equivalent of a deceptive term (see In re Organik Technologies, Inc., 41 USPQ2d 1690, 1694 (TTAB 1997); Tanners' Council of Am., Inc. v. Samsonite Corp., 204 USPQ 150, 154 (TTAB 1979); or (5) the foreign equivalent of any of the above (see, e.g., Palm Bay Imps., v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Although there is no published Board or Federal Circuit decision regarding whether a mark consisting solely of a design can be deceptive, if there is evidence to support such a refusal, it should be issued.

Deceptive marks may include marks that falsely describe the material content of a product (see In re Intex Plastics Corp., 215 USPQ 1045, 1048 (TTAB 1982)) and marks that are geographically deceptive (see Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073, 1076 (TTAB 1988); In re House of Windsor, Inc., 221 USPQ 53, 57 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984)). See TMEP §§1210.05-1210.06(b) regarding geographically deceptive marks.

However, marks containing a term identifying a material, ingredient, or feature should not be refused registration under §2(a) if the mark in its entirety would not be perceived as indicating that the goods contained that material or ingredient. For example, the mark COPY CALF was found not deceptive for wallets and billfolds of synthetic and plastic material made to simulate leather, because it was an obvious play on the expression "copy cat" and suggested to purchasers that the goods were imitations of items made of calf skin. See A. F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459, 460 (TTAB 1962). Note, however, the difference with such marks as TEXHYDE and SOFTHIDE, which were held deceptive as applied to synthetic fabric and imitation leather material, respectively. See Intex Plastics, 215 USPQ at 1048; Tanners' Council of Am., 204 USPQ at 154-55.

In addition, formatives and other grammatical variations of a term may not necessarily be deceptive in relation to the relevant goods. For example, "silky" is defined, inter alia, as "resembling silk." See The American Heritage® Dictionary of the English Language: Fourth Ed. 2000. Thus, a mark containing the term SILKY would not be considered deceptive (but might be unregistrable under §2(e)(1)). Dictionary definitions of such terms should be carefully reviewed to determine the significance the term would have to prospective purchasers. For example, although the term GOLD would be considered deceptive for jewelry not made of gold, the term GOLDEN would not be deceptive.

1203.02(b)   Elements of a §2(a) Deceptiveness Refusal

The Court of Appeals for the Federal Circuit has articulated the following test for whether a mark consists of or comprises deceptive matter:

  • (1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?
  • (2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?
  • (3) If so, is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase?

In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1589 (Fed. Cir. 2009); In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988), aff’g 8 USPQ2d 1790 (TTAB 1987).

1203.02(c)   Distinction between Marks Comprising Deceptive Matter (§2(a)) and Deceptively Misdescriptive Marks (§2(e)(1))

If the first two inquiries set forth by the Federal Circuit in In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988) (i.e., whether a mark is misdescriptive of the goods/services and whether prospective purchasers are likely to believe the misdescription) are answered affirmatively, the mark is deceptively misdescriptive of the goods/services under §2(e)(1). See TMEP §1209.04 regarding deceptively misdescriptive marks.

The third inquiry, whether the misdescription is likely to affect the decision to purchase, distinguishes marks that are deceptive under §2(a) from marks that are deceptively misdescriptive under §2(e)(1). To be deceptively misdescriptive under §2(e)(1), the misdescription must concern a feature that would be relevant to the decision to purchase the goods or use the services. If the misdescription is more than simply a relevant factor that may be considered in purchasing decisions, but is a material factor, the mark would be deceptive under §2(a) of the Trademark Act, 15 U.S.C. §1052(a). See In re Shniberg, 79 USPQ2d 1309, 1313-14 (TTAB 2006). See TMEP §1209.04 regarding establishing deceptive misdescriptiveness and TMEP §1203.02(d) regarding determining materiality.

If it is difficult to determine whether misdescriptive matter would materially affect a decision to purchase, the examining attorney should refuse registration under both §§2(a) and 2(e)(1). See, e.g., Gold Seal Co. v. Weeks, 129 F. Supp. 928, 105 USPQ 407 (D.D.C. 1955), aff’d sub nom. S. C. Johnson & Son, Inc. v. Gold Seal Co., 230 F.2d 832, 108 USPQ 400 (D.C. Cir. 1956) (per curiam), cert. denied, 352 U.S. 829, 111 USPQ 467 (1956), superseded by statute on other grounds as stated in Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc., 525 F.3d 8, 86 USPQ2d 1527, 1532 (D.C. Cir. 2008). See also R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 140 USPQ 276 (C.C.P.A. 1964), and Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073 (TTAB 1988), in which third parties filed oppositions based on both statutory sections. See TMEP §1203.02(e) regarding procedures for issuing deceptiveness refusals under §2(a).

Marks that are deceptive under §2(a) are unregistrable on either the Principal Register or the Supplemental Register, whereas marks that are deceptively misdescriptive under §2(e)(1) may be registrable on the Principal Register with a showing of acquired distinctiveness under §2(f), 15 U.S.C. §1052(f), or on the Supplemental Register, if appropriate.

