TMEP § 1203
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–
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The provisions of 15 U.S.C. §1052(a) apply to both the Principal Register and the Supplemental Register.
Until June 19, 2017, the USPTO examined applications pursuant to the provision in Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), that prohibited the registration of a mark that consists of or comprises matter that may disparage, or bring into contempt or disrepute, persons, institutions, beliefs, or national symbols. However, the Supreme Court held this provision of Section 2(a) discriminates based on the applicant’s viewpoint and struck it down as unconstitutional under the Free Speech Clause of the First Amendment in Matal v. Tam, 137 S. Ct. 1744, 122 USPQ2d 1757 (2017).
In addition, until June 24, 2019, the USPTO examined applications pursuant to the provision in Section 2(a) that prohibited the registration of a mark that consists of or comprises immoral or scandalous matter. However, the Supreme Court held this provision of Section 2(a) also is viewpoint discriminatory and thus unconstitutional under the Free Speech Clause of the First Amendment in Iancu v. Brunetti, 139 S. Ct. 2294, 204 L. Ed. 2d 714, 2019 USPQ2d 232043 (2019).
Accordingly, that a mark may "disparage . . . or bring . . . into contempt, or disrepute" or that a mark "[c]onsists of or comprises immoral. . . or scandalous matter" are no longer valid grounds on which to refuse registration or cancel a registration. 15 U.S.C. §1052(a).
In striking down these provisions in Section 2(a), the Supreme Court purposely refrained from extending its holdings to any other provisions in Section 2(a) or other sections of the Trademark Act that do not restrict trademark registration based on the applicant’s viewpoint. See, e.g., Iancu v. Brunetti, 139 S. Ct. at 2302 n.*, 2019 USPQ2d 232043, at *7 n.* ("Nor do we say anything about how to evaluate viewpoint-neutral restrictions on trademark registration . . . "). The TTAB has since rejected an applicant’s constitutional challenge to Section 2(a)’s "false suggestion" clause, explaining that the provision is viewpoint neutral and "directly furthers the goal of prevention of consumer deception in source-identifiers." In re ADCO Indus.– Techs, L.P., 2020 USPQ2d 53786, at *10 (TTAB 2020) (noting that "Congress acts well within its authority when it identifies certain types of source-identifiers as being particularly susceptible to deceptive use and enacts restrictions concerning them").
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an absolute bar to the registration of deceptive matter on either the Principal Register or the Supplemental Register. Neither a disclaimer of the deceptive matter nor a claim that it has acquired distinctiveness under §2(f) can obviate a refusal under §2(a) on the ground that the mark consists of or comprises deceptive matter. See Am. Speech-Language-Hearing Ass’n v. Nat'l Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984) ; In re Charles S. Loeb Pipes, Inc., 190 USPQ 238, 241 (TTAB 1975).
A deceptive mark may be comprised of: (1) a single deceptive term; (2) a deceptive term embedded in a composite mark that includes additional non-deceptive wording and/or design elements ( see In re White Jasmine LLC, 106 USPQ2d 1385, 1391 (TTAB 2013) ; (3) a term or a portion of a term that alludes to a deceptive quality, characteristic, function, composition, or use ( see Am. Speech-Language-Hearing Ass’n v. Nat'l Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984) ); (4) the phonetic equivalent of a deceptive term ( see In re Organik Technologies, Inc., 41 USPQ2d 1690, 1694 (TTAB 1997) ; Tanners' Council of Am., Inc. v. Samsonite Corp., 204 USPQ 150, 154 (TTAB 1979); or (5) the foreign equivalent of any of the above ( see, e.g., Palm Bay Imps., v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Although there is no published Board or Federal Circuit decision regarding whether a mark consisting solely of a design can be deceptive, if there is evidence to support such a refusal, it should be issued.
Deceptive marks may include marks that falsely describe the material content of a product ( see In re Intex Plastics Corp., 215 USPQ 1045, 1048 (TTAB 1982) ) and marks that are geographically deceptive ( see Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073, 1076 (TTAB 1988) ; In re House of Windsor, Inc., 221 USPQ 53, 57 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984)). See TMEP §§1210.05-1210.06(b) regarding geographically deceptive marks.
However, marks containing a term identifying a material, ingredient, or feature should not be refused registration under §2(a) if the mark in its entirety would not be perceived as indicating that the goods contained that material or ingredient. For example, the mark COPY CALF was found not deceptive for wallets and billfolds of synthetic and plastic material made to simulate leather, because it was an obvious play on the expression "copy cat" and suggested to purchasers that the goods were imitations of items made of calf skin. See A. F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459, 460 (TTAB 1962) . Note, however, the difference with such marks as TEXHYDE and SOFTHIDE, which were held deceptive as applied to synthetic fabric and imitation leather material, respectively. See Intex Plastics, 215 USPQ at 1048; Tanners' Council of Am., 204 USPQ at 154-55.
