WYHA? TTAB Affirms Section 2(a) False Association Refusal of TSA-KIT for "Bottles, sold empty"

Finding that the mark TSA-KIT for "bottles, sold empty," falsely suggests a connection with the U.S. Department of Homeland Security Transportation Security Administration ("TSA"), the Board affirmed a refusal to register under Section 2(a) of the Lanham Act. Applicant feebly argued that consumers understand TSA to mean "travel sufficient alcohol," but the record was devoid of any evidence in support. In re Elisabeth Stecki DBA Whineware, Serial No. 87215481 (January 24, 2019) [not precedential] (Opinion by Judge Thomas W. Wellington).

Section 2(a), in pertinent part, bars registration of "matter which may . . . falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols . . . ." The Board applied its standard four-part test under Section 2(a), considering whether:

1. The mark TSA-KIT is the same as, or a close approximation of, the name or identity previously used by another person or institution (TSA);

2. The mark would be recognized as such because it points uniquely and unmistakably to the TSA;

3. TSA is not connected with the goods offered by the applicant under the mark; and,

4. The fame or reputation of TSA is such that, when applicant’s mark is used with applicant’s goods, a connection with TSA would be presumed .

It is established that government agencies fall within the scope of protectable "persons" for purposes of Section 2(a). Unlike Section 2(d), the false association bar is not designed primarily to protect the public, but rather to protect persons and institutions from exploitation. "'[I]t appears that the drafters sought by Section 2(a) to embrace concepts of the right to privacy,' even in the absence of likelihood of confusion." University of Notre Dame, 217 USPQ at 508-09.

Applying the four-part test, the Board first found that TSA-KIT is a close approximation of TSA. The word KIT in applicant's mark "merely describes the manner in which the goods are being sold, i.e. as a kit."

Next, the Board concluded that the evidence "overwhelmingly" supports the finding that the mark TSA-KIT will be understood by consumers to point uniquely and unmistakably to the TSA. Travel goods, including goods very similar to applicant's "bottles, sold empty" are offered by third parties and advertised as compliant with TSA travel regulations. Applicant herself highlights the fact that her bottles meet the TSA "standard for contents allowable by law."

The Board found that consumers may believe that TSA has some connection with applicant's goods: e.g., that it has specifically approved the goods or certified the goods as being compliant with its regulations. There was no evidence to support the applicant's contention that consumers would understand TSA to mean "travel sufficient alcohol."

Applicant contended that consumers are aware that TSA neither sells nor sponsors novelty products, but that missed the point, said the Board. "[T]here is no need that TSA mark or sell related goods; rather the issue is whether consumers would assume the bottles have some connection with [TSA]."

Because TSA is uniquely involved in the regulation of what may be legally transported by travelers, it is likely that the inclusion of TSA in Applicant’s mark on goods designed to comply with TSA’s regulations will falsely suggest a connection with the governmental agency. Even if consumers do not mistakenly believe that TSA is the actual source or manufacturer of the goods, the inclusion of TSA in the applied-for mark may falsely suggest an affiliation between TSA and Applicant, or that TSA has formally approved or certified the goods as being compliant with TSA’s regulations.

As to the third and fourth elements of the applicable test, there was no dispute that applicant TSA is not connected with applicant or her products. Nor was there any dispute as to the fame or reputation of the TSA.

The Board concluded that "Applicant’s mark points uniquely to TSA and would be so recognized; TSA is not connected with Applicant or the goods being sold under the mark; and the fame or reputation of TSA is such that when Applicant’s TSA-KIT mark is used with her goods, such a connection would be presumed."

And so the Board affirmed the refusal to register.

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Text Copyright John L. Welch 2019.