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 Trademark Act §2(a). 15 U.S.C. §1052(a); e.g., Piano Factory Grp., Inc. v. Schiedmayer Celesta GmbH, 11 F.4th 1363, 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 the 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 Ala. 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 Intel. 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); Mystery Ranch, Ltd. v. Terminal Moraine Inc., 2022 USPQ2d 1151, at *1, *11-12 (TTAB 2022) (holding DANA DESIGN and design for camping and hiking backpacks and shoulder bags and camping tents and tent accessories not to falsely suggest a connection to opposer Mystery Ranch Ltd., despite consumer’s associating Dana Gleason and opposer, because DANA was not the same or close approximation of opposer’s name or identity and did not point uniquely and unmistakably to opposer); 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 automobiles 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 society’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) (holding 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 Servs. 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. Rec. 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).