In addition, formatives and other grammatical variations of a term may not necessarily be deceptive in relation to the relevant goods. For example, "silky" is defined, inter alia, as "resembling silk." See The American Heritage® Dictionary of the English Language: Fourth Ed. 2000. Thus, a mark containing the term SILKY would not be considered deceptive (but might be unregistrable under §2(e)(1)). Dictionary definitions of such terms should be carefully reviewed to determine the significance the term would have to prospective purchasers. For example, although the term GOLD would be considered deceptive for jewelry not made of gold, the term GOLDEN would not be deceptive.
The Court of Appeals for the Federal Circuit has articulated the following test for whether a mark consists of or comprises deceptive matter:
In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489 (Fed. Cir. 2009); In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988), aff’g 8 USPQ2d 1790 (TTAB 1987).
If the first two inquiries set forth by the Federal Circuit in In re Budge Manufacturing Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988) (i.e., whether a mark is misdescriptive of the goods or services and whether prospective purchasers are likely to believe the misdescription) are answered affirmatively, the mark is deceptively misdescriptive of the goods or services under §2(e)(1) of the Trademark Act. See TMEP §1209.04 regarding deceptively misdescriptive marks.
The third inquiry, whether the misdescription is likely to affect the decision to purchase, distinguishes marks that are deceptive under §2(a) of the Act from marks that are deceptively misdescriptive under §2(e)(1). To be deceptively misdescriptive under §2(e)(1), the misdescription must be deceptive in some way, i.e., consumers of the goods or services are likely to believe the misrepresentation. TMEP §1209.04 (citing Binney & Smith Inc. v. Magic Marker Indus., Inc., 222 USPQ 1003, 1011 (TTAB 1984)). That is, the misdescription concerns a feature that would be relevant to the decision to purchase the goods or use the services. In re Shniberg, 79 USPQ2d 1309, 1311 (TTAB 2006); see In re Hinton, 116 USPQ2d 1051, 1052, 1055 (TTAB 2015) "If the misdescription is more than simply a relevant factor that may be considered in purchasing decisions but is a material factor, the mark would also be deceptive" under §2(a). In re Shniberg, 79 USPQ2d at 1311; see In re White Jasmine LLC, 106 USPQ2d 1385, 1392 (TTAB 2013) See TMEP §1209.04 regarding the believability requirement for deceptive misdescriptiveness and §1203.02(d) regarding determining materiality.
If it is difficult to determine whether misdescriptive matter would materially affect a decision to purchase, the examining attorney should refuse registration under §2(a) and alternatively under §2(e)(1). See In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590 (TTAB 2018); In re White Jasmine LLC, 106 USPQ2d at 1385; In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002); see also R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 140 USPQ 276 (C.C.P.A. 1964). See TMEP §1203.02(e) regarding procedures for issuing deceptiveness refusals under §2(a).
Marks that are deceptive under §2(a) are unregistrable on either the Principal Register or the Supplemental Register, whereas marks that are deceptively misdescriptive under §2(e)(1) may be registrable on the Principal Register with a showing of acquired distinctiveness under §2(f), 15 U.S.C. §1052(f), or on the Supplemental Register, if appropriate.
See TMEP §1210.05(d) regarding the distinction between marks comprising deceptive matter under §2(a) and matter that is primarily geographically deceptively misdescriptive under §2(e)(3).
To establish a prima facie case of deceptiveness, the examining attorney must provide sufficient evidence that the misdescriptive quality or characteristic would be a material factor in the purchasing decision of a significant portion of the relevant consumers. To do so, the examining attorney must provide evidence that the misdescriptive quality or characteristic would make the product or service more appealing or desirable to prospective purchasers. In re White Jasmine LLC, 106 USPQ2d 1385, 1392 (TTAB 2013) (citing In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1698-99 (TTAB 1992) ). A product or service is usually more desirable because of objective standards or criteria that provide an objective inducement to purchase the goods and/or services beyond that of mere personal preference.
In assessing whether a misdescription would affect the decision to purchase, the following are examples (not a comprehensive list) of the type of objective criteria that should be used to analyze whether a term is a material factor. The evidence may often point to more than one characteristic, thereby strengthening the examining attorney’s prima facie case. For example, the evidence may show that goods deemed "organic" because they are produced in compliance with objective criteria can also be more costly, provide health benefits, and satisfy a social policy of reducing the impact on the environment by utilizing chemical-free growing practices. The evidence also must suffice to indicate that the misdescriptive quality or characteristic would affect the purchasing decision of a significant portion of the relevant consumers. In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 90 USPQ2d 1489, 1493 (Fed. Cir. 2009). Generally, evidence of the objective inducement to purchase supports a presumption that a significant portion of the relevant consumers would likely be deceived.