See TMEP §1210.05(d) regarding the distinction between marks comprising deceptive matter under §2(a) and matter that is primarily geographically deceptively misdescriptive under §2(e)(3).

1203.02(d)   Determining Materiality

To establish a prima facie case of deceptiveness, the examining attorney must provide sufficient evidence that the misdescriptive quality or characteristic would be a material factor in the purchasing decision of a significant portion of the relevant consumers. To do so, the examining attorney must provide evidence that the misdescriptive quality or characteristic would make the product or service more appealing or desirable to prospective purchasers. In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1698-99 (TTAB 1992). A product or service is usually more desirable because of objective standards or criteria that provide an objective inducement to purchase the goods and/or services beyond that of mere personal preference.

1203.02(d)(i)   Objective Criteria

In assessing whether a misdescription would affect the decision to purchase, the following are examples (not a comprehensive list) of the type of objective criteria that should be used to analyze whether a term is a material factor. The evidence may often point to more than one characteristic, thereby strengthening the examining attorney’s prima facie case. For example, the evidence may show that goods deemed "organic" because they are produced in compliance with objective criteria can also be more costly, provide health benefits, and satisfy a social policy of reducing the impact on the environment by utilizing chemical-free growing practices. The evidence also must suffice to indicate that the misdescriptive quality or characteristic would affect the purchasing decision of a significant portion of the relevant consumers. In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 90 USPQ2d 1489, 1493 (Fed. Cir. 2009). Generally, evidence of the objective inducement to purchase supports a presumption that a significant portion of the relevant consumers would likely be deceived.

Superior Quality - The evidence must support a finding that goods or services that contain or feature the misdescriptive term are superior in quality to similar goods and/or services that do not. For example, silk can be shown to be a more luxurious and expensive material because of the difficulty in making silk, its unique feel, and its breathability. Similarly, cedar wood can be shown to have superior durability and resistance to decay.

Enhanced Performance or Function - The evidence must support a finding that goods possessing the characteristic or feature at issue are superior to those that do not. For example, certain wood species are naturally resistant to termite attack or may be more durable than others. There might also be evidence of an increasing interest in reducing the potential leaching of chemicals from treated wood into the environment.

Difference in Price - Evidence of a price differential between items that do and those that do not possess the feature or characteristic described by the misdescriptive term may be enough to support a §2(a) refusal, depending upon the nature of the goods or services. It is also important to remember that because a difference in price is relative to the goods and/or services in a particular industry, a particular term may be deceptive for goods and services that are not typically thought of as luxury items.

Health Benefit - The evidence must establish a belief that the feature or characteristic provides a health benefit.

Religious Practice or Social Policy - The evidence must show that the religious practice or social policy has definable recognized criteria for compliance in order to support a finding of deceptiveness when the criteria are not adhered to by the applicant. For example, a body of Jewish law deals with what foods can and cannot be eaten and how those foods must be prepared and eaten. The term "kosher" refers to food prepared in accordance with these standards as well as to the selling or serving of such food. See The American Heritage® Dictionary of the English Language: Fourth Ed. 2000. Another example is the term "vegan," which is defined as someone who eats plant products only and who uses no products derived from animals, such as fur or leather. Id.

The evidence necessary to establish deceptiveness can come from the same sources used to show that the term is misdescriptive. Internet searches that combine the deceptive term with terms such as "desirable," "superior," "premium," "better quality," "sought after," "more expensive," or "established standards" may be useful in seeking evidence to support the second and third prongs of the test.

Applicant’s own advertising - in the form of specimens, brochures, web pages, press releases, or product and service information sheets - may provide the best evidence of deceptiveness. Moreover, the examining attorney should make of record any instances where the applicant attempts to benefit from the potentially deceptive term and where the advertising includes false assertions related to the deceptive wording. Although not a requirement for a deceptive refusal, proof of an actual intent to deceive may be considered strong evidence of deceptiveness.

1203.02(d)(ii)   Mere Personal Preference

The types of objective criteria discussed above can be contrasted with mere personal preferences for which the requisite evidentiary support generally cannot be found to establish materiality. For example, SPEARMINT for gum, LAVENDER for dish soap, and BLUE for bicycles refer to flavor, scent, and color features that, in those contexts, most likely reflect mere personal preferences which would not be considered material for purposes of a deceptiveness refusal.

Similarly, personal preferences regarding types of cuisine served at restaurants (e.g., SEAFOOD or PIZZA) generally do not establish materiality absent evidence that the type of cuisine meets some objective criteria more in line with those listed above, such as for VEGAN or KOSHER.

Whether the requisite evidentiary support can be found to establish that the use of such terms in connection with goods/services that do not contain or feature the characteristic is deceptively misdescriptive under §2(e)(1) must be determined on a case-by-case basis.

