As stated in section 1203.03(e) False Suggestion of a Connection of the Trademark Manual of Examination Procedure:

Section 2(a) prohibits the registration of a mark that consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs or national symbols. See TMEP §1203.03(a) regarding persons, TMEP §1203.03(b) regarding national symbols, and TMEP §1203.03 for information about the legislative history of §2(a).

To establish that a proposed mark falsely suggests a connection with a person or an institution, it must be shown that: (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. Association Pour La Defense et la Promotion de L'Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838 (TTAB 2007); In re White, 80 USPQ2d 1654 (TTAB 2006); In re White, 73 USPQ2d 1713 (TTAB 2004); In re Nuclear Research Corp., 16 USPQ2d 1316, 1317 (TTAB 1990); Buffett v. Chi-Chi's, Inc., 226 USPQ 428, 429 (TTAB 1985); In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985).

In In re Sloppy Joe's International Inc., 43 USPQ2d 1350, 1353-34 (TTAB 1997), the Trademark Trial and Appeal Board held that Ernest Hemingway's friendship with the original owner of applicant's bar, his frequenting the bar and his use of the back room as an office is not the kind of "connection" contemplated by §2(a). Rather, a commercial connection, such as an ownership interest or commercial endorsement or sponsorship of applicant's services would be necessary to entitle the applicant to registration. In re White, 80 USPQ2d at 1660-61 ("there must be a specific endorsement, sponsorship or the like of the particular goods and services, whether written or implied").

If it is unclear whether the person or institution is connected with the goods sold or services performed by the applicant, the examining attorney should make an explicit inquiry under 37 C.F.R. §2.61(b).

A refusal on this basis requires, by implication, that the person or institution with which a connection is falsely suggested must be the prior user. In re Nuclear Research Corp., 16 USPQ2d at 1317; In re Mohawk Air Services Inc., 196 USPQ 851, 854-55 (TTAB 1977).

Intent to identify a party or trade on its goodwill is not a required element of a §2(a) claim of false suggestion of an association with such party. S & L Acquisition Co. v. Helene Arpels, Inc., 9 USPQ2d 1221, 1224 (TTAB 1987); Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228 USPQ 752, 754 (TTAB 1985). However, evidence of such an intent could be highly persuasive that the public would make the intended false association. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 1377, 217 USPQ 505, 509 (Fed. Cir. 1983), aff'g 213 USPQ 594 (TTAB 1982).