Superior Quality - The evidence must support a finding that goods or services that contain or feature the misdescriptive term are superior in quality to similar goods and/or services that do not. For example, silk can be shown to be a more luxurious and expensive material because of the difficulty in making silk, its unique feel, and its breathability. Similarly, cedar wood can be shown to have superior durability and resistance to decay.
Enhanced Performance or Function - The evidence must support a finding that goods possessing the characteristic or feature at issue are superior to those that do not. For example, certain wood species are naturally resistant to termite attack or may be more durable than others. There might also be evidence of an increasing interest in reducing the potential leaching of chemicals from treated wood into the environment.
Difference in Price - Evidence of a price differential between items that do and those that do not possess the feature or characteristic described by the misdescriptive term may be enough to support a §2(a) refusal, depending upon the nature of the goods or services. It is also important to remember that because a difference in price is relative to the goods and/or services in a particular industry, a particular term may be deceptive for goods and services that are not typically thought of as luxury items.
Health Benefit - The evidence must establish a belief that the feature or characteristic provides a health benefit.
Religious Practice or Social Policy - The evidence must show that the religious practice or social policy has definable recognized criteria for compliance in order to support a finding of deceptiveness when the criteria are not adhered to by the applicant. For example, a body of Jewish law deals with what foods can and cannot be eaten and how those foods must be prepared and eaten. The term "kosher" refers to food prepared in accordance with these standards as well as to the selling or serving of such food. See The American Heritage® Dictionary of the English Language: Fourth Ed. 2000. Another example is the term "vegan," which is defined as someone who eats plant products only and who uses no products derived from animals, such as fur or leather. Id.
The evidence necessary to establish deceptiveness can come from the same sources used to show that the term is misdescriptive. Internet searches that combine the deceptive term with terms such as "desirable," "superior," "premium," "better quality," "sought after," "more expensive," or "established standards" may be useful in seeking evidence to support the second and third prongs of the test.
Applicant’s own advertising - in the form of specimens, brochures, web pages, press releases, or product and service information sheets - may provide the best evidence of deceptiveness. Moreover, the examining attorney should make of record any instances where the applicant attempts to benefit from the potentially deceptive term and where the advertising includes false assertions related to the deceptive wording. Although not a requirement for a deceptive refusal, proof of an actual intent to deceive may be considered strong evidence of deceptiveness.
The types of objective criteria discussed above can be contrasted with mere personal preferences for which the requisite evidentiary support generally cannot be found to establish materiality. For example, SPEARMINT for chewing gum, LAVENDER for dish soap, and BLUE for bicycles refer to flavor, scent, and color features that, in those contexts, most likely reflect mere personal preferences which would not be considered material for purposes of a deceptiveness refusal.
Similarly, personal preferences regarding types of cuisine served at restaurants (e.g. , SEAFOOD or PIZZA) generally do not establish materiality absent evidence that the type of cuisine meets some objective criteria more in line with those listed above, such as for VEGAN or KOSHER.
Whether the requisite evidentiary support can be found to establish that the use of such terms in connection with goods/services that do not contain or feature the characteristic is deceptively misdescriptive under §2(e)(1) must be determined on a case-by-case basis.
If there is evidence in the record clearly indicating that the mark or a term(s) in the mark is misdescriptive (e.g. , the specimen or language in the identification indicates that the goods/services do not have the relevant feature or characteristic), the examining attorney must determine whether the misdescription is believable and material and do the following:
When a mark comprises or contains descriptive wording, but it is not clear whether the goods/services possess the relevant feature or characteristic, the examining attorney must first determine whether such feature or characteristic would be believable and material to the decision to purchase.
If the potential misdescription would not be believable, no refusal under either §2(a) or §2(e)(1) should be made. If the application is otherwise in condition for publication, the examining attorney should approve the mark for publication. Otherwise, the examining attorney should issue an Office action containing all other relevant refusals and/or requirements.
If the goods possess the relevant feature or characteristic and the feature or characteristic referenced by the mark would be believable and material, the identification must include the feature or characteristic in order to resolve the ambiguity between the mark and the identification of goods/services. The identification must be amended even if the record indicates elsewhere that the goods/services contain the feature or characteristic. Therefore, if the application could otherwise be put in condition for approval for publication by an examiner’s amendment ( see TMEP §707), to expedite prosecution, the examining attorney should:
If the examining attorney is unable to reach the applicant or cannot obtain authorization for an examiner’s amendment, or if an Office action is otherwise necessary to make substantive refusals or requirements that cannot be satisfied by examiner’s amendment, the examining attorney must:
If the applicant responds that the goods/services possess the feature or characteristic or amends the identification to include the feature or characteristic, the examining attorney must issue a final Office action, assuming that the application is otherwise in condition for final action, as to the descriptiveness refusal (or disclaimer requirement, if not provided), identification requirement (if applicable and not amended), and any other relevant refusals and/or requirements, as appropriate.