1203.02(e)   Procedures for Issuing §2(a) Deceptive Refusals

1203.02(e)(i)   When the Mark is Clearly Misdescriptive

If there is evidence in the record clearly indicating that the mark or a term(s) in the mark is misdescriptive (e.g., the specimen or language in the identification indicates that the goods/services do not have the relevant feature or characteristic), the examining attorney must determine whether the misdescription is believable and material and do the following:

  • If the misdescription would not be believable, no refusal under either §2(a) or §2(e)(1) should be made. If the application is otherwise in condition for publication, approve the mark for publication. Otherwise, issue an Office action containing all other relevant refusals and/or requirements.
  • If the misdescription would be believable, but would not be material, issue a refusal under §2(e)(1) as deceptively misdescriptive (or disclaimer requirement if appropriate, i.e., if the term at issue is not part of a unitary expression), with supporting evidence, and all other relevant refusals and/or requirements.
  • If the misdescription would be believable and material, issue a deceptiveness refusal under §2(a) with supporting evidence, an alternative refusal under §2(e)(1) as deceptively misdescriptive (or disclaimer requirement if appropriate), and all other relevant refusals and/or requirements.

1203.02(e)(ii)   When It is Not Clear Whether the Mark is Misdescriptive

When a mark comprises or contains descriptive wording, but it is not clear whether the goods/services possess the relevant feature or characteristic, the examining attorney must first determine whether such feature or characteristic would be believable and material to the decision to purchase.

If the goods possess the relevant feature or characteristic and the feature or characteristic referenced by the mark would be believable and material, the identification must include the feature or characteristic in order to resolve the ambiguity between the mark and the identification of goods/services. The identification must be amended even if the record indicates elsewhere that the goods/services contain the feature or characteristic. Therefore, if the application could otherwise be put in condition for approval for publication by an examiner’s amendment (see TMEP §707), to expedite prosecution, the examining attorney should:

  • Attempt to contact the applicant to obtain authorization for a disclaimer and an amendment to the identification to include the feature or characteristic, and for any other amendments that would put the application in condition for approval for publication.
  • If the applicant states that the goods/services do not possess the feature or characteristic, the examining attorney must so indicate in a Note to the File entered in the record, and must then issue a refusal under §2(e)(1) as deceptively misdescriptive (if believable but not material), or disclaimer requirement if appropriate, or a refusal under §2(a) as deceptive (if believable and material) and an alternative refusal under §2(e)(1), or disclaimer requirement if appropriate, as deceptively misdescriptive, and make all other relevant requirements.
  • To ensure the completeness of the record in the event of an appeal, any Office action issued must also include an information request under 37 C.F.R. §2.61(b), asking whether the goods/services possess the feature or characteristic.

If the examining attorney is unable to reach the applicant or cannot obtain authorization for an examiner’s amendment, or if an Office action is otherwise necessary to make substantive refusals or requirements that cannot be satisfied by examiner’s amendment, the examining attorney must:

  • Issue a refusal under §2(e)(1) as descriptive (or a requirement for a disclaimer, if appropriate), based on the presumption that the goods/services possess the feature or characteristic, and a requirement that the applicant amend the identification to include the feature or characteristic, if accurate; and
  • If the misdescription would be believable and material, issue an alternative refusal under §2(a) as deceptive, based on the presumption that the goods/services do not possess the relevant feature or characteristic, and supported by evidence; and
  • Issue an alternative refusal under §2(e)(1) as deceptively misdescriptive, or disclaimer requirement if appropriate, based on the presumption that the goods/services do not possess the relevant feature or characteristic (the presumption is made even if the record indicates that the goods/services contain the feature because the identification does not include the feature); and
  • Issue any other relevant refusals and requirements; and
  • Issue an information request under 37 C.F.R. §2.61(b), asking whether the goods/services possess the feature or characteristic. This written request is made to ensure the completeness of the record in the event of an appeal.

See, e.g., In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) (holding NORMANDIE CAMEMBERT primarily geographically descriptive or, in the alternative, primarily geographically deceptively misdescriptive for cheese; the applicant failed to respond to a 37 C.F.R. §2.61(b) information request as to the origin of the goods).

1203.02(f)   Responding to a §2(a) Deceptiveness Refusal

1203.02(f)(i)   Amending the Identification of Goods or Services

If the applicant amends the identification to include the potentially deceptive term, the USPTO will rely on the presumption that the goods contain a sufficient amount of the material to obviate deceptiveness; there is no requirement to substantiate the amount or percentage of the material or feature in the goods. Thus, the applicant may amend "ties" to "silk ties," "milk and cheese" to "organic milk and cheese," and "jewelry" to "gold jewelry" or to "jewelry made in whole or significant part of gold."