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  • Trademark Act Section 2(a).
    • ASSOCIATION POUR LA DEFENSE ET LA PROMOTION DE L'OEUVRE DE MARC CHAGALL dite COMITE MARC CHAGALL v. Bondarchuk, Cancellation No. 92042323, (TTAB 2007)
      • Trademark Act Section 2(a) states, in relevant part, "No 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 disparage or falsely suggest a connection with persons living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute."
  • Section 2(a) of the Act seeks to protect the name of an individual or institution which was not technically a trademark/trade name.
    • In re Jose Ignacio Guisado Urbano, Serial No. 74/441,447, (TTAB 1999)
      • We consider, first, the refusal under Section 2(a) of the Act. Section 2(a) of the Act requires that registration be refused if the mark sought to be registered "consists of or comprises matter which … may falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." As the Court explained in University of Notre Dame du Lac v. J.C. Gourmet Food Imports, Inc., 703 F.2d 1373, 217 USPQ 505 (Fed. Cir. 1983), "A reading of the legislative history with respect to what became Section 2(a) shows that the drafters were concerned with protecting the name of an individual or institution which was not a technical "trademark" or "trade name" upon which an objection could be made under Section 2(d) … Although not articulated as such, it appears that the drafters sought by Section 2(a) to embrace the concepts of the right to privacy, an area of the law then in an embryonic state …"
  • Secton 2(a) provides three grounds for refusing registration, but only the second part prohibits registration of matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt or disrepute.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • Section 2(a) contains three parts, set off by semicolons. The first part provides that "immoral, deceptive, or scandalous matter" shall not be registered, and the third deals with indicators of the geographic origin of wines or spirits. Neither of these provisions is tied to "persons, living or dead, institutions, beliefs, or national symbols," as is the second part of Section 2(a). The second part prohibits registration of (emphasis added) "matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt or disrepute."
  • While the substantive elements for each of the three refusals embodied in Section 2(a) may, and do, vary, there is nothing in the language of the statute to suggest that the meaning of "persons" or "institutions" is any broader or narrower for one of these grounds for refusal as opposed to another.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • The plain meaning of this particular provision of the statute requires refusal of registration of three types of proposed marks: (1) matter which disparages persons, institutions, beliefs or national symbols; (2) matter which falsely suggests a connection with persons, institutions, beliefs or national symbols; and (3) matter which brings persons, institutions, beliefs or national symbols into contempt or disrepute. As these three grounds for refusal all derive from the same subsection of Section 2(a) and all require a connection of the matter refused registration with "persons, institutions, beliefs or national symbols," we may look to prior cases involving any one of these refusals to determine the threshold question in this case, i.e., whether APACHE falsely suggests a connection with "persons" or "institutions." In other words, while the substantive elements for each of the three refusals embodied in this part of Section 2(a) may, and do, vary, there is nothing in the language of the statute to suggest that the meaning of "persons" or "institutions" is any broader or narrower for one of these grounds for refusal as opposed to another.
  • Section 2(a) applies to both juristic persons and persons.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • Section 45 of the Trademark Act, 15 U.S.C. § 1127, broadly defines "person" and "juristic person." Section 2(a) has been held to apply to commercial, juristic persons, as well as natural persons. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). "Institutions" was broadly construed in In re North American Free Trade Association, 43 USPQ2d 1282 (TTAB 1998) [hereinafter NAFTA], and in In re Urbano, 51 USPQ2d 1776 (TTAB 1999).
  • History of False Suggestion claims.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • We turn, then, to the elements of a Section 2(a) false suggestion of connection refusal. As a preliminary matter, we note that published precedents from our primary reviewing court are few in number. Some 30-35 years ago, the Court of Customs and Patent Appeals considered a Section 2(a) false suggestion claim, at least when brought by commercial plaintiffs, to be akin to a Section 2(d) likelihood of confusion claim. See, e.g., Frederick Gash, Inc. v. Mayo Clinic, 461 F.2d 1395, 174 USPQ 151, 152 (CCPA 1972) ("the inquiry under this provision of the statute is similar to that under § 2(d), 15 U.S.C. 1052(d), which is likelihood of confusion of the marks as applied to the respective goods and/or services"); and Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715, 721 ("we do not agree with the further argument that 'Blue Magic' does 'falsely suggest a connection with' appellant. To do this there would have to exist, at the very least, the same likelihood of confusion with appellant's 'MAGIC' marks, under section 2(d), which appellant contends for under its final point. We can therefore discuss these two questions together.").
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • It was not until approximately 10 years after the Frederick Gash decision that the Federal Circuit issued its seminal decision in the Notre Dame case. In that decision, the Federal Circuit noted that the Board, subsequent to Morehouse, approached Section 2(a) false suggestion cases as if they required, in essence, a showing of likelihood of confusion under Section 2(d) plus a showing of intent to trade upon the goodwill of a prior user, which was termed a "stringent test." Notre Dame, 217 USPQ at 507-08. The Notre Dame decision then laid down certain foundational principles for current Section 2(a) analysis: that Section 2(a) was intended by its drafters to preclude registration of a mark which conflicts with another's rights, even if such rights were not technical trademark or trade name rights that could be the basis for a Section 2(d) claim; that a name cannot, however, be protected in gross; that protection from false suggestion under Section 2(a) has its roots in rights of privacy and publicity, i.e., a right to control use of one's identity; that the name or an equivalent thereof claimed to be appropriated must be unmistakably associated with a particular personality or "persona"; and that given the context or circumstances of use, the name must point uniquely to the other personality or persona. Id. at 508-09.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • Since Notre Dame, the Board has had occasion to develop a fairly standard analysis under Section 2(a). It has been said that there are four elements: 1) that 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 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. See, In re Wielinski, 49 USPQ2d 1754 (TTAB 1998) overruled only as to Section 2(e)(1) analysis in In re WNBA Enterprises LLC, 70 USPQ2d 1153 (TTAB 2003); TMEP Section 1203.03(e) (3rd ed., rev. 2, May 2003); and J. McCarthy, McCarthy on Trademarks and Unfair Competition, § 19.76 (4th ed. 2001). The refusal has also been discussed as requiring three elements. See Urbano, 51 USPQ2d at 1778, and NAFTA, 43 USPQ2d at 1284.7 FOOTNOTE 7 "When viewed as a three-element test, the first and second elements of the four-element test essentially are viewed as one."
  • Elements for a claim of false suggestion.
    • ASSOCIATION POUR LA DEFENSE ET LA PROMOTION DE L'OEUVRE DE MARC CHAGALL dite COMITE MARC CHAGALL v. Bondarchuk, Cancellation No. 92042323, (TTAB 2007)
      • In Buffett v. Chi-Chi's, Inc., 226 USPQ 428 (TTAB 1985), the Board set forth the requirements for maintaining a claim of a false suggestion of a connection under Trademark Act Section 2(a), citing University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), aff'g 213 USPQ 594 (TTAB 1982). The Board stated: "The Board now requires that a plaintiff asserting a claim that a mark falsely suggests a connection with persons living or dead, or institutions, demonstrate (i) that the defendant's mark is the same or a close approximation of plaintiff's previously used name or identity; (ii) that the mark would be recognized as such; (iii) that the plaintiff is not connected with the activities performed by the defendant under the mark; and (iv) that the plaintiff's name or identity is of sufficient fame or reputation that when the defendant's mark is used on the goods or services, a connection with the plaintiff would be presumed." Id. at 429.
    • In re White, Serial No. 78146926, (TTAB 2006).
      • To support a refusal under the "falsely suggests a connection" clause of Section 2(a), it is the examining attorney's burden to show: (1) that 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 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. See Buffett v. Chi- Chi's, Inc., 226 USPQ 428 (TTAB 1985). See also, In re Sloppy Joe's International Inc., 43 USPQ2d 1350 (TTAB 1997); and In re Kayser-Roth Corp., 29 USPQ2d 1379 (TTAB 1993).
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • To prevail under Section 2(a), "[I]t must be demonstrated: (1) that the marks are the same as, or a close approximation of, the name or identity previously used by the other person; (2) that the marks would be recognized as such, in that they point uniquely and unmistakably to that person; (3) that the person named by the marks is not connected with the activities performed by applicant under the marks; and (4) that 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 marks are used on applicant's goods." In re Wielinski, 49 USPQ2d 1754, 1757 (TTAB 1998). See also In re White, 80 USPQ2d 1654, 1658 (TTAB 2006).
  • The fame of the name of a person or institution is not sufficient in and of itself to provide the basis for protection of the name under Section 2(a) false suggestion analysis.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • The last factor we must consider is whether the name APACHE is of sufficient fame or reputation that a connection with the federally recognized Apache tribes would be presumed by consumers of cigarettes. We caution, however, that the inquiry here is not focused on determining whether the APACHE name would qualify as famous under traditional likelihood of confusion analysis or as famous under evolving dilution analysis. Indeed, the Notre Dame case does not explicitly state that a name must be famous to be protected under Section 2(a). In fact, as noted in Notre Dame, the fame of the name of a person or institution is not sufficient in and of itself to provide the basis for protection of the name under Section 2(a) false suggestion analysis. Notre Dame, 217 USPQ at 509.
  • The basis for protection of a name under Section 2(a) is whether the name per se is unmistakably associated with a particular person or institution and, as used would point uniquely to the person or institution. In short, it is the combination of (1) the name of sufficient fame or reputation and (2) its use on or in connection with particular goods or services, that would point consumers of the goods or services uniquely to a particular person or institution.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • Rather, the key is whether the name per se is unmistakably associated with a particular person or institution and, as used would point uniquely to the person or institution. In short, it is the combination of (1) the name of sufficient fame or reputation and (2) its use on or in connection with particular goods or services, that would point consumers of the goods or services uniquely to a particular person or institution.
