Thursday, February 11, 2021

Precedential No. 1: TTAB Dismisses Olympic Committee's Section 2(a) False Connection Opposition to PIERRE DE COUBERTIN for Various Goods

In its first precedential opinion of 2021, the TTAB dismissed the United States Olympic Committee's opposition to registration of the mark PIERRE DE COUBERTIN for various goods in classes 3, 9, 14, 16, 25, and 28, including perfume, sunglasses, jewelry, luggage, clothing, and sporting goods.The Board found that the USOC had failed to prove its claim that the proposed mark falsely suggests a connection with the Olympic Movement in violation of Section 2(a) of the Lanham Act. The United States Olympic Committee v. Tempting Brands Netherlands B.V., 2021 USPQ2d 164 (TTAB 2021) [precedential] (Opinion by Judge Cynthia C. Lynch).

Pierre de Coubertin is the name of a French baron who died in 1937. Mr. de Coubertin was instrumental in reviving the Olympic Games in the late nineteenth century by co-founding the International Olympic Committee and later becoming its president. He designed the Olympic Rings logo, proposed the Olympic motto Citius, Altius, Fortius (Faster, Higher, Stronger), and created the Olympic Creed. The Olympic Games feature a sportsmanship award given only occasionally, named the Pierre de Coubertin medal.

Section 2(a), in pertinent part, bars registration of a mark that consists of or comprises matter that may falsely suggest a connection with a person or institution. 15 U.S.C. § 1052(a). There are four elements of a false suggestion of connection claim:

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.

Pierce-Arrow Society, 2019 U.S.P.Q.2d 471774, at *13. at *14; see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 217 U.S.P.Q 505, 508-10 (Fed. Cir. 1983) (providing foundational principles for the current four-part test used by the Board to determine the existence of a false connection). The Board concluded that the USOC failed to establish either of the first two elements of the Section 2(a) test.

In establishing its entitlement to pursue the Section 2(a) claim, the USOC relied on its status as “part of the ‘institution’ to which use of the PIERRE DE COUBERTIN mark would falsely suggest a connection – i.e., the Olympic Movement.”  The Board found that the evidence here "support[ed] the finding previously made by the Board in In re Urbano that 'the entire organization which comprises the Olympic Games, as a whole, qualifies as an 'institution' within the meaning of Section 2(a) of the Trademark Act.'" 51 USPQ2d 1776, 1779 (T.T.A.B. 1999). 

Same or Close Approximation?: In order to satisfy the first element of the test, USOC had to show that consumers associate PIERRE DE COUBERTIN "so closely with Opposer that they recognize it as Opposer’s name (or nickname), identity or persona.” Bos. Athletic Ass’n v. Velocity, LLC, 117 U.S.P.Q.2d 1492, 1497 (T.T.A.B. 2015). The USOC failed to do so.

While Pierre de Coubertin certainly was associated with the Olympic Movement, this record does not demonstrate that the public would perceive Applicant’s mark as a name or identity of the Olympic Movement or Opposer, or a close approximation thereof. Thus, this mark differs from the SYDNEY 2000 mark at issue in Urbano, about which the Board stated, “we have no doubt that the general public in the United States would recognize this phrase as referring unambiguously to the upcoming Olympic Games in Sydney, Australia, in the year 2000.” Urbano, 113 U.S.P.Q.2d at 1644.

Here, the USOC admitted that it “does not use ‘Pierre de Coubertin’ interchangeably with ‘Olympic Games’ as a name for the Olympic Games.” It also admitted that the name was not mentioned in the 2016 USOC Annual report or in the "U.S. Olympic and Paralympic Brand Usage Guidelines." Nor is the name listed in the Ted Stevens Olympic and Amateur Sports Act, which gives the USOC special statutory exclusive rights to certain specified Olympic-related designations.

The record lacked evidence like that in the ROYAL KATE and MARGARITAVILLE cases, where the public "knew the person or institution by the nickname or close approximation of a name or identity in the mark." Instead, the evidence showed that PIERRE DE COUBERTIN "would be understood as a reference to the historical person" and not to the Olympic Movement.

Points Uniquely?: Even assuming arguendo that PIERRE DE COUBERTIN were the USOC's name or identity, or a close approximation thereof, the Board found that the mark does not point uniquely and unmistakably to the USOC. Even in the context of the Olympics, the name is associated with the person, "rather than serving merely as a synonym of the Olympic institution."  

The USOC asserted that the applicant intended to create a false association with the Committee and the Olympics, but the Board was not persuaded by the evidence. Moreover, any intention on the part of the applicant to create a connection with the individual, rather than the USOC, "cannot help establish a Section 2(a) claim for Opposer."

Because the USOC failed to satisfy either of the first two elements of the Section 2(a) test, the Board found it unnecessary to consider the other two elements.

Read comments and post your comment here.

TTABlog comment: Based on my experience, the USOC is, in my opinion, a trademark bully.

Text Copyright John L. Welch 2021.


At 10:55 AM, Anonymous Anonymous said...

They would probably have also come up short on the fourth element. That says a lot of the Board's impression of this opposition if they didn't even analyze the third or fourth elements - and yet still made it precedential. Wow.


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