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 Rsch. 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., NPG Recs., LLC v. JHO Intell. Prop. Holdings LLC, 2022 USPQ2d 770, at *6, *15 (TTAB 2022) (finding PURPLE RAIN, the name of a well-known song and album written and performed by Prince and the title of a motion picture scored by and starring Prince, to be "synonymous with Prince"); 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, the name of a well-known song written and performed by Jimmy Buffett, to be the public persona of singer Jimmy Buffett); In re Sauer, 27 USPQ2d 1073, 1073-75 (TTAB 1993) (holding BO BALL falsely suggested a connection with professional football and baseball player Bo Jackson, widely known by his nickname "Bo"). "[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) (citing Buffett v. Chi Chi’s, Inc., 226 USPQ at 429 n.4); see In re Sauer, 27 USPQ2d at 1074-75. 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 person or institution. See 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 did 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 had "no probative value"); cf. NPG Recs., LLC v. JHO Intell. Prop. Holdings, 2022 USPQ2d 770, at *19 (finding applicant’s evidence of three third-party registrations for items related to the goods in applicant’s application insufficient to show that PURPLE RAIN did not point uniquely to opposer).

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.