The Office construes the wording "made in significant part of" as indicating that the goods contain a sufficient amount of the named ingredient/material composition to meet the standard for use of the term in the relevant industry. In the case of "coats made in significant part of leather," such wording would be construed to mean that the "coats" contain a sufficient amount of leather to be called "leather coats" in the relevant industry. However, the wording "coats made in part of leather" is not acceptable because, although the goods may contain some leather, it may not be an amount sufficient for the goods to be called "leather coats" in the relevant industry.

Note, however, that amending the identification to exclude goods made from the named ingredient or material composition will not avoid or overcome a deceptiveness refusal.

Amending an identification of services to add "featuring" or "including" a material term (e.g., "restaurants featuring organic cuisine" and "retail furniture stores including leather furniture") generally is sufficient to obviate deceptiveness. For example, as long as the identification indicates that the restaurant provides organic cuisine, or the furniture store sells leather furniture, there is no deception even if other types of food or furniture are also available.

1203.02(f)(ii)   Other Arguments

Applicants may attempt to overcome a §2(a) refusal by providing evidence that applicant’s advertising, or other means, would make consumers aware of the misdescription. Neither evidence regarding advertising, labeling, or extent of use, nor information found on the specimens, can negate the misdescriptiveness with regard to use of the mark in relation to the goods or services. In addition, an applicant’s anecdotal or past practices and "explanatory statements in advertising or on labels which purchasers may or may not note and which may or may not always be provided" are of little value in the deceptiveness analysis. See In re Budge Mfg. Co., 857 F.2d 773, 775-76, 8 USPQ2d 1259, 1261 (Fed. Cir. 1988).

However, in some cases, the applicant may be able to provide credible evidence that consumers would not expect goods sold under a certain mark to actually consist of or contain the feature or characteristic named in the mark. See, e.g., In re Robert Simmons, Inc., 192 USPQ 331 (TTAB 1976)(holding that WHITE SABLE is not deceptive on artist's paint brushes).

The argument that there is no deception because consumers will immediately discern the true nature of the goods and/or services when they encounter them is not persuasive. Deception can attach prior to seeing or encountering the goods or services, for example, based on advertising over the radio or Internet or via word of mouth. See In re ALP of S. Beach, Inc., 79 USPQ2d 1009, 1014 (TTAB 2006).

As noted above, marks that are deceptive under §2(a) are never registrable on either the Principal Register, even under §2(f) or the Supplemental Register. However, applicants may present evidence of a similar nature to what is often submitted for acquired distinctiveness, such as declarations regarding how the mark is perceived by consumers, as rebuttal evidence to the prima facie case, in an effort to overcome one or all of the prongs of the §2(a) test. See In re Woolrich Woolen Mills Inc., 13 USPQ2d 1235, 1238 (TTAB 1989). Note that merely relying on the length of use, without providing other information or evidence, would never be sufficient to overcome a §2(a) refusal.

The fact that only those knowledgeable in the relevant trade, and not average purchasers, would be deceived does not preclude a finding that a mark comprises deceptive matter. In re House of Windsor, Inc., 223 USPQ 191, 192 (TTAB 1984).

