Precedential No. 23: TTAB Affirms 2(a) False Connection Refusal of BENNY GOODMAN COLLECTION
The Board affirmed a Section 2(a) refusal to register the mark BENNY GOODMAN COLLECTION THE FINEST QUALITY (stylized), shown below, for fragrances, cosmetics, leather goods and clothing, finding that the mark falsely suggests a connection with the late band leader, composer, and clarinetist, Benny Goodman. In re Jackson International Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417 [precedential].
Examining Attorney Linda M. King, relying on various Internet websites and references, maintained that Benny Goodman "had a very long and successful career as a musician and bandleader, with a reputation that continues to this day." Furthermore, she asserted that the Estate of Benny Goodman continues to protect his intellectual property rights.
The Board applied the four-part test of University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 217 USPQ 505 (Fed. Cir. 1983), aff’g 213 USPQ 594 (TTAB 1982), to determine whether Section 2(a) applied:
1. The mark is the same as, or a close approximation of, the name of or identity previously used by another person;
2. The mark would be recognized as such because it points uniquely and unmistakably to that person;
3. The person named by the mark is not connected with the activities performed by the applicant under the mark; and,
4. The prior user’s name or identity is of sufficient fame or reputation that a connection with such person would be presumed when applicant’s mark is used on applicant’s goods.
As to factor (1), the Board not surprisingly found that the applied-for mark is a close approximation of the name BENNY GOODMAN.
As to factor (2), the Board noted that performers commonly capitalize on their renown by licensing their names for collateral products, and so it found that consumers would associate Applicant's goods with the "well-known bandleader, composer and clarinetist."
Applicant argued that no one under 40 would know Benny Goodman, and moreover that there are Benny Goodmans "galore" on Facebook. However, Applicant failed to provide any evidence to support these assertions, and thus it failed to rebut the PTO's evidence.
As to factor (3), there was no evidence of a connection between Benny Goodman and Applicant's business.
And as to factor (4), the Board concluded that "Benny Goodman remains a well-known figure among a sufficient segment of the population as to support finding a false suggestion of a connection."
Applicant contended that this case is similar to the Maria Callas case [TTABlogged here], in which a Section 2(a) false association refusal was reversed because there was no evidence that any entity with rights in the deceased singer’s name existed. However, here the evidence showed that CMG Worldwide holds itself out as the exclusive business representative for the estate of Benny Goodman. Indeed, Applicant itself acknowledged that it is aware that there are heirs asserting rights in the name and persona of Benny Goodman
And so the Board affirmed the refusal under Section 2(a).
Text Copyright John L. Welch 2012.