If the applicant responds that the goods/services do not possess the feature or characteristic, the examining attorney must withdraw the §2(e)(1) descriptiveness refusal (or disclaimer requirement), as well as the identification requirement (if applicable), and issue a subsequent nonfinal Office action dependent on whether the misdescription would be believable and material:
If the applicant does not respond to the information request and does not amend the identification to include the feature or characteristic, the examining attorney must:
See, e.g., In re AOP LLC, 107 USPQ2d 1644 (TTAB 2013) (holding AOP deceptive, deceptively misdescriptive, or, alternatively, merely descriptive for wine, after the applicant failed to fully respond to the examining attorney’s inquiries regarding the origin and certification of applicant’s goods); In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) (holding NORMANDIE CAMEMBERT primarily geographically descriptive or, in the alternative, primarily geographically deceptively misdescriptive for cheese; the applicant failed to respond to a 37 C.F.R. §2.61(b) information request as to the origin of the goods).
Generally, an applicant may avoid or overcome a deceptiveness refusal by amending the identification of goods or services, if accurate, to include the potentially deceptive term. For deceptiveness refusals based on the material composition of the goods, if the applicant amends the identification to include the potentially deceptive term, the USPTO will rely on the presumption that the goods contain a sufficient amount of the material to obviate deceptiveness; there is no requirement to substantiate the amount or percentage of the material or feature in the goods. Thus, the applicant may amend "ties" to "silk ties," "milk and cheese" to "organic milk and cheese," and "jewelry" to "gold jewelry" or to "jewelry made in whole or significant part of gold."
The Office construes the wording "made in significant part of" as indicating that the goods contain a sufficient amount of the named ingredient/material composition to meet the standard for use of the term in the relevant industry. In the case of "coats made in significant part of leather," such wording would be construed to mean that the "coats" contain a sufficient amount of leather to be called "leather coats" in the relevant industry. However, the wording "coats made in part of leather" is not acceptable because, although the goods may contain some leather, it may not be an amount sufficient for the goods to be called "leather coats" in the relevant industry.
Note, however, that amending the identification to exclude goods made from the named ingredient or material composition will not avoid or overcome a deceptiveness refusal.
Amending an identification of services to add "featuring" or "including" a material term (e.g. , "restaurants featuring organic cuisine" and "retail furniture stores including leather furniture") generally is sufficient to obviate deceptiveness. For example, as long as the identification indicates that the restaurant provides organic cuisine, or the furniture store sells leather furniture, there is no deception even if other types of food or furniture are also available.
Applicants may attempt to overcome a §2(a) refusal by providing evidence that applicant’s advertising, or other means, would make consumers aware of the misdescription. Neither evidence regarding advertising, labeling, or extent of use, nor information found on the specimens, can negate the misdescriptiveness with regard to use of the mark in relation to the goods or services. In addition, an applicant’s anecdotal or past practices and "explanatory statements in advertising or on labels which purchasers may or may not note and which may or may not always be provided" are of little value in the deceptiveness analysis. See In re Budge Mfg. Co., 857 F.2d 773, 775-76, 8 USPQ2d 1259, 1261 (Fed. Cir. 1988).
However, in some cases, the applicant may be able to provide credible evidence that consumers would not expect goods sold under a certain mark to actually consist of or contain the feature or characteristic named in the mark. See, e.g., In re Robert Simmons, Inc.,192 USPQ 331 (TTAB 1976)(holding that WHITE SABLE is not deceptive on artist's paint brushes).
The argument that there is no deception because consumers will immediately discern the true nature of the goods and/or services when they encounter them is not persuasive. Deception can attach prior to seeing or encountering the goods or services, for example, based on advertising over the radio or Internet or via word of mouth. See In re ALP of S. Beach, Inc., 79 USPQ2d 1009, 1014 (TTAB 2006) .
As noted above, marks that are deceptive under §2(a) are never registrable on either the Principal Register, even under §2(f) or the Supplemental Register. However, applicants may present evidence of a similar nature to what is often submitted for acquired distinctiveness, such as declarations regarding how the mark is perceived by consumers, as rebuttal evidence to the prima facie case, in an effort to overcome one or all of the prongs of the §2(a) test. See In re Woolrich Woolen Mills Inc., 13 USPQ2d 1235, 1238 (TTAB 1989) . Note that merely relying on the length of use, without providing other information or evidence, would never be sufficient to overcome a §2(a) refusal. Moreover, priority of use cannot overcome a deceptiveness refusal. In re AOP LLC, 107 USPQ2d 1644, 1650 n.6 (TTAB 2013) .
The fact that only those knowledgeable in the relevant trade, and not average purchasers, would be deceived does not preclude a finding that a mark comprises deceptive matter. In re House of Windsor, Inc., 223 USPQ 191, 192 (TTAB 1984) .
