Precedential No. 43: TTAB Affirms Section 2(a) False Connection Refusal of "LAKOTA" for Herbal Remedies

Finding (1) that the mark LAKOTA is identical to the name used to identify existing Native American people and their language and points uniquely and unmistakably to the Lakota people and language, (2) that applicant Pedersen has no actual or commercial connection with the Lakota people or language, and (3) that the LAKOTA name is of sufficient fame or reputation that a connection with the Lakota people would be presumed if applicant’s mark were used in connection with his goods (medical herbal remedies), the Board held that LAKOTA falsely suggests a connection with the Lakota people, in violation of Section 2(a) of the Trademark Act. In re Kent Pedersen, 109 USPQ2d 1185 (TTAB 2013) [precedential].

Section 2(a), in pertinent part, bars registration of a mark that "[c]onsists of or comprises ... matter which may ... falsely suggest a connection with persons ... , ... institutions ...." To establish that a proposed mark violates this portion of Section 2(a), the USPTO must show that:

(1) 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 the 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 Jackson Int’l Trading Co., 103 U.S.P.Q.2d 1417, 1419 (T.T.A.B. 2012), and other cases.

As to the first two factors, Applicant Pedersen argued that LAKOTA has multiple definitions and primarily identifies a language or dialect, and therefore the term cannot point uniquely and unmistakably to a person or institution. The Board, however, found that Examining Attorney Kathleen M. Vanston "more than carried the initial burden of showing that LAKOTA is the same as or a close approximation of the name or identity previously used by another." The fact that LAKOTA refers to the language spoken by the subgroup of the Sioux tribe known as the Lakota does not mean that the term cannot also approximate the identity of a people or institution. "Lakota" refers to a Native American people living primarily on five federally recognized tribal sites. [The Lakota, led by Sitting Bull and Crazy Horse, defeated General George Armstrong Custer and the U.S. Cavalry in a battle known as "Custer's Last Stand."]

According to Board precedent, the phrase "persons or institutions" in Section 2(a) is given a broad scope, and "may include groups of persons and individual members of a group such as the members of an Indian tribe having a common heritage and speaking a common language." Although the Lakota tribe is not listed as one of the federally-recognized Indian Entities, the Board ruled that this fact was not dispositive. Moreover, LAKOTA need not be the legal name of the party or entity falsely associated with the subject mark to preclude registration by applicant. [See, e.g., the TWIGGY and Bo Jackson cases]. Dictionary and other evidence led the Board to find that LAKOTA identifies a particular group of Native American person(s) or institution(s), as contemplated by Section 2(a).

The Board rejected Pedersen's argument that the examining attorney must show that some entity has the authority to license or permit use of LAKOTA as a trademark. The lack of proof of such an entity merely means that the examining attorney must provide other proof that the term identifies a person or institution. The evidence established that there are persons who identify themselves and are identified by others as "Lakota," speak the Lakota language, and have engaged in activities to protect the land and culture of the Lakota tribe.

Pedersen further contended that third-party uses of LAKOTA prevent the term from pointing uniquely and unmistakably to particular persons or institutions. The Board pointed out that, even assuming that these other uses have no connection with the Lakota people, those uses do not undercut the refusal under Section 2(a). "The concern in this case is protection of the identity of the Lakota people from use by another without the right to do so." Third-party use of LAKOTA on other products unrelated to Pedersen's goods is "insufficient to show that applicant's LAKOTA mark when used on applicant's goods does not point uniquely to the Lakota people." Likewise, third-party registrations for unrelated goods have no probative effect.

As to the third factor, Pedersen claimed that a connection exists between him and "an entity that can be considered associated with an Indian group that speaks the Lakota language." Pedersen pointed to his licensee, who has contributed to several organizations that promote the preservation of the Lakota language. The Board found that these facts do not "equate to evidence of a commercial connection between applicant and the Lakota people."

Turning to the fourth factor, the evidence showed that the Lakota people "are of sufficient renown for their business, tourism and cultural enterprises such that they would be well known not only among residents of the Dakotas, but also to visitors to that area." Moreover, the reputation of the Lakotas extends to healing and traditional herbal medicines. The Board found that the evidence amply demonstrated the fame of the Lakota people. Their reputation regarding healing and herbal remedies is of such a nature that applicant's use of LAKOTA on his goods would lead consumers to presume that there is a connection with the Lakota people. The Board noted that it is not necessary to prove that the Lakota people are famous for herbal medicine, but here there is such a strong relationship.

Although proof of intent to associate is not required for a Section 2(a) refusal, the evidence of Pedersen's intention to associate with Native Americans in general, and the Lakota people in particular, is "highly persuasive" that the public will make the intended false association. The website of applicant's licensee, and the products displayed on the website, invite consumers to make a connection between applicant's products and the Lakota people and their "legendary" reputation for traditional natural remedies.

The Board concluded that Pedersen's mark LAKOTA falsely suggests a connection with the Lakota people, and it therefore affirmed the refusal to register.

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TTABlog note:  This posting significantly condenses the lengthy discussion of the issues in the Board's 43-page opinion.

Text Copyright John L. Welch 2014.