Tuesday, October 25, 2022

Updated TTABlog Collection of Section 2(a) False Connection Cases

Here is an updated TTABlog collection of Section 2(a) false connection cases. There appears to be a fairly even split between cases in which a false connection is found, and those not. Of course, most of these decisions are not precedential, but we know that even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.

Section 2(a) provides, in pertinent part, that "[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it (a) consists of or comprises . . . matter which may . . . falsely suggest a connection with persons living or dead, institutions, beliefs, or national symbols."

Note that, for a Section 2(a) claim of false connection, a party need not allege proprietary rights in its name for purposes of standing. "[A] petitioner may have standing by virtue of who petitioner is, that is, its identity." Petróleos Mexicanos v. Intermix S.A., 97 USPQ2d 1403 (TTAB 2010). [TTABlogged here].

The Board basically follows the CAFC's decision in University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.1983), aff’g 213 USPQ 594 (TTAB 1982) [most recently followed in NPG Records, LLC and Paisley Park Enterprises, LLC v. JHO Intellectual Property Holdings LLC, 2022 USPQ2d 770 (TTAB 2022) [TTABlogged here]], by applying a four-part test in determining a "false connection" claim under Section 2(a):

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.

Section 2(a) claims are not barred by the five-year statute of limitations of Section 14 of the Act, and therefore a cancellation petitioner will sometimes resort to a Section 2(a) claim when a Section 2(d) claim is already time-barred.

Section 2(a) False Connection Found:

Section 2(a) False Connection Not Found:

Text Copyright John L. Welch 2022.


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