In the following cases, proposed marks were determined to be deceptive, under §2(a): In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988), aff’g8 USPQ2d 1790 (TTAB 1987) (holding LOVEE LAMB deceptive for seat covers not made of lambskin); In re AOP LLC, 107 USPQ2d 1644 (TTAB 2013) (holding AOP deceptive for wine, where the term is used by members of the European Union to designate a particular quality and geographical origin of wine, when applicant is not the entity that administers the designation and the goods do not necessarily originate in Europe); In re White Jasmine LLC, 106 USPQ2d 1385 (TTAB 2013) (holding the term WHITE in the proposed mark WHITE JASMINE deceptive for tea that did not include white tea, where the evidence established that consumers perceive that white tea has desirable health benefits); In re E5 LLC, 103 USPQ2d 1578 (TTAB 2012) (holding a mark consisting of the alpha symbol and letters "CU" deceptive for dietary supplements not containing copper, a common ingredient in dietary supplements, which evidence showed is referred to as CU); In re ALP of S. Beach Inc., 79 USPQ2d 1009 (TTAB 2006) (CAFETERIA (stylized) held deceptive as used in connection with "restaurants providing full service to sit-down patrons, excluding cafeteria-style restaurants"); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002) (holding SUPER SILK deceptive for "clothing, namely dress shirts and sport shirts made of silk-like fabric"); In re Organik Technologies, Inc., 41 USPQ2d 1690 (TTAB 1997) (holding ORGANIK deceptive for clothing and textiles made from cotton that is neither from an organically grown plant nor free of chemical processing or treatment, notwithstanding applicant’s assertions that the goods are manufactured by a process that avoids the use of chemical bleaches, because the identification of goods was broad enough to include textiles and clothing manufactured with chemical processes or dyes); In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992) (holding LONDON LONDON deceptive for clothing having no connection with London); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989) (holding PERRY NEW YORK and design of New York City skyline deceptive for clothing originating in North Carolina, in view of the renown of New York City in the apparel industry); Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073, 1075 (TTAB 1988) (holding GOLDENER TROPFEN deceptive for wines, in view of evidence of the international renown of the Goldtropfchen vineyard of West Germany, finding that the purchasing public would be likely to think, mistakenly, that applicant’s wines were produced from grapes grown there in accordance with German wine laws and regulations); Bureau Nat’l Interprofessionnel Du Cognac v. Int'l Better Drinks Corp., 6 USPQ2d 1610, 1616 (TTAB 1988) (holding COLAGNAC deceptive for cola-flavored liqueur containing Spanish brandy, concluding that purchasers were likely to believe that applicant’s goods contained COGNAC brandy); In re Shapely, Inc., 231 USPQ 72 (TTAB 1986) (holding SILKEASE deceptive as applied to clothing not made of silk); In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied,223 USPQ 191 (TTAB 1984) (holding BAHIA deceptive as applied to cigars having no connection with the Bahia province of Brazil, the record indicating that tobacco and cigars are important products in the Bahia region); Evans Prods. Co. v. Boise Cascade Corp., 218 USPQ 160 (TTAB 1983) (holding CEDAR RIDGE deceptive for embossed hardboard siding not made of cedar); In re Intex Plastics Corp., 215 USPQ 1045 (TTAB 1982) (holding TEXHYDE deceptive as applied to synthetic fabric for use in the manufacture of furniture, upholstery, luggage, and the like); Tanners’ Council of Am., Inc. v. Samsonite Corp., 204 USPQ 150 (TTAB 1979) (holding SOFTHIDE deceptive for imitation leather material); In re Salem China Co., 157 USPQ 600 (TTAB 1968) (holding AMERICAN LIMOGES, used on dinnerware that was neither made in Limoges, France, nor made from Limoges clay, deceptive because of the association of Limoges with fine quality china); Co. of Cutlers of Hallamshire in the Cnty. of York v. Regent-Sheffield, Ltd., 155 USPQ 597 (TTAB 1967) (holding SHEFFIELD, used on cutlery not made in Sheffield, England, deceptive because of the renowned status of Sheffield in relation to cutlery); In re U.S. Plywood Corp., 138 USPQ 403 (TTAB 1963) (holding IVORY WOOD, for lumber and timber products, deceptive since the goods were not made of ivorywood nor did they contain an ivorywood pattern).
