Precedential No. 42: TTAB Reverses 2(a) False Connection Refusal of "MARIA CALLAS" for Jewelry

Ruling that the PTO failed to carry its burden of proof, the Board reversed a Section 2(a) "false connection" refusal of the mark MARIA CALLAS for jewelry and other goods. In order to establish this Section 2(a) bar to registration of a now-deceased natural person's name, the PTO must show, inter alia, that there are heirs or other successors who are entitled to assert that person's right to the use of the designation. Here, the "contradictory" evidence led the Board to give the Applicant the benefit of the doubt. In re MC MC S.r.l., 88 USPQ2d 1378 (TTAB 2008) [precedential].

Maria Callas
The PTO maintained that: "(1) the name in the proposed mark, MARIA CALLAS, is the same as the name of the famous, deceased opera singer Maria Callas, (2) the proposed mark would be recognized as being the same as that of the singer Maria Callas, (3) no one associated with the deceased singer Maria Callas, her heirs and/or her estate is connected with the goods sold by applicant, and (4) the fame and reputation of the singer Maria Callas is such that consumers of applicant’s goods will presume a connection between her and the applicant’s goods."

Applicant argued that Section 2(a) was not satisfied because there is no estate vested with rights to control use of the MARIA CALLAS name or persona. Specifically, it contended that “the cumulative evidence of record establishes that the rights of privacy and publicity in the name 'Maria Callas' have extinguished with the death of the opera singer in 1977 and her legal heirs thereafter." The Examining Attorney responded that the evidence she submitted established that there is an estate of Maria Callas “which appears to authorize releases and re-releases of Maria Callas’ intellectual property, including her music.”

The Board turned to In re Wielinski, 49 USPQ2d 1754, 1758 (TTAB 1998), for guidance:

"A natural person’s right to the use of a designation which points uniquely to his or her persona may not be protected under Section 2(a) [TTABlog query: How does Section 2(a) protect a right to use?] after his or her death unless heirs or other successors are entitled to assert that right. [citations omitted]. The person with whom the marks are said to falsely suggest a connection must have rights in its name or identity which are prior to those of the applicant [citation omitted]. In order to possess rights, such person, or someone to whom those rights have been transferred, must exist."

The Board therefore observed that it "must find whether or not there is someone (this may be a natural person, estate, or juristic entity) with rights in the name 'Maria Callas.'" It concluded that Applicant had rebutted the PTO's prima facie case under Section 2(a) by presenting evidence that no such entity exists. But the Examining Attorney responded with evidence to support her position that “heirs or successors” with rights in the name and/or person actually do exist.

Based on the totality of the evidence of record, the Board expressed its "doubt as to whether there is any successor in interest entitled to assert rights, as contemplated under Section 2(a), to the Maria Callas name or persona. In other words, it is unclear whether the rights that Ms. Callas once possessed in her name or persona devolved to anyone. The record is replete with contradictory information on this point."

Because the burden of proof is on the PTO to establish that applicant’s mark falsely suggests a connection with the particular name or persona, the Board sided with Applicant: "In view of the significant doubt remaining as to whether anyone currently possesses rights in the name 'Maria Callas,' and resolving such doubt in applicant’s favor, we find that the examining attorney has not met her burden in establishing the false suggestion of a connection refusal under Section 2(a)."

The Board noted that, if there are heirs or successors to the name, they may institute an opposition or cancellation proceeding. Moreover, a Section 2(a) claim is not time-barred under Section 14 of the Trademark Act.

Text Copyright John L. Welch 2008.