TTAB Reverses Section 2(a) False Connection Refusal of GIPA for Intellectual Property Services

The Board reversed a Section 2(a) refusal to register the mark GIPA for various intellectual property related services, finding that the USPTO failed to establish a false suggestion of a connection between the mark and the USPTO's own Global Intellectual Property Academy. In re Georgia Intellectual Property Alliance, Inc., Serial No. 88013883 (July 14, 2020) [not precedential] (opinion by Judge Jonathan Hudis).

Section 2(a), in pertinent part, provides that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it — (a) … falsely suggest a connection with persons … [or] institutions …." To establish this Section 2(a) bar, the USPTO must show:

(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.

As to the first element, prior decisions have broadly construed the terms "person" and "institution" to include governmental and quasi-governmental entities [E.g., U.S. Customs Service, NAFTA, and West Point], and the legislative history indicates that "institution" should be given a broad scope.

The evidence showed that the Academy (GIPA) "was established in 2006 to offer training programs on enforcement of intellectual property rights, patents, trademarks, and copyrights. The training programs offered by GIPA are designed to meet the specific needs of foreign government officials … concerning various intellectual property topics, such as global intellectual property rights protection and enforcement and strategies to handle the protection and enforcement issues in their respective countries."

The Board, noting that it was a "close call," concluded that the Academy qualified as an institution under the first element of Section 2(a). The evidence confirmed that GIPA is a name that has been used in referring to the USPTO's Academy.

As to the second element of the test, applicant submitted numerous examples demonstrating use of the term "GIPA" to refer to many entities other than the Academy. [E.g., Green Island Power Authority and Georgia Indoor Percussion Association]. The Examining Attorney pooh-poohed this evidence because these entities were not in the field of intellectual property, but the Board sided with applicant:

The Examining Attorney’s argument misses the point of these examples. Applicant made the third-party “GIPA” illustrations not to weaken the scope of protection of the Academy’s acronym as a mark. That would be a consideration for a likelihood of confusion refusal to register under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), which is not applicable here.

The third-party examples of use of “GIPA” showed that the Academy "clearly is not the only organization that uses this acronym." And so GIPA does not point uniquely and unmistakably to the Academy. This alone was enough to require reversal of the refusal to register.

As to the third element, applicant conceded that it is not connected with the USPTO's Academy.

And finally, as to the fourth element the USPTO failed to show, particularly in light of the number of other organizations also using the designation GIPA, that this term, "as associated with the Academy, has a sufficient reputation such that when this designation is used with the Applicant’s services, a connection with the Academy would be presumed."

And so the Board reversed the refusal to register.

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TTABlogger comment: FWIW: I've been a registered patent attorney since 1975. I never heard of GIPA.

Text Copyright John L. Welch 2020.