  • Section 2(a) was designed to protect the name of an individual or institution which was not a "technical" trademark or "trade name" upon which an objection could be made under Section 2(d).
    • In re White, Serial No. 78146926, (TTAB 2006).
      • Section 2(a) prohibits, inter alia, the registration of a mark if it "consists of or comprises … matter which may … falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols." As the Court explained in The University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505, 508 (Fed. Cir. 1983), Section 2(a) was designed to protect "the name of an individual or institution which was not a ‘technical' trademark or ‘trade name' upon which an objection could be made under Section 2(d)."
  • Section 2(a) embraces the concepts of the right of privacy and the related right of publicity.
    • In re White, Serial No. 78146926, (TTAB 2006).
      • Further, the Court stated that Section 2(a) embraces the concepts of the right of privacy and the related right of publicity. 217 USPQ at 509.
  • As a threshold matter, the TTAB must determine whether the name claimed to be appropriated by another must be unmistakably associated with a particular personality or persona.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • As a threshold matter, we must determine whether the false suggestion provision of Section 2(a) can be applied in this case, as that provision requires a showing of false suggestion of a connection "with persons, living or dead, institutions, beliefs, or national symbols."
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • Returning to the Notre Dame case, we note that "the initial and critical requirement is that the name (or an equivalent thereof) claimed to be appropriated by another must be unmistakably associated with a particular personality or persona. Notre Dame, 217 USPQ at 509.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • Of course, Notre Dame was an inter partes proceeding, which accounts for the reference to "the name (or an equivalent thereof) claimed to be appropriated." In an ex parte proceeding, on the other hand, we are concerned not with that claimed by a plaintiff to have been appropriated, but with that which an applicant seeks to register as a mark and which the examining attorney asserts is the name, or equivalent thereof, of another. Nonetheless, it remains critical that the matter for which registration is sought must be the name or an equivalent which is sought to be appropriated by the applicant.
  • As for the second element, it is important to ascertain Applicant's intent when it selected the disputed mark. The defense that the result intended was not achieved would be hollow indeed.
    • ASSOCIATION POUR LA DEFENSE ET LA PROMOTION DE L'OEUVRE DE MARC CHAGALL dite COMITE MARC CHAGALL v. Bondarchuk, Cancellation No. 92042323, (TTAB 2007)
      • We agree with petitioner on all points. First, we cannot discount the importance of respondent's intent. In the Notre Dame case, one of the principal reasons the University's claim failed was because NOTRE DAME "is not a name solely associated with the University." Notre Dame, 217 USPQ at 509. Gourmet, the applicant, had explained that it had Notre Dame Cathedral in Paris, not the University, in mind when it selected the mark. Furthermore, although the Court found no false suggestion of a connection with the University, the Court stated, "This conclusion could be changed if the evidence showed that Gourmet intended to identify the University, as the University argues. Evidence of such intent would be highly persuasive that the public will make the intended false suggestion of a connection. The defense that the result intended was not achieved would be hollow indeed." Id.
    • ASSOCIATION POUR LA DEFENSE ET LA PROMOTION DE L'OEUVRE DE MARC CHAGALL dite COMITE MARC CHAGALL v. Bondarchuk, Cancellation No. 92042323, (TTAB 2007)
      • Indeed, this is just the type of case where the respondent's intent is clear and, as the Court observed in the Notre Dame case, "the defense that the result intended was not achieved would be hollow indeed." Notre Dame, 217 USPQ at 509. We infer from the evidence, and in particular respondent's letter and label, that respondent regarded the name of Marc Chagall as one of significant reputation which would generate good will in the sale of respondent's vodka. We find this evidence highly persuasive. Respondent's denial that this is the case in this proceeding rings hollow.
  • A Section 2(a) false suggestion case does not involve anything like the analysis of the elements of a name as would be involved in a Section 2(d) case involving a question of likelihood of confusion.
    • ASSOCIATION POUR LA DEFENSE ET LA PROMOTION DE L'OEUVRE DE MARC CHAGALL dite COMITE MARC CHAGALL v. Bondarchuk, Cancellation No. 92042323, (TTAB 2007)
      • Here also we reject the suggestion that we apply a likelihood-of-confusion standard. In the Notre Dame case, the Court clearly distinguished the analysis required with respect to a claim of falsely suggesting a connection as opposed to a claim of likelihood of confusion due to the different origins and purposes of the claims. Notre Dame, 217 USPQ at 509.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • Applicant contends that the other elements of the names of the federally recognized Apache tribes are significant in their own right and it would be error, in essence, to elevate the significance of Apache over the other terms. A Section 2(a) false suggestion case does not involve anything like the analysis of the elements of the names of these tribes as would be involved if this were a Section 2(d) case involving a question of likelihood of confusion. Wielinksi, 49 USPQ2d at 1757 ("Section 2(a) … is not about likelihood of confusion with trademarks. That problem is covered by Section 2(d) of the Act."). This case does not require analysis of the tribes' names to divine which terms may be dominant. Suffice it to say that the Tiller Research reference work reveals that the geographic terms in many of the tribes' names, e.g., Fort McDowell, Fort Sill, and White Mountain, may not be as integral to the identity or persona of each tribe, when these terms may merely reflect locations the tribes were relocated to by government action, rather than choice, and there is nothing to indicate that the tribes themselves established "forts."
  • The fourth element – fame or reputation – is different from the strict fame requirement which may apply to other grounds for opposition or cancellation.
    • ASSOCIATION POUR LA DEFENSE ET LA PROMOTION DE L'OEUVRE DE MARC CHAGALL dite COMITE MARC CHAGALL v. Bondarchuk, Cancellation No. 92042323, (TTAB 2007)
      • In fact, the requirement which applies here is one of "…fame or reputation" (emphasis provided) rather than a strict fame requirement which may apply with respect to other grounds for opposition or cancellation. Buffett, 226 USPQ at 429. Cf. NASDAQ Stock Market Inc. v. Antarctica S.r.l., 69 USPQ2d 1718 (TTAB 2003); Toro Co. v. ToroHead Inc., 61 USPQ 1164, 1173 (TTAB 2001).
  • Evidence of fame or reputation needs to be sufficiently broad but not necessarily needed to show fame throughout the entire U.S.
    • ASSOCIATION POUR LA DEFENSE ET LA PROMOTION DE L'OEUVRE DE MARC CHAGALL dite COMITE MARC CHAGALL v. Bondarchuk, Cancellation No. 92042323, (TTAB 2007)
      • We also reject respondent's suggestion that petitioner's showing of fame or reputation is inadequate because it does not show fame in the entire United States. The evidence, in fact, shows that the works of Marc Chagall have been featured in exhibits in several major U.S. cities in several regions, and that his works are also displayed beyond museums and galleries in public places. To the extent petitioner may be required to show fame or reputation, the geographic scope of this evidence is sufficiently broad.
  • It may not be necessary to produce a survey, consumer testimony or expert opinions to show the necessary "fame or reputation" for purposes of the claim of false suggestion of a connection.
    • ASSOCIATION POUR LA DEFENSE ET LA PROMOTION DE L'OEUVRE DE MARC CHAGALL dite COMITE MARC CHAGALL v. Bondarchuk, Cancellation No. 92042323, (TTAB 2007)
      • We also reject respondent's suggestion that a survey, consumer testimony or expert opinions are required in this case to show the necessary "fame or reputation" for purposes of the claim of false suggestion of a connection. We find no support for imposing such a requirement in conjunction with the claim at issue here.
  • Burden of Proof: The Examining Attorney must establish that the mark in question, or the relevant portion, points uniquely to persons, living or dead, institutions, beliefs, or national symbols.
    • In re Jose Ignacio Guisado Urbano, Serial No. 74/441,447, (TTAB 1999)
      • The Examining Attorney, who has the burden of establishing the elements of the refusal to register under Section 2(a), must establish that the mark in question, or the relevant portion, points uniquely to persons, living or dead, institutions, beliefs, or national symbols. University of Notre Dame du Lac v. J.C. Gourmet Food Imports, Inc., supra at 509.
  • Burden of Proof: The Examining Attorney must also establish that the person/institution (1) is not connected with the goods or services performed by applicant under the mark, and (2) is sufficiently famous that a connection with such person or institution would be presumed when applicant's mark is used in connection with its goods or services.
    • In re Jose Ignacio Guisado Urbano, Serial No. 74/441,447, (TTAB 1999)
      • Further, the Examining Attorney must establish that such person or institution:
        (1) is not connected with the goods or services performed by applicant under the mark, and (2) is sufficiently famous that a connection with such person or institution would be presumed when applicant's mark is used in connection with its goods or services. See, In re Sloppy Joe's International Inc., 43 USPQ2d 1350 (TTAB 1997); In re North American Free Trade Association, 43 USPQ2d 1282 (TTAB 1997); In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990); In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985); and Buffett v. Chi-Chi's Inc., 226 USPQ 428 (TTAB 1985).
  • Just as an applicant cannot take another's name and add matter to it to avoid a refusal of false suggestion under Section 2(a), an applicant cannot take a significant element of the name of another and avoid a refusal by leaving one or more elements behind, provided that that which has been taken still would be unmistakably associated with the other person.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • In this case, we reject applicant's contention that because none of the federally recognized Apache tribes goes by the name APACHE alone and each has one or more other terms in its name, APACHE per se cannot be found to be the name or equivalent thereof of these tribes. Just as an applicant cannot take another's name and add matter to it to avoid a refusal of false suggestion under Section 2(a), an applicant cannot take a significant element of the name of another and avoid a refusal by leaving one or more elements behind, provided that that which has been taken still would be unmistakably associated with the other person.
  • Dictionary definitions and capitalization may be helpful in determining the meaning a word would have to consumers.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • In support of her contention that APACHE is not uniquely and unmistakably associated with the tribes, applicant relies in part on dictionary definitions of "apache" and "Apache." The fact that the former word begins with a lower case letter "a" and the latter begins with an upper case letter "A" is significant. The term "apache" with a lower case "a" is, apparently, a French term and is pronounced differently than "Apache." Thus, while "apache" means "a member of the Parisian underworld" or "thug, ruffian" in French, there is no evidence of record that this meaning would be apparent to consumers of cigarettes in the United States.9

