Tuesday, November 11, 2008

TTAB Sustains 2(a) Refusal of "P. MAURIAT" for Musical Instruments

The Board affirmed a Section 2(a) refusal to register the mark P. MAURIAT in the design form shown below, for "musical instruments," finding that the mark falsely suggests a connection with the late musician, Paul Mauriat. In re Hsieh, Serial No. 78367205 (October 29, 2008) [not precedential].

Examining Attorney Anthony M. Rinker relied on Internet websites identifying Paul Mauriat as "the last big star of the space age pop era," on evidence that Paul Mauriat recordings are still available, and on Applicant's own website, which displayed photographs of Paul Mauriat, and outlined Applicant's plan to sell musical instruments based on Paul Mauriat's lifestyle.

Applicant Ming-Shan Shieh contended that a Section 2(a) refusal applies to a deceased individual only if "there is no longer anyone entitled to assert a proprietary right." However, in a motion for an extension of time to file his reply brief, Applicant had explained that he was in negotiations with Mauriat's widow and heir for her consent to use and register the subject mark. "Suffice it to say, there is no basis for applicant to contend that a Section 2(a) false suggestion of a connection refusal does not apply because Paul Mauriat has no heirs."

Applicant further argued that the treble clef design is the dominant portion of his mark and did not point to a specific individual. The Board, nonetheless, found the mark to be a close approximation of the name Paul Mauriat.

Applicant next contended that consumers familiar with Paul Mauriat "would know that Paul Mauriat does not sell musical instruments." However, the Board found Applicant's website to be "strong evidence that his mark points uniquely and unmistakably to Paul Mauriat. Indeed, it is hard to imagine any evidence more persuasive of that fact."

The Board found the PTO's Internet and Wikipedia evidence sufficient to establish the fame or renown of Paul Mauriat for Section 2(a) purposes. Moreover, based on Applicant's website, the Board "may draw an inference that applicant intends to create a connection with Paul Mauriat."

The Board therefore concluded that the subject mark falsely suggests a connection with Paul Mauriat, and it affirmed the refusal to register.

TTABlog comment: Suppose Applicant Hsieh had not revealed his contacts with the widow Mauriat? How would the PTO be able to prove that Mauriat left an heir or successor? Compare the MARIA CALLAS case (here), where a Section 2(a) refusal was reversed because the PTO was unable to meet its burden to show that there were heirs or other successors entitled to assert rights in the MARIA CALLAS mark.

Text Copyright John L. Welch 2008.


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