1203.02(g)   Deceptive Matter: Case References

In the following cases, proposed marks were determined to be deceptive, under §2(a): In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988), aff’g 8 USPQ2d 1790 (TTAB 1987) (holding LOVEE LAMB deceptive for seat covers not made of lambskin); In re E5 LLC, 103 USPQ2d 1578 (TTAB 2012) (holding a mark consisting of the alpha symbol and letters "CU" deceptive for dietary supplements not containing copper, a common ingredient in dietary supplements, which evidence showed is referred to as CU); In re ALP of S. Beach Inc., 79 USPQ2d 1009 (TTAB 2006) (CAFETERIA (stylized) held deceptive as used in connection with "restaurants providing full service to sit-down patrons, excluding cafeteria-style restaurants"); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002) (holding SUPER SILK deceptive for "clothing, namely dress shirts and sport shirts made of silk-like fabric"); In re Organik Technologies, Inc., 41 USPQ2d 1690 (TTAB 1997) (holding ORGANIK deceptive for clothing and textiles made from cotton that is neither from an organically grown plant nor free of chemical processing or treatment, notwithstanding applicant’s assertions that the goods are manufactured by a process that avoids the use of chemical bleaches, because the identification of goods was broad enough to include textiles and clothing manufactured with chemical processes or dyes); In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992) (holding LONDON LONDON deceptive for clothing having no connection with London); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989) (holding PERRY NEW YORK and design of New York City skyline deceptive for clothing originating in North Carolina, in view of the renown of New York City in the apparel industry); Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073, 1075 (TTAB 1988) (holding GOLDENER TROPFEN deceptive for wines, in view of evidence of the international renown of the Goldtropfchen vineyard of West Germany, the Board finding that the purchasing public would be likely to think, mistakenly, that applicant’s wines were produced from grapes grown there in accordance with German wine laws and regulations); Bureau Nat’l Interprofessionnel Du Cognac v. Int'l Better Drinks Corp., 6 USPQ2d 1610, 1616 (TTAB 1988) (holding COLAGNAC deceptive for cola-flavored liqueur containing Spanish brandy, the Board concluding that purchasers were likely to believe that applicant’s goods contained COGNAC brandy); In re Shapely, Inc., 231 USPQ 72 (TTAB 1986) (holding SILKEASE deceptive as applied to clothing not made of silk); In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984) (holding BAHIA deceptive as applied to cigars having no connection with the Bahia province of Brazil, the record indicating that tobacco and cigars are important products in the Bahia region); Evans Prods. Co. v. Boise Cascade Corp., 218 USPQ 160 (TTAB 1983) (holding CEDAR RIDGE deceptive for embossed hardboard siding not made of cedar); In re Intex Plastics Corp., 215 USPQ 1045 (TTAB 1982) (holding TEXHYDE deceptive as applied to synthetic fabric for use in the manufacture of furniture, upholstery, luggage, and the like); Tanners’ Council of Am., Inc. v. Samsonite Corp., 204 USPQ 150 (TTAB 1979) (holding SOFTHIDE deceptive for imitation leather material); In re Salem China Co., 157 USPQ 600 (TTAB 1968) (holding AMERICAN LIMOGES, used on dinnerware that was neither made in Limoges, France, nor made from Limoges clay, deceptive because of the association of Limoges with fine quality china); Co. of Cutlers of Hallamshire in the Cnty. of York v. Regent-Sheffield, Ltd., 155 USPQ 597 (TTAB 1967) (holding SHEFFIELD, used on cutlery not made in Sheffield, England, deceptive because of the renowned status of Sheffield in relation to cutlery); In re U.S. Plywood Corp., 138 USPQ 403 (TTAB 1963) (holding IVORY WOOD, for lumber and timber products, deceptive since the goods were not made of ivorywood nor did they contain an ivorywood pattern).

Marks were found not to be deceptive in the following cases: Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487 (TTAB 1990) (holding PARK AVENUE neither deceptive nor geographically deceptively misdescriptive as applied to applicant’s cigarettes and smoking tobacco, the Board finding no goods/place association between Park Avenue in New York City, on which opposer’s world headquarters was located, and tobacco products); In re Woolrich Woolen Mills Inc., 13 USPQ2d 1235 (TTAB 1989) (holding WOOLRICH for clothing not made of wool not to be deceptive under §2(a)); In re Fortune Star Prods. Corp., 217 USPQ 277 (TTAB 1982) (holding NIPPON, for radios, televisions, and the like, not deceptive in relation to the goods because, although the applicant was an American firm, the goods were actually made in Japan); In re Sweden Freezer Mfg. Co., 159 USPQ 246 (TTAB 1968) (holding SWEDEN and design, for which registration was sought under §2(f) for external artificial kidney units, not deceptive, the Board finding the case to be in the category "where a geographical trademark may involve a degree of untruth but the deception may be perfectly innocent, harmless or negligible"); A. F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459 (TTAB 1962) (holding COPY CALF, for wallets and billfolds of synthetic and plastic material made to simulate leather, not deceptive, the Board noting that the mark, as an obvious play on the expression "copy cat," suggested to purchasers that the goods were imitations of items made of calf skin).

1203.03   Matter That May Disparage, Falsely Suggest a Connection, or Bring into Contempt or Disrepute

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, does any of the following: (1) disparages them; (2) falsely suggests a connection with them; (3) brings them into contempt; or (4) brings them into disrepute.

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 Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-76, 217 USPQ 505, 508-09 (Fed. Cir. 1983), 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 (footnote omitted). 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." 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." 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 to prevent the unauthorized use of the persona of a person or institution and not to protect the public. In re MC MC S.r.l., 88 USPQ2d 1378, 1380 (TTAB 2008) (quoting Bridgestone/Firestone Research Inc. v. Auto. Club De L’Quest De La France, 245 F.3d 13595, 58 USPQ2d 1460 (Fed. Cir. 2001)).

See TMEP §§1203.03(c) and 1203.03(d) regarding disparagement, bringing into contempt, and bringing into disrepute, and TMEP §§1203.03(e) and 1203.03(f) 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)   "Persons" Defined

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 "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.

The term "persons" in §2(a) refers to real persons, not fictitious characters. In addition to natural persons, it includes juristic persons, i.e., 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).

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. 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 connection with deceased artist Leonardo Da Vinci); In re MC MC S.r.l., 88 USPQ2d 1378 (TTAB 2008 (holding MARIA CALLAS did not falsely suggest a connection with deceased opera singer Maria Callas). See TMEP §1203.03(e).

A juristic person’s rights under §2(a) are extinguished when the juristic person ceases to exist. In re Wielinski, 49 USPQ2d 1754, 1758 (TTAB 1998) (overruled on other grounds, In re WNBA Enter., LLC, 70 USPQ2d 1153 (TTAB 2003)).