        FOOTNOTE 9 "In addition, the dictionary definition of "apache" submitted by applicant shows that the French term is "from Apache, Apache Indian." Therefore, this definition does not show that the term has historically had a variety of meanings but, rather, actually tends to show that term has historically been associated with certain Native American tribes."

  • An applicant cannot take a significant element of the name of another and avoid a refusal by leaving one or more elements behind, provided that that which has been taken still would be unmistakably associated with the other person.
    • In re White, Serial No. 78146926, (TTAB 2006).
      • As the Board stated in another case involving this applicant, In re Julie White, 73 USPQ2d 1713, 1719 (TTAB 2004)[APACHE would falsely suggest a connection between applicant and the federally recognized Apache Native America tribes], "an applicant cannot take a significant element of the name of another and avoid a refusal by leaving one or more elements behind, provided that that which has been taken still would be unmistakably associated with the other person." In this case, we are not persuaded by applicant's argument that MOHAWK is not the same as or a close approximation of the designation for the federally recognized St. Regis Band of Mohawk Indians of New York because the terms St. Regis and New York are not included in applicant's mark.
  • Evidence: The Board does not take judicial notice of third-party registrations, and the mere listing of them is insufficient to make them of record.
    • In re White, Serial No. 78146926, (TTAB 2006).
      • Insofar as the evidence on which applicant relies to establish that there are other MOHAWK marks in use, this evidence is of limited probative value. The submission of a list of registrations and applications, whether from a private company's database or the USPTO's TESS database, is insufficient to make such registrations and applications of record. See In re Carolina Apparel, 48 USPQ2d 1542, 1542 n. 2 (TTAB 1998) ["The Board does not take judicial notice of third-party registrations, and the mere listing of them is insufficient to make them of record"].
  • Evidence: Further, the actual copies of third-party registrations and applications are not evidence that the marks which are the subjects thereof are in use and that the public is familiar with the use of those marks.
    • In re White, Serial No. 78146926, (TTAB 2006).
      • Further, the actual copies of third-party registrations and applications are not evidence that the marks which are the subjects thereof are in use and that the public is familiar with the use of those marks. See, e.g., AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983); and In re Duofold Inc., 184 USPQ 638 (TTAB 1974).
  • Evidence: Applicant has pointed to no case law holding that third-party registrations and/or applications should be accorded significant weight in our analysis of a Section 2(a) false suggestion refusal.
    • In re White, Serial No. 78146926, (TTAB 2006).
      • In this regard, we note that applicant has pointed to no case law holding that third-party registrations and/or applications should be accorded significant weight in our analysis of a Section 2(a) false suggestion refusal.
  • Case Finding: With respect to the false suggestion of connection, a commercial (not just friendship) connection, such as an ownership interest or commercial endorsement or sponsorship of applicant's services, would be necessary to entitle applicant to register the involved mark.
    • In re White, Serial No. 78146926, (TTAB 2006).
      • In the case of In re Sloppy Joe's International Inc., 43 USPQ2d 1350 (TTAB 1997), the applicant sought to register the mark SLOPPY JOE'S and a representation of Ernest Hemingway for restaurant and bar services. In affirming the refusal of registration under Section 2(a) on the ground of a false suggestion of a connection with Ernest Hemingway, the Board held that Ernest "Hemingway's friendship with the original bar owner of Sloppy Joe's bar, his frequenting the bar and use of the back room as an office was not the kind of ‘connection' contemplated by Section 2(a). Rather, a commercial connection, such as an ownership interest or commercial endorsement or sponsorship of applicant's services, would be necessary to entitle applicant to register the involved mark." Id. at 1354.
    • In re Los Angeles Police Revolver and Athletic Club, Inc., Serial No. 75786737, (TTAB 2003).
      • In the Sloppy Joe's case, the board held that Ernest "Hemingway's friendship with the original owner of Sloppy Joe's bar, his frequenting the bar and use of the back room as an office is not the kind of ‘connection' contemplated by Section 2(a). Rather, a commercial connection, such as an ownership interest or commercial endorsement or sponsorship of applicant's services, would be necessary to entitle applicant to register the involved mark." 43 USPQ2d at 1354. The board also found that Hemingway's purported claim of co-ownership of the bar was "mere folklore." Id.
  • Case Finding: Endorsement or sponsorship of the club's specific goods, namely clothing and beverage glasses, was unnecessary; rather a general commercial connection between the club and the LAPD was sufficient.
    • In re White, Serial No. 78146926, (TTAB 2006).
      • In the more recent case of In re Los Angeles Police Revolver and Athletic Club, Inc., 69 USPQ2d 1630 (TTAB 2003), the applicant, a police athletic club, sought to register the mark TO PROTECT AND TO SERVE for clothing and beverage glasses. The identical phrase "To Protect and To Serve" is the official slogan of the Los Angeles Police Department (LAPD). In reversing the refusal to register under Section 2(a) on the ground of a false suggestion of a connection between the police athletic club and the LAPD, the Board found that the evidence demonstrated that the police athletic club and the LAPD had an extensive mutual relationship for decades. Although there was no formal or written agreement between the police athletic club and the LAPD concerning the club's activities, the evidence showed that the LAPD had "openly advanced the commercial activities of Applicant" and the Board found "a substantial commercial connection between applicant and the LAPD." Id. at 1633. The LAPD's endorsement or sponsorship of the club's specific goods, namely clothing and beverage glasses, was unnecessary; rather a general commercial connection between the club and the LAPD was sufficient.
    • In re Los Angeles Police Revolver and Athletic Club, Inc., Serial No. 75786737, (TTAB 2003).
      • The evidence in this case demonstrates a relationship between applicant and the LAPD that is historical and not "mere folklore." It is substantial to the extent that it involves the training of LAPD police officers in association with applicant as well as the use and maintenance of applicant's real estate. Finally, while the details are not entirely clear, both parties seem to have accepted this arrangement because applicant operates its shop in facilities shared with the LAPD and the LAPD refers inquiries regarding LAPD merchandise to the LAPRAAC.
    • In re Los Angeles Police Revolver and Athletic Club, Inc., Serial No. 75786737, (TTAB 2003).
      • Based on this evidence, we cannot say that the evidence supports a conclusion that applicant's mark falsely suggests a connection with the LAPD. Instead, the evidence suggests that there is a substantial commercial connection between applicant and the LAPD. The evidence from the LAPD supports applicant's argument that the LAPD "openly advanced the commercial activities of Applicant." Reply Brief at 4. Clearly, applicant is no interloper trading on LAPD's slogan. The slogan was first developed as the motto of the Los Angeles Police Academy that was located on applicant's grounds and with which applicant has been closely associated. Applicant and the LAPD have a long history of a "symbiotic" relationship. Because there is an actual commercial connection between applicant and the LAPD, the record does not demonstrate that the mark falsely suggests a connection with the LAPD.
  • Case Finding: Where the applicant is one member of the group at issue, there must be a specific endorsement, sponsorship or the like of the particular goods and services, whether written or implied.
    • In re White, Serial No. 78146926, (TTAB 2006).
      • We recognize that, unlike the above cases, applicant is connected to the institution in this case, in the sense that she is a member of the Mohawk tribe. Yet, applicant is but one member of the tribe, and more than one individual can correctly claim a connection to the Mohawk tribe. To overcome a Section 2(a) refusal in such a situation, a general commercial connection between the applicant and the institution is insufficient. Rather, the commercial connection must be specific and relate to the particular goods and services. In other words, there must be a specific endorsement, sponsorship or the like of the particular goods and services, whether written or implied.
  • Case Finding: The license and d/b/a certificate issued by the Mohawk tribe to Native American Trading Associates is not evidence that the tribe endorses or is a sponsor of the cigarettes applicant intends to sell.
    • In re White, Serial No. 78146926, (TTAB 2006).
      • On the facts of this case, we find that a specific commercial connection between applicant and the Mohawk tribe has not been proven. The license and d/b/a certificate issued by the Mohawk tribe to Native American Trading Associates is not evidence that the tribe endorses or is a sponsor of the cigarettes applicant intends to sell. We note that the license is general in nature and simply states that Native American Trading Associates has agreed to the rules and regulations regarding the manufacturing of tobacco products on the Mohawk tribe's reservation. The d/b/a certificate also is general in nature and states that Native American Trading Associates has requested and been approved to operate a tobacco manufacturing business on the reservation. Neither of these documents, however, is a specific endorsement or sponsorship of Native American Trading Associates' activities, and in turn, the cigarettes applicant intends to sell. Thus, we find that these documents do not evidence a specific commercial connection between applicant and the Mohawk tribe.
