TTAB Citable No. 38: Board Affirms 2(a) Refusal of "MOHAWK" for Cigarettes

In its 38th citable decision of 2006, the Board affirmed a Section 2(a) refusal of the mark MOHAWK for cigarettes, finding that it falsely suggests a connection with the federally-recognized St. Regis Band of Mohawk Indians of New York. In re White, 80 USPQ2d 1654 (TTAB 2006).

The court applied its standard Section 2(a) test, requiring that the PTO prove: (1) that 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 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.

Applicant Julie White argued that the word "Mohawk" is not a close approximation of the name of the St. Regis Band of Mohawk Indians, and that it does not refer uniquely or unmistakably to that Band (citing GOOGLE references to Mohawk Mountain, Mohawk College, Mohawk State Forest, and the like). She also claimed to be a Native American and a member of the St. Regis Band of Mohawk Indians of New York, and also an employee of a company that manufactures and sells cigarettes under a license granted by the St. Regis Band.

The Board found that dictionary definitions submitted by Examining Attorney M. Catherine Faint sufficiently established that MOHAWK is the same as or a close approximation of the St. Regis Band of Mohawk Indians of New York. "An applicant cannot take a significant element of the name of another and avoid a refusal by leaving one or more elements behind, provided that that which has been taken still would be unmistakably associated with the other person." In re White, 73 USPQ2d 1713, 1719 (TTAB 2004). [Same Applicant's mark APACHE for cigarettes deemed unregistrable under Section 2(a)].

As to other uses of the term MOHAWK, the Board observed that these uses (including place names and a U.S. Army aircraft) "appear to be named after the Mohawk tribe," and therefore these uses "do not detract from the association of the name 'Mohawk' with the Mohawk tribe." Third-party applications and registrations for marks containing the word MOHAWK were of "limited probative value" because they do not evidence that the marks are in use and that the public is familiar with them.

As to Applicant White's connection with the Mohawk tribe, the question was this:

"whether a commercial connection has been established between applicant and the Mohawk tribe in light of the facts that applicant is a member of the tribe, the tribe has issued a license and d/b/a certificate to applicant's employer, Native American Trading Associates, in connection with manufacturing tobacco products, and applicant has licensed use of her rights in the MOHAWK mark to Native American Trading Associates."

The Board ruled that "a specific commercial connection between applicant and the Mohawk tribe has not been proven." The license and the d/b/a certificate are not evidence "that the tribe endorses or is a sponsor of the cigarettes applicant intends to sell."

"... we note that the license is general in nature, and simply states that Native American Trading Associates has agreed to the rules and regulations regarding the manufacturing of tobacco products on the Mohawk tribe's reservation. The d/b/a certificate also is general in nature, and states that Native American Trading Associates has requested and been approved to operate a tobacco manufacturing business on the reservation. Neither of these documents, however, is a specific endorsement or sponsorship of Native American Trading Associates' activities, and in turn, the cigarettes applicant intends to sell. Thus, we find that these documents do not evidence a specific commercial connection between applicant and the Mohawk tribe."

Nor could the board imply a "specific commercial connection" because "there is no evidence of a long-standing mutual relationship between Native American Trading Associates and the tribe."

Finally, the Board found the evidence "more than sufficient to establish that the Mohawk tribe is well-known among residents in the [New York and Canada] region and visitors to the area. Moreover, "purchasers of cigarettes would be aware of Native American manufacturing and marketing of Native American brand cigarettes, and, given the fame of the name of the Mohawk tribe, would think uniquely of the Mohawk tribe when they see MOHAWK as a mark used on or in connection with cigarettes."

Therefore, the Board affirmed the refusal to register under Section 2(a).

Text Copyright John L. Welch 2006.