Juristic persons or institutions do not have to be well known to be protected from the registration of a mark that falsely suggests a connection with or disparages them, or brings them into contempt or disrepute. Gavel Club v. Toastmasters Int’l, 127 USPQ 88, 94 (TTAB 1960).

It is well settled that the United States Government is a juristic person. See NASA v. Record Chem. Co., 185 USPQ 563, 566 (TTAB 1975), and cases cited therein.

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. Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 430 (TTAB 1985) (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").

1203.03(b)   "National Symbols" Defined

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, American flag, Presidential symbol, designation "Uncle Sam" and the unique human representation thereof, and the heraldry and shield designs used in governmental offices). 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).

The Trademark Act does not prohibit registration of marks comprising national symbols; it only prohibits registration of matter that may disparage national symbols, falsely suggest a connection with them, or hold them up to contempt or disrepute. Liberty Mut. Ins. Co. v. Liberty Ins. Co. of Texas, 185 F. Supp. 895, 908, 127 USPQ 312, 323 (E.D. Ark. 1960) (finding marks comprising portion of the Statue of Liberty not to disparage, bring into contempt or disrepute, or 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).

Designations have been held to be national symbols within the meaning of §2(a) in the following cases: In re Anti-Communist World Freedom Cong., Inc., 161 USPQ 304 (TTAB 1969) (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"); 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).

Designations have been held not to be national symbols in the following cases: W. H. Snyder & Sons, Inc. v. Ladd, 227 F. Supp. 185, 140 USPQ 647 (D.D.C. 1964) (holding HOUSE OF WINDSOR not to be a national symbol of England, but merely the name of its present reigning family); 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 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); In re Horwitt, 125 USPQ 145, 146 (TTAB 1960) (finding 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.").

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

The acronyms for, and names of, government agencies and bureaus are not considered to be national symbols. Consol. Foods Corp., 187 USPQ at 64 (OSS, acronym for the Office of Strategic Services, held not to be a national symbol, but merely to designate a particular (and long defunct) government agency, the Board contrasting national symbols with names and acronyms of government agencies: "’National symbols’ ... are more enduring in time, ... and immediately conjure up the image of the country as a whole. Symbols of a country take on a special meaning and significance and are not so numerous as to dilute the special meaning and significance that each has.")

"National symbols" cannot be equated with the "insignia" of nations. As noted in Liberty Mut. Ins. Co., 185 F. Supp. at 908, 127 USPQ at 323:

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 disparaged or held up to contempt or disrepute, and shall not be used as falsely to suggest a connection between the holder of the mark and the symbol.

See TMEP §1204 regarding insignia.

While the prohibition of §2(a) against the registration of matter that may disparage or falsely suggest a connection with national symbols, or bring them into contempt or disrepute, 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.

1203.03(c)   Disparagement, Bringing into Contempt, and Bringing into Disrepute

Section 2(a) prohibits the registration of a mark that consists of or comprises matter that may disparage, or bring into contempt or disrepute, persons, institutions, beliefs, or national symbols. See TMEP §1203.03(a) regarding persons, and TMEP §1203.03(b) regarding national symbols.

In sustaining an opposition on this ground, the Trademark Trial and Appeal Board stated as follows:

Disparagement is essentially a violation of one’s right of privacy – the right to be "let alone" from contempt or ridicule. See, Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831, 218 USPQ 1 (6th Cir. 1983). It has been defined as the publication of a statement which the publisher intends to be understood, or which the recipient reasonably should understand, as tending "to cast doubt upon the quality of another’s land, chattels, or intangible things." Restatement (Second) of Torts §629 (1977).

Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639 (TTAB 1988).

The Board applies a two-part test in determining whether a proposed mark is disparaging:

  • (1) What is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and
  • (2) If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.

See In re Lebanese Arak Corp., 94 USPQ2d 1215, 217 (TTAB 2010); In re Squaw Valley Dev. Co., 80 USPQ2d 1264, 1267 (TTAB 2006); Order Sons of Italy in Am. v. The Memphis Mafia, Inc., 52 USPQ2d 1364, 1368 (TTAB 1999); Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1740-41 (TTAB 1999), rev’d on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003), remanded on other grounds, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), and aff'd, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir.2009), cert. denied, 130 S. Ct. 631 (2009).

The question of disparagement must be considered in relation to the goods or services identified in the application. In Squaw Valley, the terms SQUAW and SQUAW ONE were found to be disparaging when used in connection with clothing in Class 25 and retail store services in the field of sporting goods and equipment and clothing in Class 35, because the likely meaning of "Squaw" is an American Indian woman or wife, and the examining attorney’s evidence established prima facie that a substantial composite of Native Americans would consider the term to be offensive. However, these terms were found not to be disparaging when used in connection with ski-related equipment in Class 28, because the likely meaning of "Squaw" in relation to these goods was deemed to be applicant’s Squaw Valley ski resort. In re Squaw Valley Dev., 80 USPQ2d at 1276-77, 1279, 1282.