  • Case Finding: While the tribe is undoubtedly aware of Native American Trading Associates' tobacco manufacturing activities, there is no evidence of a long-standing mutual relationship between Native American Trading Associates and the tribe.
    • In re White, Serial No. 78146926, (TTAB 2006).
      • Further, this is not a situation where we can imply a specific commercial connection between applicant and the Mohawk tribe. While the tribe is undoubtedly aware of Native American Trading Associates' tobacco manufacturing activities, there is no evidence of a long-standing mutual relationship between Native American Trading Associates and the tribe. On the contrary, both the license and d/b/a certificate were issued in 2004 and both are for relatively short periods of time. Moreover, there is no evidence that the Mohawk tribe has openly advanced Native American Trading Associates' tobacco manufacturing activities. In short, this is not a situation where we can imply that the Mohawk tribe has specifically endorsed Native American Trading Associates' tobacco manufacturing activities, and in turn, the cigarettes applicant intends to sell.
  • Case Finding: Application is denied - The awarding of a federal registration to applicant individually for the mark "Mohawk" for cigarettes would amount to the awarding of the tribe's "imprimatur" to the mark.
    • In re White, Serial No. 78146926, (TTAB 2006).
      • The awarding of a federal registration to applicant individually for the mark MOHAWK for cigarettes would amount to the awarding of the tribe's "imprimatur" to the mark. In the absence of a specific commercial connection between the Mohawk tribe and applicant with respect to the goods involved herein, namely, cigarettes, we are unable to find the kind of commercial connection contemplated by Section 2(a).
  • Case Finding: As to the fourth factor of the Section 2(a) test, we must consider whether the name "Mohawk" is of sufficient fame or reputation that a connection with the federally recognized Mohawk tribe would be presumed by consumers of cigarettes.
    • In re White, Serial No. 78146926, (TTAB 2006).
      • As to the fourth factor of the Section 2(a) test, we must consider whether the name "Mohawk" is of sufficient fame or reputation that a connection with the federally recognized Mohawk tribe would be presumed by consumers of cigarettes. Here, the test is whether the name "Mohawk" per se is unmistakably associated with the Mohawk tribe, and as used, would point uniquely to the tribe.
  • The mere fact that applicant is the distributor of goods is not necessarily fatal to its claim of ownership of the mark.
    • In re Los Angeles Police Revolver and Athletic Club, Inc., Serial No. 75786737, (TTAB 2003).
      • The examining attorney's argument seems to rest on the fact that the motto "To Protect and To Serve" is the official motto of the LAPD as well as the fact that applicant identifies itself as the exclusive distributor for items bearing the LAPD name. However, the mere fact that applicant is the distributor of goods is not necessarily fatal to its claim of ownership of the mark. 2 McCarthy on Trademarks and Unfair Competition, § 16:46 (4th ed. 2003) ("[O]ne who only distributes goods made by another can be the ‘owner' of a trademark which the distributor places on the goods to identify the distributor").
    • In re Los Angeles Police Revolver and Athletic Club, Inc., Serial No. 75786737, (TTAB 2003).
      • Applicant claims that it controls the nature and quality of the goods and that it affixes the mark to the goods. This is not a case where applicant is distributing the "goods of a manufacturer or producer." In re Bee Pollen from England Ltd., 219 USPQ 163, 166 (TTAB 1983). Applicant is the source of the goods and the party that the examining attorney alleges is the owner of the mark (LAPD) denies that it is the source of goods of this nature sending purchasers for these goods to applicant.
    • In re Los Angeles Police Revolver and Athletic Club, Inc., Serial No. 75786737, (TTAB 2003).
      • The examining attorney apparently considers the LAPD's ownership rights in the motto to be very broad. "The examining attorney should accept the applicant's statement regarding ownership of the mark unless it is clearly contradicted by information in the record." TMEP § 1201.01 (2003). We are reluctant to resolve this question adverse to applicant in an ex parte proceeding when applicant has presented a plausible explanation that it is the owner of the mark for which it seeks registration. We conclude by observing that this is an unusual case that perhaps raises more questions that it answers. It is clear that the motto TO PROTECT AND TO SERVE is the official motto of the Los Angeles Police Department. It is also apparent that applicant and the LAPD have had a long and close relationship. However, we are faced with only two fairly narrow issues, i.e. whether applicant owns the mark and whether the mark, as used on applicant's goods, falsely suggests a connection with the LAPD. As set out above, we cannot say that applicant is not the owner of this mark or that the mark as used on the goods falsely suggests a connection with the LAPD. Those are the only issues we decide.
  • Case Finding: Opposer has not presented evidence sufficient to establish the first element of that ground of opposition, i.e., that applicant's ROADRUNNER MAPS and design mark is the same as or a close approximation of opposer's name or identity.
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • However, opposer's Section 2(a) "false suggestion of a connection" ground of opposition fails for lack of proof. Opposer has not presented evidence sufficient to establish the first element of that ground of opposition, i.e., that applicant's ROADRUNNER MAPS and design mark is the same as or a close approximation of opposer's name or identity. See Buffett v. Chi-Chi's, Inc., 226 USPQ 428, 429 (TTAB 1985). Opposer owns ROAD RUNNER trademarks, but neither applicant's ROADRUNNER MAPS and design mark, nor even opposer's ROAD RUNNER mark or cartoon character, constitutes opposer's name or identity.
  • Case Finding: The name and/or likeness of a well-known writer may well be extended for use on goods or services unrelated to writing
    • ASSOCIATION POUR LA DEFENSE ET LA PROMOTION DE L'OEUVRE DE MARC CHAGALL dite COMITE MARC CHAGALL v. Bondarchuk, Cancellation No. 92042323, (TTAB 2007)
      • Though neither party mentions the case, we note some significant similarities between this case and In re Sloppy Joe's Int'l, 43 USPQ2d 1350 (TTAB 1997). In that case, the applicant was attempting to register a mark consisting, in part, of a portrait of Ernest Hemingway for "restaurant and bar services," and the Board affirmed the refusal of registration on the ground of a false suggestion of a connection. Id. at 1252. We find the marks, and the goods and services in the Hemingway case, analogous to the case before us.
    • ASSOCIATION POUR LA DEFENSE ET LA PROMOTION DE L'OEUVRE DE MARC CHAGALL dite COMITE MARC CHAGALL v. Bondarchuk, Cancellation No. 92042323, (TTAB 2007)
      • Both cases involve individuals noted for their literary or artistic achievements who died relatively recently. In the Hemingway case, the Board rejected the applicant's argument, "…that Hemingway is an historical figure, known for his writing, an activity unrelated to bar and restaurant services, and [that] prospective purchasers of the applicant's services would not presume a connection between such services and Hemingway." Id. at 1353. Cf. In Re Lucien Picard Watch Corp. v. Crescent Corp., 314 F.Supp. 329, 165 USPQ 459 (S.D.N.Y. 1970) (Use of DA VINCI mark on jewelry does not create a false connection with Leonardo Da Vinci).
    • ASSOCIATION POUR LA DEFENSE ET LA PROMOTION DE L'OEUVRE DE MARC CHAGALL dite COMITE MARC CHAGALL v. Bondarchuk, Cancellation No. 92042323, (TTAB 2007)
      • Rather, The Board concluded that, "the names and likenesses of well known persons frequently are licensed for use on various goods and services. (Citations omitted.) Thus, the name and/or likeness of a well known writer may well be ‘extended' for use on goods or services unrelated to writing." In re Sloppy Joe's Int'l, 43 USPQ2d at 1354. See also In re Sauer, 27 USPQ2d 1973 (TTAB 1993).
  • Case Finding: That the mark was intended to be, and would be, recognized as the name of the painter Marc Chagall and that the name is of sufficient fame or reputation that when the respondent's mark is used on the goods a connection with the painter Marc Chagall would be presumed.
    • ASSOCIATION POUR LA DEFENSE ET LA PROMOTION DE L'OEUVRE DE MARC CHAGALL dite COMITE MARC CHAGALL v. Bondarchuk, Cancellation No. 92042323, (TTAB 2007)
      • In the Hemingway case, the Board also refers to the fact that the mark unmistakably identified Hemingway and that the applicant, in its activities and use of the mark, intended to honor Hemingway. Finally, the Board found this evidence of intent "highly persuasive" under the Notre Dame standard. In re Sloppy Joe's Int'l, 43 USPQ2d 1354.
    • ASSOCIATION POUR LA DEFENSE ET LA PROMOTION DE L'OEUVRE DE MARC CHAGALL dite COMITE MARC CHAGALL v. Bondarchuk, Cancellation No. 92042323, (TTAB 2007)
      • In this case, as in the Hemingway case, we have highly persuasive evidence of intent. In the Hemingway case, the Board concluded that there would be a false suggestion of a connection without any mention of evidence of the fame or reputation of Ernest Hemingway. Here, in addition to the highly persuasive evidence of intent, we also have substantial evidence of the fame or reputation of Marc Chagall in the United States. Under the circumstances, we have no hesitation in concluding that petitioner has established here, under Buffett requirements (ii) and (iv), that the mark would be recognized as the name of the painter Marc Chagall and that the name is of sufficient fame or reputation that when the respondent's mark is used on the goods a connection with the painter Marc Chagall would be presumed.
  • Case Finding: Because we have found that the primary significance of the phrase SYDNEY 2000 is as a reference to the Olympic Games, to which the phrase points uniquely, we find that, when considered in connection with applicant's services, SYDNEY 2000 is not merely descriptive, and the Examining Attorney's refusal on this ground is reversed.
    • In re Jose Ignacio Guisado Urbano, Serial No. 74/441,447, (TTAB 1999)
