TTAB Reverses 2(d) Refusal of Salvation Army Mark, Finding Unity of Control
The Board reversed a Section 2(d) refusal to register the mark shown below, for charitable fundraising services, on the ground that the applicant and the owners of the registrations cited by the Examining Attorney "are governed by a central authority, which exercises unity of control over the entities' trademarks." As a result, the Board concluded, there will be no likelihood of confusion as to the source of the entities' services. In re The Salvation Army, Serial No. 86150336 (July 8, 2016) [not precedential].
The Examining Attorney based his refusal to register on thirteen existing registrations owned by three different entities incorporated in different states. Each of the registrations, for various charitable services, includes the words THE SALVATION ARMY. The Examining Attorney withdrew two additional citations because applicant, it turned out, is the owner thereof.
The Board observed that because the issue here is likelihood of confusion as to source, it would consider whether there exists "such unity of control over the marks ... that the public will view the identified services as emanating from a single source."
Applicant explained that it is one of The Salvation Army regional offices (in Illinois). The Salvation Army, "while decentralized into separate regional organizations, ... is under the unitary control of the Salvation Army USA through the National Commander USA and the Commissioners Conference USA." Relying on In re Wella A.G., 5 USPQ2d 1349 (TTAB 1987), applicant maintained that the regional entities follow directives from a single source. And it pointed out that the USPTO, has already allowed the aforementioned 13 registrations to co-exist.
The Examining Attorney contended that this arrangement fails to satisfy the requirements of Wella because the entities here are "sister entities" that are "not even owned by a single parent." Moreover, there is no evidence regarding how one entity controls the activities of another. And there is no consent agreement as found in the file history of the two withdrawn registrations.
In Wella, parent company Wella A.G. was refused registration of a particular mark in view of several registrations owned by its U.S. subsidiary. The CAFC vacated the TTAB's decision and remanded the case to the Board to consider whether the public would likely believe that the source of the Wella A.G. product is the U.S. subsidiary, or whether consumers perceive only a single source for all the Wella products, namely, Wella A.G.
The Board then reversed the refusal, observing that the CAFC views the concept of "source" as encompassing more than "legal entity." A declaration from a Wella U.S. executive stated that Well A.G. owned substantially all the stock of Wella U.S. and "thus controls that activities and operations of Wella U.S., including the selection, adoption and use of the trademarks." Although no details were given regarding this control, the Board found the declaration sufficient to establish that "control over the use of all the 'WELLA' trademarks in the United States resides in a single source."
The Board observed that the issue of "unity of control" must be considered on the facts of each case, and does not hinge on any particular organizational structure. "[M]erely because an arrangement does not fall within a set type of organization does not preclude a finding that there is unity of control."
Here the evidence showed that The Salvation Army is a worldwide organization headquartered in London; the United States affiliate is divided into four regions under the control of the National Command in a quasi-military structure. Moreover, applicant already owns three registrations for marks with the wording "The Salvation Army," which registrations have coexisted with the other registrations.
Under the unique facts of this case, the Board found that there would not be a likelihood of confusion as to source.
As the Federal Circuit stated, the question is "whether under the circumstances there was in fact any likelihood of confusion" and “to explain what that confusion would be.” In re Wella, 229 USPQ at 277. Based on this record and the unique organizational structure of the Salvation Army, it is not possible to explain what that confusion would be.
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TTABlog comment: Seems a bit "loosey-goosey" to me. Oh, Wella!
Text Copyright John L. Welch 2016.