Precedential No. 4: TTAB Affirms 2(a) and 2(c) Refusals of "PRINCESS KATE" and "ROYAL KATE" for Clothing

The Board affirmed refusals to register PRINCESS KATE and ROYAL KATE for cosmetics jewelry, handbags, bedding, and clothing, finding that the marks falsely suggests a connection with Catherine, Duchess of Cambridge, the wife of Prince William of England, in violation of Section 2(a), and further finding that, because the marks consist of or include a name identifying a particular living individual without her consent, registration was barred by Section 2(c). In re Nieves & Nieves LLC,  113 USPQ2d 1629 and 113 USPQ2d 1639 (TTAB 2015) [precedential].

Non-US evidence: The examining attorney submitted some evidence from foreign news sources, which evidence had some probative value because this case concerned "perception of the general U.S. public — the relevant consumers of the goods in the application — regarding the identity of a celebrity who lives and travels outside of the United States." Moreover, the Board observed, many American consumers utilize the Internet to gather news and information and thus may access these foreign sources.

Section 2(a): To determine whether Applicant’s marks falsely suggested a connection with Kate Middleton under Section 2(a), the Board analyzes whether the evidence of record satisfies the following four-part test:

(1) whether the mark is the same as or a close approximation of Kate Middleton's previously used name or identity;
(2) whether the mark would be recognized as such by purchasers, in that it points uniquely and unmistakably to Kate Middleton;
(3) whether she is not connected with the activities performed by the applicant under the mark; and
(4) whether Kate Middleton's name of identify is of sufficient fame or reputation that when the mark is used with applicant’s goods, a connection with her would be presumed.
See In re Pedersen, 109 U.S.P.Q.2d 1185, 1188 (T.T.A.B. 2013); In re Jackson Int’l Trading Co., 103 U.S.P.Q.2d 1417, 1419 (T.T.A.B. 2012).

Applicant argued that PRINCESS KATE and ROYAL KATE are not close approximations of KATE MIDDLETON'S name or identity because she is not, in fact, a princess, and she never used either name. The Board, however, pointed out that "a term may be considered the identity of a person even if his or her name or likeness is not used. All that is required is that the mark sought to be registered clearly identifies a specific person."

We take this opportunity to make explicit what was implicit in our prior decisions in Pitts and In re Urbano , 51 U.S.P.Q.2d 1776 (T.T.A.B. 1999): the first prong of the false suggestion of a connection test inquires into whether applicant’s mark is the same as or a close approximation of the name or identity of a particular person other than the applicant, whether or not the person actually “used” the name or identity himself or herself.

Numerous media references demonstrated that Kate Middleton has been called "Princess Kate" and "Royal Kate," and thus the marks PRINCESS KATE and ROYAL KATE were close approximations of the identity of Kate Middleton.

The goods in the applications reinforced the conclusion that the marks uniquely and unmistakably point to Kate Middleton, because she was known as a fashion trendsetter. Applicant acknowledged that Kate Middleton was not associated with applicant's goods, nor did she consent to use of her identity.

The evidence established that Kate Middleton, as a member of the British Royal Family, was the subject of great public interest in the United States and throughout the world. "As the evidence establishes, the media reports what she is wearing, where she goes and what she purchases." The Board therefore found that Kate Middleton’s identity was of sufficient fame or reputation that when Applicant’s mark PRINCESS KATE and ROYAL KATE are used in connection with Applicant’s goods, a connection with Kate Middleton will be presumed.

And so the Board found that both marks falsely suggested a connection with Kate Middleton, and it therefore affirmed the Section 2(a) refusal.

Section 2(c): This Section of the Lanham act bars registration of a mark that "[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his [sic] written consent."

A consent is required only if the individual bearing the name in the mark will be associated with the mark as used on the goods or services, either because: (1) the person is so well known that the public would reasonably assume a connection between the person and the goods or services; or (2) the individual is publicly connected with the business in which the mark is used.

For purposes of this section, a "name" does not have to be a full name, but may be a nickname, stage name, or the like. When the individual identified is famous or well-known, it is not necessary to show some connection between the goods or services involved and the individual.

Particularly pertinent to the case at hand was In re Steak & Ale Rest. of Am., Inc., 185 U.S.P.Q. 447, 448 (T.T.A.B. 1975), in which the Board affirmed a Section 2(c) refusal of the mark PRINCE CHARLES for fresh and cooked meat, because the proposed mark identified a particular well-known living individual whose consent was not of record.

The Board found that the two marks at issued consisted of the name of a particular living individual, and because Kate Middleton has not consented to the use and registration of that name, the Board affirmed the Section 2(c) refusal.

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TTABlog note: I haven't figured out why the Board did not consolidate these appeals and issue one opinion.

Text Copyright John L. Welch 2015.