Marks were found not to be deceptive in the following cases: In re Tapco Int’l Corp., 122 USPQ2d 1369 (TTAB 2017) (holding KLEER MOULDINGS and KLEER TRIMBOARD not deceptive, because there was no evidence as to the likely consumer perception of the term "clear" (or KLEER) when used in connection with the identified PVC building products and thus the record did not establish that the term misdescribes the goods); Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487 (TTAB 1990) (holding PARK AVENUE neither deceptive nor geographically deceptively misdescriptive as applied to applicant’s cigarettes and smoking tobacco, finding no goods/place association between Park Avenue in New York City, on which opposer’s world headquarters was located, and tobacco products); In re Woolrich Woolen Mills Inc., 13 USPQ2d 1235 (TTAB 1989) (holding WOOLRICH for clothing not made of wool not to be deceptive under §2(a)); In re Fortune Star Prods. Corp., 217 USPQ 277 (TTAB 1982) (holding NIPPON, for radios, televisions, and the like, not deceptive in relation to the goods because, although the applicant was an American firm, the goods were actually made in Japan); In re Sweden Freezer Mfg. Co., 159 USPQ 246 (TTAB 1968) (holding SWEDEN and design, for which registration was sought under §2(f) for external artificial kidney units, not deceptive, finding the case to be in the category "where a geographical trademark may involve a degree of untruth but the deception may be perfectly innocent, harmless or negligible"); A. F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459 (TTAB 1962) (holding COPY CALF, for wallets and billfolds of synthetic and plastic material made to simulate leather, not deceptive, noting that the mark, as an obvious play on the expression "copy cat," suggested to purchasers that the goods were imitations of items made of calf skin).
Trademark Act §2(a), 15 U.S.C. §1052(a), bars the registration on either the Principal or the Supplemental Register of a designation that consists of or comprises matter which, with regard to persons, institutions, beliefs, or national symbols, falsely suggests a connection with them.
Section 2(a) is distinctly different from §2(d), 15 U.S.C. §1052(d), for which the relevant test is likelihood of confusion. In University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 1375-76 (Fed. Cir. 1983) (footnotes omitted), the Court of Appeals for the Federal Circuit noted as follows:
A reading of the legislative history with respect to what became §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 §2(d). . . . Although not articulated as such, it appears that the drafters sought by §2(a) to embrace concepts of the right to privacy, an area of the law then in an embryonic state. Our review of case law discloses that the elements of a claim of invasion of one’s privacy have emerged as distinctly different from those of trademark or trade name infringement. There may be no likelihood of such confusion as to the source of goods even under a theory of "sponsorship" or "endorsement," and, nevertheless, one’s right of privacy, or the related right of publicity, may be violated.
The right to privacy protects a party’s control over the use of its identity or "persona." See U.S. Olympic Comm. v. Tempting Brands Neth. B.V., 2021 USPQ2d 164, at *20 (TTAB 2021) (quoting In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1643 (TTAB 2015)). A party acquires a protectible interest in a name or equivalent designation under §2(a) where the name or designation is unmistakably associated with, and points uniquely to, that party’s personality or "persona." Univ. of Notre Dame du Lac, 703 F.2d at 1376-77, 217 USPQ at 509; In re ADCO Indus. – Techs. L.P. , 2020 USPQ2d 53786, at *3-4 (TTAB 2020) (citing In re Nieves & Nieves LLC, 113 USPQ2d at 1643). A party’s interest in a name or designation does not depend upon adoption and use as a technical trademark or trade name. Univ. of Notre Dame du Lac, 703 F.2d at 1375-77, 217 USPQ at 508-09; Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985). The rights of privacy and publicity protected by Section 2(a) are "not designed primarily to protect the public, but to protect persons and institutions from exploitation of their persona." In re Leathernecks Motorcycle Club Int’l, Inc., Ser. No. 90498154, 2024 TTAB LEXIS 208, at *3 (2024) (quoting Bridgestone/Firestone Rsch. Inc. v. Auto. Club de L’Ouest de La Fr., 245 F.3d 1359, 1364 (Fed. Cir. 2001)).
Moreover, a mark does not have to comprise a person’s full or correct name to be unregistrable; a nickname or other designation by which a person is known by the public may be unregistrable under this provision of the Act. See In re Sauer, 27 USPQ2d 1073, 1074 (TTAB 1993) (finding that "Bo Jackson has achieved great fame and notoriety, so that when his nickname is used as part of the ‘Bo Ball’ and design mark on applicant’s goods, purchasers will likely make a connection between him and applicant’s products"); see also Buffett, 226 USPQ at 430 (finding evidence of record "sufficient to raise a genuine issue of material fact as to whether the term ‘MARGARITAVILLE’ is so uniquely and unmistakably associated with opposer as to constitute opposer’s name or identity such that when applicant’s mark is used in connection with its [restaurant] services, a connection with opposer would be assumed").
See TMEP §§1203.03(b)–1203.03(b)(iii) regarding false suggestion of a connection.
See Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831, 218 USPQ 1 (6th Cir. 1983), concerning the various forms of identity which have been protected under the rights of privacy and publicity.
Trademark Act §2(a), 15 U.S.C. §1052(a), protects, inter alia, "persons, living or dead."
