Friday, May 20, 2022

TTAB Reverses Section 2(a) False Association Refusal of "WILL AND KATE PHOTOGRAPHY" for Photography Services

The Board reversed a Section 2(a) refusal of the mark WILL AND KATE PHOTOGRAPHY for "photograph services" [PHOTOGRAPHY disclaimed], rejecting the USPTO's position that the mark may falsely suggest a connection with William Windsor, aka Prince William, Duke of Cambridge, and Kate Middleton, aka Catherine, Duchess of Cambridge. The evidence failed to establish that "WILL AND KATE" points uniquely and unmistakably to William Windsor and Kate Middleton. In re Will and Kate Photography LLC, Serial No. 90568132 (May 18, 2022) [not precedential] (Opinion by Judge Peter W. Cataldo).

Section 2(a), in pertinent part, bars registration of "matter which may . . . falsely suggest a connection with persons, living or dead . . . ." Here, the USPTO had to show that:
 

(1) Applicant’s mark is the same as, or a close approximation of, the name or identity previously used by another person(s) or institution, in this case William Windsor and Kate Middleton;
(2) Applicant’s mark would be recognized as such, in that it points uniquely and unmistakably to William Windsor and Kate Middleton;
(3) William Windsor and Kate Middleton are not connected with the services offered by Applicant under the mark; and
(4) the fame or reputation of William Windsor and Kate Middleton is such that, when Applicant’s mark is used with Applicant’s services, a connection with them would be presumed. 


Under the first factor, based on various webpage references to "Will and Kate," the Board found that "Will and Kate" is a name or identity of William Windsor and Kate Middleton." Noting that the word "photography" is generic, the Board then found that applicant's mark is a close approximation of William Windsor's and Kat Middleton's names or identities.

The next question was whether the proposed mark will be recognized by purchasers of applicant's photography services as pointing uniquely and unmistakably to William Windsor and Kate Middleton. Applicant submitted twelve webpages evidencing that other businesses use the name "Will and Kate" because (like applicant) they are owned by people who happen to be named Will and Kate.

The Board pointed out that the evidence does not point to "widespread" use of "Will and Kate" to refer to William Windsor and Kate Middleton. In fact the evidence suggests that the two are commonly referred to as "William and Kate."


 
The Examining Attorney pointed out that applicant displays a crown and the phrase "We Treat You Like Royalty" in promoting its services. Applicant responded that this slogan is commonly used by event service providers. The Board sided with Applicant, concluding that applicant's mark does not point uniquely to William Windsor and Kate Middleton.

Given the number of third-party uses of “Will and Kate” formatives for a variety of goods and services, relevant consumers will perceive the designation as identifying couples or pairs of individuals named “Will and Kate.” Applicant’s use of its mark is similar to the use prevalent among these third parties. Accordingly, the requirement that the name or identity serve to point uniquely to a single entity has not been satisfied.

As to the third element of the Section 2(a) test, applicant conceded that William Windsor and Kate Middleton are not connected with its services. As to the fourth, the Examining Attorney asserted that Kate Middleton is known for her photography, and therefore a connection with applicant would be presumed. The Board, however, found the evidence insufficient to prove that William Windsor and Kate Middleton "will be associated with Applicant's photography services, despite their fame and Kate Middleton's interest in photography."

And so, the Board reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: Suppose that a sub-set of Americans, namely British-Americans, would make the association. Would that be enough to sustain the refusal?

Text Copyright John L. Welch 2022.

6 Comments:

At 11:07 AM, Anonymous Anonymous said...

"The Examining Attorney pointed out that applicant displays a crown and the phrase 'We Treat You Like Royalty' in promoting its services. Applicant responded that this slogan is commonly used by event service providers."

This seems like the critical decision point, and I disagree with the ruling here. In other settings, e.g., descriptiveness, how an applicant advertises goods or services under the mark is important evidence informing how the public will perceive it. The fact that other people NOT named Will and Kate use a crown and/or the "royalty" phrase doesn't negate that when those things appear along with the names Will and Kate, the connection between the names and the royal couple is immediate.

 
At 5:13 PM, Blogger John L. Welch said...

It seems to me that the fact that other event support businesses say "we treat you like royalty" is irrelevant. Were any of the other businesses called Will and Kate? Surely the applicant intended to create the association with the royal couple. I probably would have affirmed the refusal.

 
At 12:03 AM, Anonymous Anonymous said...

Apparently they filed for the trademark because of another photography company in Florida with the same name.

 
At 2:49 PM, Anonymous Anonymous said...

After looking into this, their names are Will and Kate. It also appears the Florida company copied them. It also appears they are Wedding Photographers which commonly uses "treat you like royalty". I'm also not sure Prince William goes by Will. That is like calling Kate "Kat" or calling Queen Elizabeth "Lizzy". Seems there were other businesses which use the tag, the crown, the names and one in England. I support this. Will and Kate should be allowed to be trademarked. I can not imagine anyone would think that Prince William and Kate Middleton are Wedding Photographers above running England.

 
At 9:49 PM, Blogger matthew h said...

Kate and 2(a) have met before: https://thettablog.blogspot.com/2015/02/precedential-no-4-ttab-affirms-2a-and.html

 
At 9:19 AM, Anonymous Anonymous said...

I think it's pretty clear that the applicants thought it would be clever to create some sort of connection with the royal couple, given how their names are similar. I think that the fact that there isn't evidence of people referring to Prince William as "Will" and thus there would be no association with the royal couple is a stretch when "Will" is combined with "Kate," as I think the combination as a whole is likely to call the royal couple to mind. So, regardless of whether it was rightly or wrongly decided, I think we can agree that the couple was deliberately trying to play off an association with the royal couple, especially given the addition of the crown and "We Treat You Like Royalty" line. While I don't fault them for trying to be cute, let's not pretend that their intentions in choosing this mark were completely innocent. When you play games like this, you're rightfully going to run into these types of refusals.

 

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