1203.03(c)(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.
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 Cos., 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").
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, 1660-61 (TTAB 2006). 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.
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. In re Nuclear Research, 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, 703 F.2d at 1377, 217 USPQ at 509, aff’g 213 USPQ 594 (TTAB 1982).