In an ex parte case, the examining attorney must make a prima facie showing that a substantial composite of the referenced group would find the proposed mark, as used on or in connection with the relevant goods or services, to be disparaging. Lebanese Arak, 94 USPQ2d at 1218, citing In re Heeb Media LLC, 89 USPQ2d 1071, 1074 (TTAB 2008). In Lebanese Arak, the Board clarified that when the application of a mark to a product would offend the sensibilities of an ethnic or religious group, the proper ground for refusal is that the matter is disparaging to the members of that group. Lebanese Arak, 94 USPQ2d at 1217. Moreover, when religious beliefs or tenets are involved, the proper focus is on the group of persons that adhere to those beliefs or tenets. Id. The prima facie showing shifts the burden to applicant for rebuttal. Squaw Valley, 80 USPQ2d at 1271.

1203.03(d)   Disparagement, Bringing into Contempt, and Bringing into Disrepute: Case References

See In re Lebanese Arak Corp., 94 USPQ2d 1215 (TTAB 2010) (finding KHORAN for wines to be disparaging because the public, in general, and Muslim Americans, in particular, would regard the mark as referring to the holy text of Islam, and given that Islamic authorities view alcohol as a prohibited substance, Muslims would find KHORAN used for wine as disparaging to themselves, their religion, and their beliefs); In re Heeb Media LLC, 89 USPQ2d 1071 (TTAB 2008) (finding HEEB for clothing and entertainment services to be disparaging since HEEB means a Jewish person, dictionary definitions unanimously support the derogatory nature of HEEB, evidence of record supports that a substantial composite of the referenced group, i.e., the Jewish community, will perceive HEEB as disparaging, and HEEB has no other meaning in relation to clothing or entertainment services); Boston Red Sox Baseball Club Ltd. P'ship v. Sherman, 88 USPQ2d 1581 (TTAB 2008) (finding SEX ROD to be disparaging because it is sexually vulgar and offensive and the public will associate it with opposer’s mark RED SOX); In re Squaw Valley Dev. Co., 80 USPQ2d 1264 (TTAB 2006) (finding SQUAW and SQUAW ONE to be disparaging when used in connection with clothing in Class 25 and retail store services in the field of sporting goods and equipment and clothing in Class 35, because the likely meaning of "Squaw" in relation to these goods/services is an American Indian woman or wife, and the examining attorney’s evidence established prima facie that a substantial composite of Native Americans would consider the term to be offensive; however, these terms were found not to be disparaging when used in connection with ski-related equipment in Class 28, because the likely meaning of "Squaw" in relation to these goods was deemed to be applicant's Squaw Valley ski resort); Boswell v. Mavety Media Grp. Ltd., 52 USPQ2d 1600 (TTAB 1999) (finding BLACK TAIL used on adult entertainment magazines, not to be disparaging of women in general, or African-American women in particular, nor to bring those groups into contempt or disrepute); Order Sons of Italy in Am. v. Memphis Mafia Inc., 52 USPQ2d 1364 (TTAB 1999) (finding THE MEMPHIS MAFIA for entertainment services not to be matter that disparages Italian-Americans or bring them into contempt or disrepute); In re In Over Our Heads Inc., 16 USPQ2d 1653, 1654 (TTAB 1990) (finding MOONIES and design incorporating a "buttocks caricature," for dolls whose pants can be dropped, not to be disparaging matter that is unregistrable under §2(a), the Board finding that the mark "would, when used on a doll, most likely be perceived as indicating that the doll ‘moons,’ and would not be perceived as referencing members of The Unification Church."); Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639-40 (TTAB 1988) (finding design of dog defecating, for clothing, to disparage, and bring into contempt or disrepute, opposer’s running dog symbol, the Board finding the evidence of record "sufficient to show prima facie that this design [the running dog symbol] is, in effect, an alter ego of opposer which points uniquely and unmistakably to opposer’s persona."); In re Anti-Communist World Freedom Cong., Inc., 161 USPQ 304 (TTAB 1969) (holding design of an "X" superimposed over a hammer and sickle to disparage, and hold in contempt and disrepute, a national symbol of the U.S.S.R.).

1203.03(e)   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) regarding persons, TMEP §1203.03(b) regarding national symbols, and TMEP §1203.03 for information about the legislative history of §2(a).

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. 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); Association 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 current four-part test used to determine the existence of a false connection).

The term "institution" has been broadly construed. See In re Shinnecock Smoke Shop, 571 F.3d 1171, 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 defines "institution" as "[a]n established organization," and defines "organization" as a "body of persons ... formed for a common purpose"); In re White, 73 USPQ2d 1713, 1718 (TTAB 2004) ("each federally recognized Apache tribe is necessarily either a juristic person or an institution"); In re Urbano, 51 USPQ2d 1776, 1779 (TTAB 1999) ("[T]he 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"); In re N. Am. Free Trade Ass’n, 43 USPQ2d 1282, 1285-86 (TTAB 1997) (finding that the "NAFTA is an institution, in the same way that the United Nations is an institution," the Board noted that the "legislative history ... indicates that the reference to an ‘institution’ in Section 2(a) was designed to have an expansive scope.").

