Precedential No. 12: TTAB Reverses Section 2(c) Refusal of FRANKNDODD for Legislative Information Services
The Board reversed a Section 2(c) refusal to register the mark FRANKNDODD for "providing legal information relating to legislation and law updates," finding that the mark would be understood by relevant consumers as referring to and commenting on the Dodd-Frank Act, rather than specifically identifying former Congressman Barney Frank and former Senator Chris Dodd. Consequently, their consents to registration were not required. In re Morrison & Foerster LLP, 110 USPQ2d 1423 (TTAB 2014) [precedential].
Congressman Frank and Senator Dodd were the main contributors to the Dodd-Frank Wall Street Reform and Consumer Protection Act, and the bill was named after them. The examining attorney relied on internet articles and blog postings referring to the act, but in all cases the term "Dodd-Frank" was used to refer to the legislation and not the legislators: i.e., Senator Dodd and Congressman Frank were not referred to individually or collectively as "Dodd-Frank."
The examining attorney also submitted printouts of six online posting referring to the designation FRANKNDODD or FRANKENDODD: one referred to applicant's use of the term; four to the Act itself (although one was somewhat ambiguous because it alluded to the two individuals); and the sixth used the designation to refer to the individuals.
Applicant submitted three internet articles that referenced the FRANKNDODD mark and services, and mentioned the allusion that applicant sought to make between the Dodd-Frank Act and the monster in Mary Shelley's Frankenstein. [Oh, my, how exceedingly clever!!! - ed.]. The articles did not mention the two individuals.
Section 2(c) of the Trademark Act prohibits the registration of any mark that "[c]onsists of or comprises a name ... identifying a particular living individual except by his written consent." The Section 2(c) bar applies not just to full names, but to nicknames, surnames, etc., that identify a particular living individual. A name is considered to "identify" a particular individual only if the individual "is so well known that the public would reasonably assume the connection (with the goods or services), or because the individual is publicly connected with the business in which the mark is used."
Here, there was nothing to suggest that Congressman Dodd or Senator Frank were connected with applicant's services of providing legal information. The question then was whether they were so well known that the public would reasonably assume a connection between them and applicant's identified services offered under the FRANKNHOOD mark. The Board concluded that the record did not support such a conclusion.
The evidence reflected that when the Dodd and Frank surnames are combined in the media, the reference is to the Act, not the individuals. The record did not support the examining attorney's assertion that the Act and the two individuals have become synonymous in the eyes of the public. Nor did the evidence demonstrate that FRANKNDODD has become a nickname for the two legislators. The single blog post that clearly uses that term to refer to the two legislators is insufficient to support such a finding, particularly given the dearth of information regarding the audience for that blog post.
The reversal of the order of the names and the addition of the letter "N" creates an allusion to the Frankenstein monster, an allusion that has been echoed by some commentators who have drawn an analogy between the scope of the Dodd-Frank Act and the monster (one commentator observing that Dodd-Frank is "bolted together from 15 separate laws").
In sum, the evidence of record demonstrated that FRANKNDODD would be understood by the relevant consuming public as referring to and commenting on the Dodd-Frank Act rather than as specifically identifying Congressman Frank and Senator Dodd. Therefore the Section 2(c) refusal, based on the failure to provide their consents to registration, was reversed.
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TTABlog note: What about a mere descriptiveness refusal?
Text Copyright John L. Welch 2014.