      • Having said this, we find sufficient evidence properly in the record clearly indicating that there has been widespread publicity for the Olympic Games so that we can conclude that the Olympic Games are well known to the general public; and that the general public is likely to be well aware that the 2000 Olympic Games will be taking place in Sydney, Australia. Thus, while the general public in the United States may or may not have seen the upcoming Olympic Games referred to precisely as "Sydney 2000," we have no doubt that the general public in the United States would recognize this phrase as referring unambiguously to the upcoming Olympic Games in Sydney, Australia, in the year 2000.
    • In re Jose Ignacio Guisado Urbano, Serial No. 74/441,447, (TTAB 1999)
      • Finally, we look at whether a connection with the Olympic Games would be presumed when applicant's mark, SYDNEY 2000, is used with its identified advertising and business services and/or its communications services. Applicant's identified services, in particular, those advertising services involving "placing advertisements for others" and "publicity services," and the identified communications services, are services that can be reasonably assumed to be offered as part of the massive infrastructure necessarily comprising the Olympic Games in Sydney in 2000. It is reasonable to expect such services to be offered to and by those organizing and presenting the Games, as well as to and by participants, sponsors, licensees, and attendees of the Games.
    • In re Jose Ignacio Guisado Urbano, Serial No. 74/441,447, (TTAB 1999)
      • Because we have found that the primary significance of the phrase SYDNEY 2000 is as a reference to the Olympic Games, to which the phrase points uniquely, we find that, when considered in connection with applicant's services, SYDNEY 2000 is not merely descriptive, and the Examining Attorney's refusal on this ground is reversed.
  • Case Finding: the mere fact that the applicant had added matter to that which was the name of an institution would not allow applicant to avoid the refusal.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • In NAFTA, the Board held that the mere fact that the applicant had added matter to that which was the name of an institution would not allow applicant to avoid the refusal. NAFTA, 43 USPQ2d at 1285.
  • Case Finding: Nothing under Section 2(a) false suggestion analysis precludes a finding that a group name is a name or identity for sub-groups even though there may be other names or identities, customs or practices that the sub-groups do not have in common.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • Finally, we reject applicant's contention that a finding that APACHE is a name or designation of the identity of each of the nine tribes somehow denigrates or minimizes other names or aspects of their identities. Nothing under Section 2(a) false suggestion analysis precludes a finding that APACHE is a name or identity for each tribe even though there may be other names or identities, customs or practices that the tribes do not have in common.
  • Case Finding: Apache tribes are of sufficient renown to be well-known to the public.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • All of this convinces us that the Apache tribes of the southwest are of sufficient renown for their business, tourism, archeological and cultural enterprises that they would be well-known among residents of the southwestern U.S. and visitors to those areas.
  • Case Finding: Applicant's mark is a close approximation of the former name and/or current identity of the United States Customs and Border Protection.
    • In re Peter S. Herrick, P.A., Serial No. 76653159 (TTAB 2009)
      • In view of the foregoing, we find that applicant's mark is a close approximation of the former name and/or current identity of the United States Customs and Border Protection.
  • Case Finding: Applicant's services are "attorney services," and that identification of services is broad enough to encompass customs work. As indicated above, applicant's practice offers legal services "concentrating its legal practice in U.S. Customs law." Applicant's legal services are closely related to the activities performed by the U. S. Customs and Border Protection including, inter alia:" ...
    • In re Peter S. Herrick, P.A., Serial No. 76653159 (TTAB 2009)
      • Applicant's services are "attorney services," and that identification of services is broad enough to encompass customs work. As indicated above, applicant's practice offers legal services "concentrating its legal practice in U.S. Customs law." Applicant's legal services are closely related to the activities performed by the U. S. Customs and Border Protection including, inter alia:" ...
  • Case Finding: Applicant's use of a seal that is nearly identical to the former seal of the United States Customs Service reinforces that its mark will be identified with the government agency.
    • In re Peter S. Herrick, P.A., Serial No. 76653159 (TTAB 2009)
      • Moreover, applicant's use of a seal that is nearly identical to the former seal of the United States Customs Service reinforces that its mark will be identified with the government agency.
  • Case Finding: Based on applicant's use of a virtually identical seal of the former United States Customs Service in connection with applicant's legal services "concentrating its legal practice in U.S. Customs law," we may draw an inference that applicant intends to create a connection with United States Customs and Border Protection.
    • In re Peter S. Herrick, P.A., Serial No. 76653159 (TTAB 2009)
      • Moreover, based on applicant's use of a virtually identical seal of the former United States Customs Service in connection with applicant's legal services "concentrating its legal practice in U.S. Customs law," we may draw an inference that applicant intends to create a connection with United States Customs and Border Protection. In re North American Free Trade Association, 43 USPQ2d at 1287, quoting The University of Notre Dame v. J.C. Food Imports, 703 F.2d 1372, 217 USPQ 505,509 (Fed. Cir. 1983) ("Evidence of such intent [applicant intended to create a false suggestion of a connection] would be highly persuasive that the public will make the intended false connection"). Cf. L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883, 1890-1891 (TTAB 2008) (applicant adopted its mark with the intent to trade off opposer's mark and such bad faith is evidence that confusion is likely because an inference is drawn from applicant's expectation of confusion).
  • Case Finding: The TTAB found that applicant's mark points uniquely and unmistakably to United States Customs and Border Protection.
    • In re Peter S. Herrick, P.A., Serial No. 76653159 (TTAB 2009)
      • In addition, as referenced above, the Examining Attorney has submitted evidence showing that some of the public still use the term U.S. Customs Service to refer to United States Customs and Border Protection. Applicant's use of the former U.S. Customs Service seal in connection with its offer of legal services "concentrating" on U.S. customs law is strong evidence that applicant is attempting to draw a connection between its services and the agency that oversees customs issues, especially because a segment of the public still uses U.S. Customs Service to refer to United States Customs and Border Protection. Finally, the name "U.S. Customs Service" has meaning only as a governmental agency. The only entity the name "U.S. Customs Service" could possibly identify is the government agency and, therefore, it is associated only with United States Customs and Border Protection. Accordingly, we find that applicant's mark points uniquely and unmistakably to United States Customs and Border Protection.
  • Institutions, as used in Section 2(a), include government agencies.
    • In re Peter S. Herrick, P.A., Serial No. 76653159 (TTAB 2009)
      • Institutions, as used in Section 2(a), include government agencies.
  • One cannot overcome a refusal based on a false suggestion of a connection merely by adding a design element to an entity or institution's identity.
    • In re Peter S. Herrick, P.A., Serial No. 76653159 (TTAB 2009)
      • "One cannot overcome a refusal based on a false suggestion of a connection merely by adding a design element to an entity or institution's identity." In re North American Free Trade Association, 43 USPQ2d 1282, 1285 (TTAB 1997).
  • Section 2(a) of the Trademark Act refers to a false suggestion of a connection with a person or institution.
    • In re Peter S. Herrick, P.A., Serial No. 76653159 (TTAB 2009)
      • As a preliminary matter, we note that Section 2(a) of the Trademark Act refers to a false suggestion of a connection with a person or institution.
  • Section 2(a) provides, in relevant 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."
    • In re Peter S. Herrick, P.A., Serial No. 76653159 (TTAB 2009)
      • Section 2(a) of the Trademark Act of 1946, 15 U.S.C. §1052(a), provides, in relevant 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."
  • Section 45 of the Trademark Act, 15 U.S.C. §1127, defines a "person" as including "the United States, any agency or instrumentality thereof."
    • In re Peter S. Herrick, P.A., Serial No. 76653159 (TTAB 2009)
      • Section 45 of the Trademark Act, 15 U.S.C. §1127, defines a "person" as including "the United States, any agency or instrumentality thereof." See In re National Intelligence Academy, 190 USPQ 570 (TTAB 1976) (NATIONAL INTELLIGENCE ACADEMY for educational services in the field of intelligence gathering for law enforcement officers falsely suggests a connection with the United States government). See also NASA v. Record Chemical Co. Inc., 185 USPQ 563, 566-567 (TTAB 1975) (NASA is a juristic person and has standing to oppose the registration of marks which may damage the agency); Federal Bureau of Investigation v. M. Bril & Co., 172 USPQ 310, 313 (TTAB 1971) (the F.B.I. is a juristic person and it has the capacity to oppose the registration of a mark pursuant to Sections 2(a) and 2(d) as appropriate).
  • The TTAB utilizes the following four-part test to determine whether a false suggestion of a connection has been established: 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.
    • In re Peter S. Herrick, P.A., Serial No. 76653159 (TTAB 2009)
      • Following our principal reviewing court's decision in University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), aff'g 213 USPQ 594 (TTAB 1982), the Board utilizes the following four-part test to determine whether a false suggestion of a connection has been established: 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. In re MC MC S.r.l., 88 USPQ2d 1378, 1379 (TTAB 2008); In re White, 80 USPQ2d 1654, 1658 (TTAB 2006); In re Wielinski, 49 USPQ2d 1754, 1757 (TTAB 1998); In re Sloppy Joe's Int'l Inc., 43 USPQ2d 1350, 1353 (TTAB 1997).