Section 45, 15 U.S.C. §1127, defines "person" and "juristic person" as follows:
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 Act 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 "persons" in §2(a) refers to real persons, not fictitious characters. It also encompasses groups of persons. See Matal v. Tam, 582 U.S. 218, 231-33 (2017). With respect to natural persons, they may be living or dead. However, §2(a) may not be applicable with regard to a deceased person when there is no longer anyone entitled to assert a proprietary right or right of privacy. In re MC MC S.r.l., 88 USPQ2d 1378 (TTAB 2008) (holding MARIA CALLAS not to falsely suggest a connection with deceased opera singer Maria Callas); Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 165 USPQ 459 (S.D.N.Y. 1970) (holding DA VINCI not to falsely suggest a connection with deceased artist Leonardo Da Vinci). See TMEP §1203.03(b)(i) regarding elements of a §2(a) false suggestion of a connection refusal.
In the case of a mark comprising the name of a deceased natural person, the "right to the use of a designation which points uniquely to his or her persona may not be protected under Section 2(a) after his or her death unless heirs or other successors are entitled to assert that right." U.S. Olympic Comm. v. Tempting Brands Neth. B.V., 2021 USPQ2d 164, at *20 (TTAB 2021) (quoting In re MC MC S.r.l., 88 USPQ2d at 1380). A key consideration is "whether or not there is someone (this may be a natural person, estate, or juristic entity) with rights in the name." In re MC MC S.r.l., 88 USPQ2d at 1380. Any doubt regarding the existence of heirs or successors with such rights must be resolved in favor of the applicant. See id. at 1381.
In addition to natural persons, §2(a) includes juristic persons, that is, legally created entities such as firms, corporations, unions, associations, or any other organizations capable of suing and being sued in a court of law. See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (C.C.P.A. 1969); Popular Merch. Co. v. "21" Club, Inc., 343 F.2d 1011, 145 USPQ 203 (C.C.P.A. 1965); John Walker & Sons, Ltd. v. Am. Tobacco Co., 110 USPQ 249 (Comm’r Pats. 1956); Copacabana, Inc. v. Breslauer, 101 USPQ 467 (Comm’r Pats. 1954). Juristic persons do not have to be well known to be protected from the registration of a mark that falsely suggests a connection with them. See generally Gavel Club v. Toastmasters Int’l,127 USPQ 88, 94 (TTAB 1960) (noting that §2(a) protection is not limited to large, well known, or nationally recognized institutions). However, there must be a legal successor to assert the rights of a defunct juristic person or otherwise those rights are extinguished when the juristic person becomes bankrupt or ceases to exist without an assignment of interest to another. Pierce-Arrow Soc’y, 2019 USPQ2d 471774, at *6-7 (TTAB 2019) (following In re Wielinski, 49 USPQ2d 1754, 1758 (TTAB 1998), overruled on other grounds, In re WNBA Enters., LLC, 70 USPQ2d 1153 (TTAB 2003)).
Section 45, 15 U.S.C. §1127, also defines "person" to include the United States and its agencies and instrumentalities, as well as any state:
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 Act 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 Act in the same manner and to the same extent as any non-governmental entity.
It is well settled that the U.S. government is a "person" within the meaning of §2(a). 15 U.S.C. §1127; FBI v. Societe: "M.Bril & Co.", 172 USPQ 310, 313 (TTAB 1971). Therefore, the common names of, and acronyms for, U.S. government agencies and instrumentalities are considered persons. See In re Leathernecks Motorcycle Club Int’l, Inc., Ser. No. 90498154, 2024 TTAB LEXIS 208, at *3-4 (2024) (citing 15 U.S.C. §§1052(a), 1127) (finding the U.S. Marine Corps, a separate service within the U.S. Department of the Navy, is a juristic person or institution); In re Peter S. Herrick P.A., 91 USPQ2d 1505, 1506-08 (TTAB 2009) (stating the statutory definition of "person" includes the United States and any agency or instrumentality thereof and concluding that "[t]he only entity the name ‘U.S. Customs Service’ could possibly identify is the government agency" formerly known as the U.S. Customs Service and now known as U.S. Customs and Border Protection); NASA v. Record Chem. Co., 185 USPQ 563, 566 (TTAB 1975) (finding the National Aeronautics and Space Administration (NASA) is a juristic person); FBI, 172 USPQ at 313 (noting the Federal Bureau of Investigation (FBI) is a juristic person).
