Monday, February 14, 2022

TTAB Reverses Section 2(a) False Connection Refusal of SPACE COMMAND for Books, Clothing, and Toys

The Board reversed a Section 2(a) refusal to register the mark SPACE COMMAND for books, posters, clothing, toys, and audio video recordings, ruling that the USPTO failed to prove its contention that the mark falsely suggests a connection with the U.S. Space Command. The Board did, however, uphold the Office's requirement that applicant disclaim the word "SPACE." In re Thomas D. Foster, APC, Serial No. 88233967 (February 10, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington).

In order to establish that a proposed mark falsely suggests a connection with a person or an institution under Section 2(a), the USPTO must satisfy “the Univ. of Notre-Dame du Lac test”:

(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.

Wikipedia evidence showed that the "Air Force Space Command" was a major command of the U.S. Air Force from September 1982 to December 2019, and was re-named as the "United States Space Force," a "new sixth service branch of the United States Armed Forces responsible for space warfare." The United States Space Command was "re-established" in 2019; a previous United States Space Command was "inactivated" in 2002.

The Examining Attorney maintained that SPACE COMMAND is "the same of a close approximation of the name of the U.S. Space Command [re-established in 2019], previously the Air Force Space Command .... Specifically, at the time applicant file[d] the application, SPACE COMMAND referred to the Air Force Space Command."

The Board observed that in order for there to be a false connection under Section 2(a), "the person or institution with which a connection is falsely suggested must be the prior user." Here, although SPACE COMMAND is a close approximation of U.S. Space Command, the evidence did not establish that the U.S. Space Command is the prior user.

According to the Wikipedia evidence, the U.S. Space Command was inactive or non-existent prior to December 18, 2018, when Applicant filed the involved application. Rather, the evidence shows that U.S. Space Command was “reestablished” in August of 2019, approximately 17 years after the first U.S. Space Command was “inactivated” in 2002.

Moreover, the evidence did not show that the Air Force Space Command became the U.S. Space Command, nor that the public or the government refer to U.S. Space Command as a continuation of the U.S. Air Force Space Academy. 

In short, the Board found that the name U.S. Space Command was not in use on December 18, 2018, when applicant filed its application. That alone rendered the Section 2(a) refusal improper.

For the sake of completeness, the Board also considered the remaining prongs of the Notre Dame test. The Board found that the evidence failed to show that the U.S. Space Command, created in late 2019, is well-known to the general public, and thus the USPTO failed to establish the fame or reputation necessary for the mark SPACE COMMAND to point "uniquely and unmistakably" to the U.S. Space Command.  

Thus, two elements of the Notre Dame test were not met by the USPTO, and reversal of the Section 2(a) refusal was appropriate.

Read comments and post your comment here.

TTABlogger comment: A bit confusing regarding the chronology of the use of "space command" this and that. For a recent, helpful discussion of Section 2(a), see Ann Gilson LaLonde, "Giving the Wrong Impression: Section 2(a)’s False Suggestion of a Connection, 110 Trademark Reporter 6 (November–December 2020).

Text Copyright John L. Welch 2022.


At 3:40 PM, Anonymous Anne Gilson LaLonde said...

I think this opinion got it right, to borrow the Ted Davis Formulation (TM). I note that there's a TTAB opinion from 1987 allowing registration of SPACE SHUTTLE for wines. NASA v. Bully Hill Vineyards, Inc., 3 U.S.P.Q.2d 1671 (T.T.A.B. 1987). The Board dismissed an opposition from NASA on false suggestion grounds, stating that the phrase was generic and thus couldn't point uniquely and unmistakably to one entity. Maybe the opinion shouldn't have called it "generic" because the falsely-suggested entity doesn't have to have trademark rights. But I agree with the Board that neither SPACE SHUTTLE nor SPACE COMMAND points to a single entity.


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