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 Of course, most of these decisions are not precedential, but we know that even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.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:

• TTAB Upholds Section 2(a) False Connection Refusal of US SPACE FORCE for License Plate Frames, Umbrellas
• Precedential No. 24: "PURPLE RAIN" for Dietary Supplements Falsely Suggests a Connection with Prince, Says TTAB
• Precedential No. 31: TTAB Affirms Section 2(a) Refusal of "NATO" for Tents, for Falsely Suggesting a Connection With ... Guess What?
• CAFC Rejects Constitutionality Challenge to Appointment of Administrative Trademark Judges, Affirms TTAB's "SCHIEDMAYER" False Association Decision
• Precedential No. 4: TTAB Affirms 2(a) False Association and 2(c) Consent Refusals of TRUMP-IT Logo for Utility Knives
• TTAB Denies Fraud Claim But Grants Petition to Cancel SEYIDOGLU Registration on Section 2(a) False Connection Ground
• Precedential No. 25: TTAB Grants Section 2(a) Cancellation Petition: SCHIEDMAYER for Pianos Falsely Suggests a Connection with Petitioner
• TTAB Affirms Section 2(a) False Connection Refusal of CALIFORNIA BEEMERS for Auto Dealership
• WYHA? TTAB Affirms Section 2(a) False Association Refusal of TSA-KIT for "Bottles, sold empty"
• TTAB Affirms 2(a) False Association Refusal of SEAL TEAM PHYSICAL TRAINING, INC.
• Precedential No. 4: TTAB Affirms 2(a) and 2(c) Refusals of "PRINCESS KATE" and "ROYAL KATE" for Clothing
• Yankees Win! TTAB Sustains Opposition to "BASEBALLS EVIL EMPIRE" on Confusion and False Association Grounds
• TTAB Dismisses YENKO Cancellation Petition, Finding Laches Based On 14-Year Delay
• TTAB Sustains Section 2(a) False Association Opposition to "FRANKS ANATRA" for Catering Services
• Ron Coleman Comments on the TTAB''s "BENNY GOODMAN" False Association Decision
• Precedential No. 23: TTAB Affirms 2(a) False Connection Refusal of BENNY GOODMAN COLLECTION
• Finding USPS Blue Mailbox Famous, TTAB Sustains 2(d) and 2(a) Opposition
• Precedential No. 27: U.S. CUSTOMS Logo Barred by Sections 2(a) and 2(b) 
• CAFC Affirms TTAB's Shinnecock Smoke Shop Section 2(a) Ruling
• TTAB Affirms Section 2(a) False Connection Refusal of "MOJAVE" for Cigarettes
• TTAB Sustains 2(a) Refusal of "P. MAURIAT" for Musical Instruments
• TTAB Rules That "SHINNECOCK" Marks for Cigarettes Suggest a False Connection with the Shinnecock Indian Nation
• Precedential No. 23: Finding a (2)(a) False Connection, TTAB Cancels "TWIGGY" Registration for Clothing
• Precedential No. 22: TTAB Cancels Registration of "MARC CHAGALL" for Vodka, under Section 2(a) 
• TTAB Citable No. 38: Board Affirms 2(a) Refusal of "MOHAWK" for Cigarettes 

Section 2(a) False Connection Not Found:

• Precedential No. 36: TTAB Sustains Section 2(c) Opposition to DANA DESIGN Due to Lack of Consent
• TTAB Reverses Section 2(a) False Association Refusal of "WILL AND KATE PHOTOGRAPHY" for Photography Services
• TTAB Reverses Section 2(a) False Connection Refusal of SPACE COMMAND for Books, Clothing, and Toys
• Gilead Science Loses Opposition to GILEAD CAPITAL: No Section 2(d) Likelihood of Confusion and No 2(a) False Connection
• Precedential No. 1: TTAB Dismisses Olympic Committee's Section 2(a) False Connection Opposition to PIERRE DE COUBERTIN for Various Goods
• TTABlog Test: Does GLOBAL OSHA and Design Falsely Suggest a Connection with the Occupational Safety and Health Administration of the U.S. Department of Labor?
• TTAB Reverses Section 2(a) False Connection Refusal of GIPA for Intellectual Property Services
• Precedential No. 22: PIERCE-ARROW for Autos Confusable With PIERCE ARROW SOCIETY, Says TTAB
• TTAB Dismisses Rapper DR. DRE's Opposition to DR. DRAI for Health-Related Services
• TTAB Reverses False Association Refusal of ME AND THE MOUSE TRAVEL & Design
• Precedential No. 39: TTAB Dismisses 2(a) False Association Claim: MARATHON MONDAY vs. BOSTON MARATHON
• Precedential No. 36: TTAB Gives the Boot to Nike's Inadequate Section 2(a) and 2(c) Claims
• Precedential No. 31: TTAB Dismisses U. Alabama Opposition to HOUNDSTOOTH MAFIA & Design for Clothing
• Finding Likely Confusion With REGISTERED MAIL, TTAB Cancels Registrations For REGISTERED E-MAIL and (R)EGISTERED E-MAIL
• TTAB Tosses Out CAVERN CLUB Fraud and 2(a) False Association Claims
• CAFC Favors USC Trojans Over USC Gamecocks in "SC" Logo Fracas
• Precedential No. 42: TTAB Reverses 2(a) False Connection Refusal of "MARIA CALLAS" for Jewelry 
• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging 
• Finding PTO Evidence Inadequate, TTAB Reverses 2(a) and 2(d) Refusals of "HEINEKEN" for Meat Juices
• TTAB Reverses 2(a) Refusal of "L'OREAL PARIS" for Aloe Vera Drinks: PTO Fails to Show False Connection with French Cosmetics Company 
• TTAB Reverses 2(a) False Connection Refusal of "SANDIA" for Cigarettes 
• TTAB Gives Thumbs Up To WW2 Pin-Up Nose Art
• TTAB Gives "PERSONAL POST OFFICE" Its Stamp of Approval

Text Copyright John L. Welch 2022.