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. Rather, the question is whether, as used on the goods or services in question, consumers would view the mark as pointing uniquely to petitioner, or whether they would perceive it to have a different meaning. Hornby v. TJX Companies, Inc., 87 USPQ2d 1411, 1427 (TTAB 2008) (in granting the petition to cancel registration of the mark TWIGGY, Board found that, at the time of registration in 2000, the mark TWIGGY on children’s clothing would be recognized as pointing uniquely and unmistakably to petitioner, who was recognized as a famous British model, and that consumers would presume an association with petitioner; Board also found that evidence of third-party registrations showing registration of the term "TWIGGY" for goods unrelated to children’s clothing to have "no probative value").

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…. In order to possess rights, such person, or someone to whom those rights have been transferred, must exist." In re MC MC S.r.l., 88 USPQ2d 1378, 1380 (TTAB 2008) (quoting In re Wielinski, 49 USPQ2d 1754, 1758 (TTAB 1998) (overruled on other grounds by In re WNBA Enter., LLC, 70 USPQ2d 1153 (TTAB 2003)); see Jackson Int'l Trading Co., 103 USPQ2d at 1421. 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." Id. Any doubt regarding the existence of heirs or successors with such rights must be resolved in favor of the applicant. MC MC S.r.l., 88 USPQ2d at 1381.

In In re Sloppy Joe’s Int’l 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.; White, 80 USPQ2d at 1660-61 ("there must be a specific endorsement, sponsorship or the like of the particular goods and services, whether written or implied").

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).

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. Nuclear Research Corp., 16 USPQ2d at 1317; In re Mohawk Air Servs. Inc., 196 USPQ 851, 854-55 (TTAB 1977).

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. 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), aff’g 213 USPQ 594 (TTAB 1982).

1203.03(f)   False Suggestion of a Connection: Case References

See 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 Sauer, 27 USPQ2d 1073 (TTAB 1993), aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994) (finding registration of BO BALL for oblong shaped leather ball with white stitching properly refused under §2(a), since use of "Bo" would be recognized by purchasers as reference to football and baseball player Bo Jackson, and there was no connection between Jackson and applicant); 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), aff’g 213 USPQ 594 (TTAB 1982) (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."); In re Jackson Int'l Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417 (TTAB 2012) (affirming §2(a) refusal to register the mark BENNY GOODMAN COLLECTION THE FINEST QUALITY (stylized) for fragrance and cosmetics because the mark falsely suggests a connection with the deceased musician Benny Goodman; the record showed that Benny Goodman’s estate has a business representative that grants people the use of his name and/or persona); In re Peter S. Herrick, P.A., 91 USPQ2d 1505 (TTAB 2009) (Board affirmed §2(a) refusal, finding that "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 MC MC S.r.l., 88 USPQ2d 1378, 1381 (TTAB 2008) (reversing §2(a) refusal of MARIA CALLAS for jewelry and other goods, 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); Hornby v. TJX Companies, Inc., 87 USPQ2d 1411 (TTAB 2008) (affirming refusal of registration of TWIGGY for children’s clothing, on the ground that it would falsely suggest 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); In re White, 80 USPQ2d 1654 (TTAB 2006) (affirming refusal of MOHAWK for cigarettes under §2(a), on the ground that it would falsely suggest 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 Los Angeles 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., does not 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); In re Urbano, 51 USPQ2d 1776 (TTAB 1999) (holding SYDNEY 2000, used for advertising and business services and communication services, falsely suggests connection with Olympic Games, since 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 connection with 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 use of mark SLOPPY JOE’S, with design that includes portrait of Ernest Hemingway, falsely suggests connection with deceased writer); Internet Inc. v. Corp. for Nat’l Research Initiatives, 38 USPQ2d 1435 (TTAB 1996) (holding cancellation petitioners failed to state claim for relief where they have not alleged, and cannot 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, the Board observing that there was "no evidence of record directed to showing a connection of applicant’s mark with opposer corporation, The Ritz Hotel Limited"); In re Nuclear Research 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 finding "shuttle" to be a generic term for a space vehicle or system. "Where 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."); 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, socks, and insoles, and finding that the evidence of record indicated that BAMA points 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, to falsely suggest a connection with an institution, the United States Military Academy). For examples of findings of false suggestion of a connection prior to the decision of the Court of Appeals for the Federal Circuit in Notre Dame, 703 F.2d 1372, 217 USPQ 505, see In re U.S. Bicentennial Society, 197 USPQ 905 (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); 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, to falsely suggest a connection with the United States government).