  • Where registration is barred under Sections 2(a) or 2(b), a disclaimer of an unregistrable component will not render the mark registrable.
    • In re Peter S. Herrick, P.A., Serial No. 76653159 (TTAB 2009)
      • FOOTNOTE 1 "Where, as here, registration is barred under Sections 2(a) and 2(b) of the Trademark Act, a disclaimer of an unregistrable component will not render the mark registrable. See, e.g., American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984) ("While the disclaimer is appropriate to indicate that respondent claims no proprietary right in the disclaimed words, the disclaimer does not affect the question of whether the disclaimed matter deceives the public, since one cannot avoid the Section 2(a) deceptiveness prohibition by disclaiming deceptive matter apart from the mark as a whole")."
  • A claim of false suggestion of a connection under Section 2(a) is merely a codification of a claim of violation of the right of publicity.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • A claim of false suggestion of a connection under Section 2(a) of the Trademark Act is merely a codification of a claim of violation of the right of publicity. See The University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
  • With respect to the Section 2(a) ground for cancellation, petitioner is not required to allege proprietary rights in its name for standing purposes.
    • Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010)
      • With respect to the Section 2(a) ground for cancellation, petitioner is not required to allege proprietary rights in its name for standing purposes. See Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1385 (TTAB 1991). In asserting a 2(a) claim, a petitioner may have standing by virtue of who petitioner is, that is, its identity. Id.
  • This provision of Section 2(a) prohibits registration of matter which may...falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • This provision of Section 2(a) prohibits registration of "matter which may...falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols."
  • Because the first element of the test has not been met, opposer has failed to prove that applicant's mark falsely suggests a connection with opposer, and therefore we need not address the remaining elements of this Section 2(a) claim.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Because the first element of the test has not been met, opposer has failed to prove that applicant's mark falsely suggests a connection with opposer, and therefore we need not address the remaining elements of this Section 2(a) claim.
  • We turn to the first element. As distinguished from the test for disparagement, which requires that applicant's mark be reasonably understood as referring to opposer's identity, the determination of whether the mark is a close approximation of opposer's identity is a more stringent one, requiring a greater degree of similarity between the two designations.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • We turn to the first element. As distinguished from the test for disparagement, which requires that applicant's mark be "reasonably understood as referring to" opposer's identity [RED SOX], the determination of whether the mark is a "close approximation" of opposer's identity is a more stringent one, requiring a greater degree of similarity between the two designations. For the same reasons we found that the two marks are not similar for purposes of the likelihood of confusion analysis, we find here that applicant's mark is not a close approximation of opposer's identity.
  • Petitioner has sufficiently pleaded its standing to bring this proceeding by allegations which have a reasonable basis in fact, and which, if proven, would establish that it has a personal interest in the outcome of this proceeding beyond that of the general public.
    • Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010)
      • Accordingly, petitioner has set forth allegations which have a reasonable basis in fact, and which, if proven, would establish that it has a personal interest in the outcome of this proceeding beyond that of the general public. See Ritchie v. Simpson, 50 USPQ2d at 1025-26. Thus, petitioner has sufficiently pleaded its standing to bring this proceeding. See Association Pour la Defense et la Promotion de L'Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838, 1841 (TTAB 2007); Order of Sons of Italy in America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1223, (TTAB 1995).
  • To establish this claim, opposer must prove (1) that applicant's mark is the same or a close approximation of opposer's previously used name or identity; (2) that applicant's mark would be recognized as such by purchasers, in that the mark points uniquely and unmistakably to opposer; (3) that opposer is not connected with the goods that are sold or will be sold by applicant under his mark; and (4) that opposer's name or identity is of sufficient fame or reputation that when applicant's mark is used on his goods, a connection with opposer would be presumed.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • To establish this claim, opposer must prove (1) that applicant's mark is the same or a close approximation of opposer's previously used name or identity; (2) that applicant's mark would be recognized as such by purchasers, in that the mark points uniquely and unmistakably to opposer; (3) that opposer is not connected with the goods that are sold or will be sold by applicant under his mark; and (4) that opposer's name or identity is of sufficient fame or reputation that when applicant's mark is used on his goods, a connection with opposer would be presumed. See L. & J.G. Stickley Inc. v. Cosser, 81 USPQ2d 1956 (TTAB 2007); and Buffett v. Chi-Chi's, Inc., 226 USPQ 428, 429 (TTAB 1985).
  • Section 2(a) bars registration of a mark that falsely suggests a connection with persons, living or dead, or institutions, beliefs, or national symbols. The following is required for a pleading of false suggestion of a connection under Trademark Act Section 2(a)...
    • Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010)
      • Section 2(a) bars registration of a mark that falsely suggests a connection with persons, living or dead, or institutions, beliefs, or national symbols. The following is required for a pleading of false suggestion of a connection under Trademark Act Section 2(a): "(1) The mark sought to be registered 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 identified in the mark is not connected with the goods sold or services performed by applicant under the mark; and
        (4) The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant's mark is used on its goods and/or services."
        See Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 217 USPQ 505, 508-10 (Fed. Cir. 1983); Buffet v. Chi-Chi's, Inc., 226 USPQ 428, 429 (TTAB 1985).
The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010) Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010) In re Peter S. Herrick, P.A., Serial No. 76653159 (TTAB 2009) Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008) L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007) Association Pour la Defense et la Promotion de L'Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, Cancellation No. 92042323, (TTAB 2007) In re White, Serial No. 78146926, (TTAB 2006) In re Julie White, Serial No. 78175476, (TTAB 2004) In re Los Angeles Police Revolver and Athletic Club, Inc., Serial No. 75786737, (TTAB 2003) Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002) In re Jose Ignacio Guisado Urbano, Serial No. 74/441,447, (TTAB 1999) Grand Total
In re MC MC S.r.l., 88 USPQ2d 1378 (TTAB 2008) 1
L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008) 1
L. & J.G. Stickley Inc. v. Cosser, 81 USPQ2d 1956 (TTAB 2007) 1
Association Pour la Defense et la Promotion de L'Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838 (TTAB 2007) 1
In re White, 80 USPQ2d 1654 (TTAB 2006) 2
In re Julie White, 73 USPQ2d 1713 (TTAB 2004) 1
In re Los Angeles Police Revolver and Athletic Club Inc., 69 USPQ2d 1630 (TTAB 2003) 1
NASDAQ Stock Market Inc. v. Antarctica S.r.l., 69 USPQ2d 1718 (TTAB 2003) 1
Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001) 1
In re Urbano, 51 USPQ2d 1776 (TTAB 1999) 1
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999) 1
In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) 1
In re North American Free Trade Association, 43 USPQ2d 1282 (TTAB 1997) 1
In re Wielinski, 49 USPQ2d 1754 (TTAB 1998) 3
In re North American Free Trade Association, 43 USPQ2d 1282 (TTAB 1997) 2
In re Sloppy Joe's International Inc., 43 USPQ2d 1350 (TTAB 1997) 5
Order of Sons of Italy in Am. v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221 (TTAB 1995) 1
In re Kayser-Roth Corp., 29 USPQ2d 1379 (TTAB 1993) 1
In re Sauer, 27 USPQ2d 1973 (TTAB 1993) 1
Estate of Biro v. Bic Corp., 18 USPQ2d 1382 (TTAB 1991) 1
In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990) 1
Buffett v. Chi-Chi's Inc., 226 USPQ 428 (TTAB 1985) 3
In re Cotter & Co., 228 USPQ 202 (TTAB 1985) 1
Buffett v. Chi- Chi's Inc., 226 USPQ 428 (TTAB 1985) 3
American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798 (TTAB 1984) 1
In re Bee Pollen from England Ltd., 219 USPQ 163 (TTAB 1983) 1
In re Hub Distributing Inc., 218 USPQ 284 (TTAB 1983) 1
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co. Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) 5
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co. Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) 1
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 1376, 217 USPQ 505, 509 (Fed. Cir. 1983), aff'g 213 USPQ 594 (TTAB 1982) 1
In re National Intelligence Academy, 190 USPQ 570 (TTAB 1976) 1
NASA v. Record Chemical Co. Inc., 185 USPQ 563 (TTAB 1975) 1
In re Duofold Inc., 184 USPQ 638 (TTAB 1974) 1
AMF Inc. v. American Leisure Products Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973) 1
Frederick Gash Inc. v. Mayo Clinic, 461 F.2d 1395, 174 USPQ 151 (CCPA 1972) 1
In Re Lucien Picard Watch Corp. v. Crescent Corp., 314 F.Supp. 329, 165 USPQ 459 (S.D.N.Y. 1970)  1
Morehouse Manufacturing Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (CCPA 1969) 1
Grand Total 1 6 10 2 2 7 10 6 2 1 6 53

