TTAB Affirms Section 2(a) False Connection Refusal of "MOJAVE" for Cigarettes

Applying the four-element test of Buffett v. Chi-Chi's, Inc., 226 USPQ 428 (TTAB 1985), the Board affirmed a Section 2(a) refusal to register the mark MOJAVE for cigarettes, tobacco, and related paraphernalia, finding that the mark falsely suggests a connection with the Fort Mojave Indian Tribe of Arizona, Colorado & Nevada. In re G&R Brands, LLC, Serial No. 77011920 (November 21, 2008) [not precedential].


In order to establish a false connection claim under Section 2(a), the PTO must establish the following four elements:

(1) that the defendant's mark is the same or a close approximation of plaintiffs previously used name or identity;
(2) that the mark would be recognized as such;
(3) that the plaintiff is not connected with the activities performed by the defendant under the mark; and
(4) that the plaintiff's name or identity is of sufficient fame or reputation that when the defendant's mark is used on the goods or services, a connection with the plaintiff would be presumed. Buffett at 429.

As to element 1, Examining Attorney Kathleen M. Vanston relied on dictionary definitions in arguing that the Fort Mojave Indian Tribe of Arizona, California & Nevada is also known as "Mojave." Observing that an applicant "cannot take the significant element of the name of another and avoid a refusal," the Board found this element satisfied.

As to the second element, Applicant pointed to the Mojave Desert, the Mojave Valley, etc., in arguing that "MOJAVE" would not be recognized as referring to the tribe. However, the Examining Attorney submitted Internet evidence showing that these geographical locations derive their names from the Mojave tribe. See In re White, 80 USPQ2d 1654 (TTAB 2006) [other uses of "Mohawk" did not detract from the public's recognition of MOHAWK as referring to the Mohawk tribe].

As to element 3, Applicant admitted to having no connection with the Mojave tribe.

Finally, as to element 4, the Examining Attorney submitted evidence showing that "Mojave" is defined as "members of the Mojave tribe," that members of the tribe continue to live in Arizona, California, and Nevada, and that the tribe has a commercial impact in that area. The Board found this evidence "more than adequate to show that the Mojave tribe is well known among residents of the region and visitors to the area."

The Examining Attorney also provided evidence to show that the relevant public perceives a connection between Indian tribes and tobacco-related products: Internet articles discussing tobacco-related products produced by Indian tribes, articles describing the benefits of buying tax-free tobacco and other products on Indian reservations, and evidence demonstrating that the Mojave tribe itself operates a smoke shop. The Board accordingly found that "purchasers of applicant’s identified goods would be aware of Native American manufacturing and marketing
of Native American brand cigarettes, and, given the fame of its name, would think uniquely of the Mojave tribe when they see MOJAVE as a mark used on or in connection with those identified goods."

The PTO having satisfied all four elements of the Buffett test, the Board affirmed the refusal to register.

TTABlog note: For other recent Section 2(a) false connection cases involving tobacco-related products and Indian tribes, see In re White, cited above [TTABlogged here]: In re Shinnecock Smoke Shop, Serial Nos. 78918061 and 78918500 (September 10, 2008) [not precedential] [TTABlogged here]; and In re WM Distribution Inc., Serial No. 78195284 (October 13, 2005) [not precedential] [TTABlogged here].

Text Copyright John L. Welch 2008.