Monday, December 05, 2022

Precedential No. 36: TTAB Sustains Section 2(c) Opposition to DANA DESIGN Due to Lack of Consent

The Board sustained an opposition to registration of the mark DANA DESIGN in the form shown below, for backpacks, hiking equipment, tents, and related goods, on the ground that the mark comprises the name of a living individual, Dana Gleason, without his consent and is therefore barred from registration by Section 2(c) of the Trademark Act. However, the Board rejected Opposer Mystery Ranch, Ltd.'s Section 2(a) false connection claim because the opposed mark js not a close approximation of Opposer's name or identity, nor does it point uniquely or unmistakably to Opposer. Mystery Ranch, Ltd. v. Terminal Moraine Inc. dba Moraine Sales, 2022 USPQ2d 1151 (TTAB 2022) [precedential] (Opinion by Judge Frances S. Wolfson).

Entitlement to a Statutory Cause of Action: In 1985, Dana Gleason founded Dana Design Ltd. to manufacture backpacks. In 1992, the company registered the mark DANA DESIGN and in 1997 it registered the silhouette design shown above. In 2000, the marks were assigned to another company, and the registrations were cancelled in 2016 and 2018, respectively. However, the evidence showed that DANA DESIGN-branded backpacks are currently being offered for sale on the secondary market. Opposer Mystery Ranch, co-owned by Dana Gleason. has been making and selling backpacks since 2000, but apparently not under the DANA DESIGN mark.

Applicant Terminal Moraine Inc. was formed in 2015 for the specific purpose of selling backpacks and tents under the (allegedly abandoned) DANA DESIGN word mark. In 2018, it applied to register the word-plus-design mark here opposed.

The Board observed that Mystery Ranch need not have a proprietary interest in a term for purposes of its Section 2(a) claim; "rather, a Section 2(a) plaintiff has standing by virtue of who the plaintiff is, that is, the plaintiff's personality or persona." Rejecting the argument that the company's interest coincided with that of Dana Gleason, the Board found that Mystery's Ranch's interest "is in protecting Dana Gleason's persona in order to preserve Opposer's right, as a direct competitor of Applicant, to use the DANA name in promoting backpacks, tents and related goods."

The Board concluded that Mystery Ranch "demonstrated its personal stake in preventing registration of a mark in the backpack field that allegedly appropriates the persona of one of its owners promoted in connection with the business, and a reasonable belief in resultant damage." Moreover, having established its entitlement under Section 2(a), Mystery Ranch may rely on any other ground set forth in Section 2 of the Lanham Act that negates the applicant's right to registration.

Section 2(a) - False Suggestion of a Connection: Mystery Ranch is not the legal successor to Dana Design, Ltd. or its successors. However, despite the transfer of the goodwill of the DANA DESIGN trademark, the Board found that Dana Gleason did not abandon "whatever rights he may have in his 'persona.'" Moreover, the evidence showed that, in the field of backpacks and hiking gear, "the name 'Dana' is recognized as a nickname for Dana Gleason."

However, the Board found that "although consumers associate Dana Gleason and Mystery Ranch ... they are not perceived as each other's alter ego. There is no merger of the two such that the 'Dana' in DANA DESIGN refers interchangeably to either entity." The Board therefore concluded that the opposed mark is not a "close approximation" of Mystery Ranch's name or identity, and this failure to meet the first element of the Section 2(a) test was alone enough to sink its Section 2(a) claim.

Furthermore, the opposed mark does not point "uniquely and unmistakably" to Mystery Ranch, another requirement of the Section 2(a) test. The DANA DESIGN mark may point to Mystery Ranch, Dana Gleason, the defunct Dana Design Ltd., or the assignees of that company's marks.

Section 2(c) - Lack of Consent: Applicant Terminal Moraine contended that Mystery Ranch has no right to invoke Section 2(c) on behalf of Dana Gleason. The Board observed that, in order to rely on Section 2(c), an entity "must assert that it has a 'cognizable or proprietary right' in the name, image, likeness or signature, such as through a 'linkage or relationship' with that particular individual sufficient to assert the third party’s rights." (Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1195 (TTAB 1994).  

In Nike, Inc. v. Palm Beach Crossfit, 116 USPQ2d 1025 (TTAB 2015), the Board held that an entity must prove a "privity relationship with the particular individual in order to demonstrate a cognizable right through its 'linkage or relationship' with the person."

The evidence established that Dana Gleason "is publicly connected with the business in which Applicant’s mark is intended for use; consumers would make an association between Gleason and Applicant’s mark." The Board therefore found that Dana Gleason "was in privity with Dana Design Ltd and is currently in privity with Mystery Ranch." Consequently, Mystery Ranch "has a cognizable right to assert Gleason’s rights under Section 2(c) to prevent the use of his first name DANA without his written consent.

Applicant Terminal Moraine argued that Dana Gleason sold his interest in the DANA DESIGN marks decades ago and the marks were abandoned. The Board pointed out, however, that "[i]t is one thing to permit another to use one's name as a mark, quite another to 'relinquish all ownership rights in one's name and agree to allow another to register one's name." Gleason's actions in setting up Mystery Ranch in 1999, honoring Dana Design Ltd.'s warranties, continuing to interface with the public as the designer of backpacks, and promoting himself as the owner and designer, demonstrated his intent to keep using his name.

And so, the Board sustained the Section 2(c) claim.

Read comments and post your comment here.

TTABlogger comment: Seems reasonable: just because you stop using your name as a trademark doesn't mean other are free to adopt is as a mark.

Text Copyright John L. Welch 2022.


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