Sec. 1052. Trademarks registrable on principal register; concurrent registration

No 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--
  1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
  2. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
  3. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
  4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
  5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
  6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.

 

 

Sec. 1127. Construction and definitions; intent of chapter

In the construction of this chapter, unless the contrary is plainly apparent from the context--
The United States includes and embraces all territory which is under its jurisdiction and control.
The word ``commerce'' means all commerce which may lawfully be regulated by Congress.
The term ``principal register'' refers to the register provided for by sections 1051 to 1072 of this title, and the term ``supplemental register'' refers to the register provided for by sections 1091 to 1096 of this title.
The term ``person'' and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this chapter includes a juristic person as well as a natural person. The term ``juristic person'' includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.
The term ``person'' also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The term ``person'' also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The terms ``applicant'' and ``registrant'' embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant.
The term ``Director'' means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
The term ``related company'' means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.
The terms ``trade name'' and ``commercial name'' mean any name used by a person to identify his or her business or vocation. The term ``trademark'' includes any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person, or
    2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
The term ``service mark'' means any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person, or
    2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
The term ``certification mark'' means any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person other than its owner, or
    2. (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter,
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
The term ``collective mark'' means a trademark or service mark--
    1. (1) used by the members of a cooperative, an association, or other collective group or organization, or
    2. (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
and includes marks indicating membership in a union, an association, or other organization.
The term ``mark'' includes any trademark, service mark, collective mark, or certification mark.
The term ``use in commerce'' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce--
    1. (1) on goods when--
      1. (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
      2. (B) the goods are sold or transported in commerce, and
    2. (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
A mark shall be deemed to be ``abandoned'' if either of the following occurs:
    1. (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. ``Use'' of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
    2. (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
The term ``colorable imitation'' includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.
The term ``registered mark'' means a mark registered in the United States Patent and Trademark Office under this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, or the Act of March 19, 1920. The phrase ``marks registered in the Patent and Trademark Office'' means registered marks.
The term ``Act of March 3, 1881'', ``Act of February 20, 1905'', or ``Act of March 19, 1920'', means the respective Act as amended.
A ``counterfeit'' is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.
The term ``domain name'' means any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.
The term ``Internet'' has the meaning given that term in section 230(f)(1) of title 47.
Words used in the singular include the plural and vice versa.
The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations.