1203.03 Matter which 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 University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 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. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d at 1376-77, 217 USPQ at 509; Buffett v. Chi-Chi's, Inc., 226 USPQ 428, 429 (TTAB 1985).
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 andpublicity.
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 Merchandise Co. v. "21" Club, Inc., 343 F.2d 1011, 145 USPQ 203 (C.C.P.A. 1965); John Walker & Sons, Ltd. v. American 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) (DA VINCI held not to falsely suggest connection with deceased artist Leonardo Da Vinci).
A juristic person's rights under §2(a) are extinguished when the juristic person ceases to exist.
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 International, 127 USPQ 88, 94 (TTAB 1960).
It is well settled that the United States Government is a juristic person. See NASA v. Record Chemical Co. Inc., 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) (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 Consolidated Foods Corp., 187 USPQ 63 (TTAB 1975) (noted 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 andshield 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 Congress, Inc., 161 USPQ 304 (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 Mutual Insurance Co. v. Liberty Insurance Co. of Texas, 185 F. Supp. 895, 908, 127 USPQ 312, 323 (E.D. Ark. 1960) (marks comprising portion of the Statue of Liberty found 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 Congress, Inc., 161 USPQ 304 (TTAB 1969) (representation of a hammer andsickle held to be a national symbol of the Union of Soviet Socialist Republics (U.S.S.R.)); In re National 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., Inc., 137 USPQ 482 (TTAB 1963) (U. S. AQUA and design held 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 and Sons, Inc. v. Ladd, 227 F. Supp. 185, 140 USPQ 647 (D.D.C. 1964) (HOUSE OF WINDSOR held 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) (SPACE SHUTTLE found 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. International 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 General Mills, Inc., 169 USPQ 244 (TTAB 1971) (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, found not to 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) (U. S. HEALTH CLUB found 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, 248-249 (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 Products Corp., 217 USPQ 277 (TTAB 1982).
The acronyms for, and names of, government agencies and bureaus are not considered to be national symbols. Consolidated 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 andacronyms 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 Mutual Insurance 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). The two elements of such a claim are (1) that the communication reasonably would be understood as referring to the plaintiff; and (2) that the communication is disparaging, that is, would be considered offensive or objectionable by a reasonable person of ordinary sensibilities. Id. (citations omitted).
Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639 (TTAB 1988).
With regard to the first element set forth, the Board found that the applicant's design of a dog defecating strongly resembled the opposer's running dog symbol and that the evidence of record established that the symbol "points uniquely and unmistakably to opposer's persona." Id. at 1640.
With regard to the second element, the Board noted the negative nature of the design and stated as follows:
As it relates to opposer, ... the offensiveness of the design becomes even more objectionable because it makes a statement about opposer itself, and holds opposer up to ridicule and contempt.
1203.03(d) Disparagement, Bringing into Contempt and Bringing into Disrepute: Case References
See Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600 (TTAB 1999) (BLACK TAIL used on adult entertainment magazines, found 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 America v. Memphis Mafia Inc., 52 USPQ2d 1364 (TTAB 1999) (THE MEMPHIS MAFIA for entertainment services found not to be matter that disparages Italian-Americans or bring them into contempt or disrepute); Harjo v. Pro Football Inc., 50 USPQ2d 1705 (TTAB 1999) (REDSKINS, used in connection with presentation of professional football contests, found to be matter that may disparage Native Americans and bring them into contempt or disrepute, but not scandalous matter); In re In Over Our Heads Inc., 16 USPQ2d 1653, 1654 (TTAB 1990) (MOONIES and design incorporating a "buttocks caricature," for dolls whose pants can be dropped, held 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) (design of dog defecating, for clothing, held 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 Congress, Inc., 161 USPQ 304 (TTAB 1969) (design of an "X" superimposed over a hammer and sickle held 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 suggest 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 of a 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 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 White, 73 USPQ2d 1713 (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).
In In re Sloppy Joe's International Inc., 43 USPQ2d 1350, 1353-34 (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 is not the kind of "connection" contemplated by §2(a). 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.
If it is unclear whether the person or institution is connected with the goods sold or services performed by the applicant, the examining attorney should 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 Corp., 16 USPQ2d at 1317; In re Mohawk Air Services 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); Consolidated Natural Gas Co. v. CNG Fuel Systems, 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. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 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 University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 1377, 217 USPQ 505, 509 (Fed. Cir. 1983), aff'g 213 USPQ 594 (TTAB 1982) (NOTRE DAME and design, for cheese, held 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 Sauer, 27 USPQ2d 1073 (TTAB 1993), aff'd, 26 F.3d 140 (Fed. Cir. 1994) (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 andapplicant); In re White, 73 USPQ2d 1713 (TTAB 2004) (APACHE, used for cigarettes, falsely suggests a connection with the nine federally recognized Apache tribes ); In re Los Angeles Police Revolver and Athletic Club, Inc., 69 USPQ2d 1630 (TTAB 2004) (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) (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 North American Free Trade Association, 43 USPQ2d 1282 (TTAB 1997) (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 International Inc., 43 USPQ2d 1350 (TTAB 1997) (use of mark SLOPPY JOE'S, with design that includes portrait of Ernest Hemingway, falsely suggests connection with deceased writer); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435 (TTAB 1996) (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) (RIT-Z in stylized form, for toilet seats, held 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) (NRC and design, for radiation and chemical agent monitors, electronic testers and nuclear gauges, held 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) (opposition to the registration of SPACE SHUTTLE for wines dismissed, the Board 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."); Board of Trustees of University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986) (petition to cancel registration of BAMA, for shoes, slippers, stockings, socks and insoles, granted, the Board 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) (WESTPOINT, for shotguns and rifles, held 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, supra, see In re U.S. Bicentennial Society, 197 USPQ 905 (TTAB 1978) (U.S. BICENTENNIAL SOCIETY, for ceremonial swords, held to falsely suggest a connection with the American Revolution Bicentennial Commission and the United States government); In re National Intelligence Academy, 190 USPQ 570 (TTAB 1976) (NATIONAL INTELLIGENCE ACADEMY, for educational and instructional services in intelligence gathering for law enforcement officers, held to falsely suggest a connection with the United States government).