TTAB Affirms 2(e)(4) Surname Refusal of "BASQUIAT" for Alcoholic Beverages, Rejecting Transferred Distinctiveness Claim

The Board affirmed a Section 2(e)(4) refusal of the proposed mark BASQUIAT for "Alcoholic beverages, except beer," finding that the mark, which the applicant conceded was primarily merely a surname, lacked acquired distinctiveness. The application was filed under Section 1(b) and the mark had not been put into use, so the applicant claimed acquired distinctiveness from three other BASQUIAT registrations, but the Board found that its supporting evidence fell short. In re Administrators of the Jean-Michel Basquiat Estate, Serial No. 97291105 (May 1, 2024) [not precedential] [not precedential] (Opinion by Judge Thomas L. Casagrande).

Trademark Rule 41(a)(1) provides that "In appropriate cases, ownership of one or more active prior registrations on the Principal Register . . . of the same mark may be accepted as prima facie evidence of distinctiveness if the goods or services are sufficiently similar to the goods or services in the application; however, further evidence may be required."

As the Dial-A-Mattress Court . . . explained, under Rule 2.41(a)(1), “an applicant can establish acquired distinctiveness in an intent-to-use application where it can show that the [1] ‘same mark’ [2] acquired distinctiveness [3] for related goods or services, and [4] that this acquired distinctiveness will transfer to the goods or services specified in the application when the mark is used in connection with them.

Invoking Dial-A-Mattress, the applicant claimed the benefit of transfer of the acquired distinctiveness of three prior BASQUIAT registrations, one for paintings and art prints, one for clothing, and one for cosmetics. 

The Board first addressed the issue of whether the goods in the instant application and the three registrations are related.

Applicant focused on the registration for clothing, arguing that "there is a well-known relationship between the fashion (Class 25) and alcohol (Class 33) industries, such that notoriety in one industry will transfer to the other." It relied on three online articles discussing collaborations between fashion brands and alcohol brands, and on 21 live or dead trademarks covering alcoholic products and various goods in applicant's other three registrations. 

The Board observed that, to prove relatedness for purpose of transference of acquired distinctiveness:

applicant must establish, by appropriate evidence, [1] the extent to which the goods or services in the intent-to-use application are related to the goods or services in connection with which the mark is distinctive, and [2] that there is a strong likelihood that the mark’s established trademark function will transfer to the related goods or services when use in commerce occurs. In re Rogers, Ser. No. 75013108, 1999 WL 1427726, at *5 (TTAB 1999) (brackets and emphasis added by the Board).

The Board noted that the degree of relatedness for a likelihood of confusion analysis under Section 2(d) is not as great as that required for transfer of acquired distinctiveness, where there must be a "rigorous showing."

Turning to the articles submitted by applicant, the Board pointed out that they deal with collaborations between fashion designers and alcoholic beverage brands. However, there was no evidence that the late Jean-Michael Basquiat was a fashion designer. Moreover, the collaborations involved the designer adding fashion elements to a label or vessel. That is not the case here. The articles mention "only one or two instance where fashion designers expanded to sell their own brand of alcoholic beverages."

As to the third-party trademark evidence, the Board agreed with Examining Attorney Giselle Agosto Hincapie's criticism. Applications are evidence only of the fact that they were filed. Cancelled registrations "are equally unenlightening on consumer perception." That left three registrations, one of which was ignored becuase it did not cover clothing items. There was no evidence of actual use of the two remaining registered marks.

Viewing the three articles and the two registrations together, we find that Applicant’s showing falls far short of satisfying its “heavy burden” . . . to demonstrate a “strong likelihood” that the acquired distinctiveness in the clothing mark would transfer to alcoholic beverages as soon as Applicant uses BASQUIAT in connection with such beverages.

And so, the Board affirmed the refusal.

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TTABlogger comment: Should this opinion have been precedential?

Text Copyright John L. Welch 2024.