Thursday, July 26, 2012

Precedential No. 23: TTAB Affirms 2(a) False Connection Refusal of BENNY GOODMAN COLLECTION

The Board affirmed a Section 2(a) refusal to register the mark BENNY GOODMAN COLLECTION THE FINEST QUALITY (stylized), shown below, for fragrances, cosmetics, leather goods and clothing, finding that the mark falsely suggests a connection with the late band leader, composer, and clarinetist, Benny Goodman. In re Jackson International Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417 [precedential].

Examining Attorney Linda M. King, relying on various Internet websites and references, maintained that Benny Goodman "had a very long and successful career as a musician and bandleader, with a reputation that continues to this day." Furthermore, she asserted that the Estate of Benny Goodman continues to protect his intellectual property rights.

The Board applied its four-part test in assessing whether Section 2(a) barred registration:

1. The mark is the same as, or a close approximation of, the name of or identity previously used by another person;

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

3. The person named by the mark is not connected with the activities performed by the applicant under the mark; and,

4. The prior user’s name or identity is of sufficient fame or reputation that a connection with such person would be presumed when applicant’s mark is used on applicant’s goods.

As to factor (1), the Board not surprisingly found that the applied-for mark is a close approximation of the name BENNY GOODMAN.

As to factor (2), the Board noted that performers commonly capitalize on their renown by licensing their names for collateral products, and so it found that consumers would associate Applicant's goods with the "well-known bandleader, composer and clarinetist."

Applicant argued that no one under 40 would know Benny Goodman, and moreover that there are Benny Goodmans "galore" on Facebook. However, Applicant failed to provide any evidence to support these assertions, and thus it failed to rebut the PTO's evidence.

As to factor (3), there was no evidence of a connection between Benny Goodman and Applicant's business.

And as to factor (4), the Board concluded that "Benny Goodman remains a well-known figure among a sufficient segment of the population as to support finding a false suggestion of a connection."

Applicant contended that this case is similar to the Maria Callas case [TTABlogged here], in which a Section 2(a) false association refusal was reversed because there was no evidence that any entity with rights in the deceased singer’s name existed. However, here the evidence showed that CMG Worldwide holds itself out as the exclusive business representative for the estate of Benny Goodman. Indeed, Applicant itself acknowledged that it is aware that there are heirs asserting rights in the name and persona of Benny Goodman

And so the Board affirmed the refusal under Section 2(a).

Text Copyright John L. Welch 2012.


At 8:46 AM, Anonymous Anonymous said...

What made this case precedential? WYHA?

- Bob O'Connell

At 9:23 AM, Blogger John L. Welch said...

Good questions, Bob.

I think the Board needed to up its number of precedentials for the year, which has been rather low.

Is this a WYHA? Yes, I think so.

At 1:03 PM, Anonymous Anonymous said...

I did enjoy the quote "Benny Goodmans

At 5:40 PM, Anonymous Keith the Cub Fan said...

So what if only us folks over 40 (or 60) know about Benny? Are we chopped liver?

At 6:00 AM, Blogger John L. Welch said...

Keith, I'm sorry to say this, but if you are a Cubs fan, then yes, you are chopped liver.

At 10:28 AM, Anonymous Anonymous said...

Perhaps my biggest objection to this opinion is the statement that "it is commonplace for performers and owners of well-known marks to expand their product lines to incorporate a diverse set of goods...." This opinion nearly states that names of famous people essentially is entitled to all the benefits of 43(c) famous mark protection. Despite the relative obscurity of Benny Goodman, whom I never heard of even though I am over 40, he is given dilution protection.

At 10:40 AM, Blogger John L. Welch said...

Interesting point. Maybe you should write and article: How is Section 2(a) false association like 43(c) dilution protection?

At 3:42 PM, Anonymous Trezanay M. Atkins said...

*like* re John Welch's reply to Anonymous.


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