Precedential No. 31: TTAB Affirms Section 2(a) Refusal of "NATO" for Tents, for Falsely Suggesting a Connection With ... Guess What?

The Board affirmed a Section 2(a) refusal to register the proposed mark NATO for "Canopies comprised primarily of tensile fabric membranes; canopies of textile or synthetic materials; Tents; Tents made of textile materials; canvas canopies,” finding that the mark falsely suggests a connection with the North Atlantic Treaty Organization ("NATO"). Because "military personnel are housed in tents, and third-party specialty retailers advertising the goods for sale tout the quality of these products used by NATO forces," the Board concluded that the applicant’s tents "are the type of items consumers would associate with the military," and thus with the Treaty Organization. In re International Watchman, Inc., 2021 USPQ2d 1171 (TTAB 2021) [precedential] (Opinion by Judge Angela Lykos)

Section 2(a), in pertinent part, bars registration of a mark that "consists of or comprises . . . matter which may . . . falsely suggest a connection with . . . institutions . . . ." The Board first determined that the North Atlantic Treaty Organization qualifies as an "institution" for purposes of this provision.

As an intergovernmental organization and military alliance, the North Atlantic Treaty Organization is an “institution” as contemplated under Section 2(a). See In re N. Am. Free Trade Ass’n, 43 USPQ2d at 1285-86 (finding that the “NAFTA is an institution, in the same way that the United Nations is an institution…”). And while Applicant may be right that the North Atlantic Treaty Organization is not a “juristic person” capable of being sued, this does not diminish its status as an “institution” within the meaning of the statute.

Next, the Board applied the four-part test articulated in University of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co.: to establish that a proposed mark falsely suggests a connection with a person or institution, it must be shown that:

•  (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, in view of the "pervasive use of NATO in a variety of sources [including use by the Organization itself] as shorthand for the North Atlantic Treaty Organization," the Board had no trouble finding that NATO is "the same as or a close approximation of the name or identity previously used" by the Treaty Organization.

As to the second element, evidence showed that NATO points uniquely and unmistakably to the Organization. NATO has been widely used as an acronym for the Organization since its inception following World War II. None of the dictionary reference of record include alternative meanings, and media reference showed extensive use of the term NATO without any mention of "North Atlantic Treaty Organization."

As to the third element, the applicant admitted that the Organization has no connection with the identified goods.

Finally, as to the fourth element, the Board observed that it is not necessary that the institution at issue actually provides the goods in question, or that the reputation of the institution is closely related to the applicant's goods.

As long as an applicant’s goods are of a type that consumers would associate in some fashion with the named person or institution, and the named party is sufficiently famous, then it may be inferred that purchasers of the goods or services would be misled into making a false connection of sponsorship, approval, support or the like with the named party. See, e.g., In re Nieves & Nieves, 113 USPQ2d at 1647-48; In re Cotter & Co., 228 USPQ at 204-05.

Here, since military personnel are housed in tents, and third-party retailers tout the quality of these products used by NATO forces, the applicant's tents are the type of goods that consumers would associate with the military. And since NATO is a military alliance with active duty soldiers, consumers would associate these goods with NATO.

Finally, the Board observed that a false suggestion of a connection under Section 2(a) may be found as to an entire class on the basis of any one item listed within the identification of goods in that class. See Piano Factory Grp., 2021 USPQ2d 913 at *14-15.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: On the same day that the Board handed down this decision, it also issued non-precedential decisions in five other appeals filed by this applicant. The Board affirmed Section 2(a) refusals of NATO for "Metal caps for bottles; Metal bottle caps; Bottle caps of metal;2 Metal dog tags," and for "Flashlights; LED flashlights; LED flashlights; LED flashlights; Tactical flashlights," but reversed refusals for "Decals; Pens," for "Nutritional supplement energy bars; Nutritional supplement meal replacement bars for boosting energy," and for "“Lip balm; Sunscreen preparations." In each of the reversals, the Board stated "Perhaps on a more developed record, we would have found otherwise."

Text Copyright John L. Welch 2021.