The term "institution" has been broadly construed. See In re Shinnecock Smoke Shop, 571 F.3d 1171, 1173, 91 USPQ2d 1218, 1219 (Fed. Cir. 2009) ("[T]he ordinary meaning of ‘institution’ suggests the term is broad enough to include a self-governing Indian nation," quoting Black's Law Dictionary 813, 1133 (8th ed. 2004), which defined "institution" as "[a]n established organization," and defined "organization" as a "body of persons . . . formed for a common purpose"); In re Int’l Watchman, Inc., 2021 USPQ2d 1171, at *9-11 (TTAB 2021) (finding the North Atlantic Treaty Organization, which is an intergovernmental organization and military alliance of the United States and other North American and European countries, "qualifies as an 'institution' under Section 2(a)"); U.S. Olympic Comm. v. Tempting Brands Neth. B.V., 2021 USPQ2d 164, at *15 (TTAB 2021) ("the record in this case supports the finding previously made by the Board that ‘the entire organization which comprises the Olympic Games, as a whole, qualifies as an ‘institution’ within the meaning of Section 2(a) of the Trademark Act’") (quoting In re Urbano, 51 USPQ2d 1776, 1779 (TTAB 1999)); In re White, 73 USPQ2d 1713, 1718 (TTAB 2004) ("each federally recognized Apache tribe is necessarily either a juristic person or an institution").
In addition to qualifying as a person, United States government agencies and instrumentalities, as identified by their common names and acronyms, also may be considered institutions within the meaning of §2(a). See In re Leathernecks Motorcycle Club Int’l, Inc., Ser. No. 90498154, 2024 TTAB LEXIS 208, at *3-4 (2024) (citing 15 U.S.C. §§1052(a), 1127) (finding the U.S. Marine Corps, a separate service within the U.S. Department of the Navy, is a juristic person or institution); In re Peter S. Herrick P.A., 91 USPQ2d 1505, 1506 (TTAB 2009) ("Institutions, as used in Section 2(a), include government agencies."); In re Cotter & Co., 228 USPQ 202, 204-05 (TTAB 1985) (finding the United States Military Academy is an institution and West Point or Westpoint "has come to be solely associated with and points uniquely to the United States Military Academy"). The common names of, and acronyms and terms for, United States government programs may also be considered institutions, depending on the evidence of record. See In re N. Am. Free Trade Ass’n, 43 USPQ2d 1282, 1285-86 (TTAB 1997) (finding "NAFTA [the acronym for the North American Free Trade Agreement] is an institution, in the same way that the United Nations is an institution," and noting that the "legislative history . . . indicates that the reference to an ‘institution’ in Section 2(a) was designed to have an expansive scope."); NASA v. Record Chem. Co., 185 USPQ 563, 565 (TTAB 1975) (finding NASA’s Apollo space program is an institution).
Institutions do not have to be large, well known, or "national" to be protected from the registration of a mark that falsely suggests a connection with them. Gavel Club v. Toastmasters Int’l, 127 USPQ 88, 94 (TTAB 1960).
While the §2(a) prohibition against the registration of matter that may falsely suggest a connection with institutions may not be applicable to a particular designation, many names, acronyms, titles, terms, and symbols are protected by other statutes or rules. See TMEP §1205.01 and Appendix C (setting forth a nonexhaustive list of U.S. statutes protecting designations of certain government agencies and instrumentalities).
A "national symbol" is subject matter of unique and special significance that, because of its meaning, appearance, and/or sound, immediately suggests or refers to the country for which it stands. In re Consol. Foods Corp., 187 USPQ 63, 64 (TTAB 1975) (noting national symbols include the bald eagle, Statue of Liberty, designation "Uncle Sam" and the unique human representation thereof, the heraldry and shield designs used in governmental offices, and certain uses of the letters "U.S."). National symbols include the symbols of foreign countries as well as those of the United States. In re Anti-Communist World Freedom Cong., Inc., 161 USPQ 304, 305 (TTAB 1969) .
"National symbols" cannot be equated with the "insignia" of nations, which are prohibited from registration under §2(b).
The Act . . . does not put national symbols on a par with the flag, coat of arms, or other insignia of the United States, which may not in any event be made the subject matter of a trade or service mark. With regard to national symbols the statute provides merely that they shall not be . . . used as falsely to suggest a connection between the holder of the mark and the symbol.
Liberty Mut. Ins. Co. v. Liberty Ins. Co. of Tex., 185 F. Supp. 895, 908, 127 USPQ 312, 323 (E.D. Ark. 1960). See TMEP §1204 regarding insignia.
Trademark Act Section 2(a) does not prohibit registration of marks comprising national symbols; it only prohibits registration of matter that may falsely suggest a connection with them. Liberty Mut. Ins. Co., 185 F. Supp. at 908, 127 USPQ at 323 (finding marks comprising portion of the Statue of Liberty not to falsely suggest a connection with the Statue of Liberty or the United States government, the Court "[a]ssuming without deciding" that the statue is a national symbol).
Some designations have been held to be national symbols within the meaning of §2(a). E.g., In re Anti-Communist World Freedom Cong., 161 USPQ at 304 (holding a representation of a hammer and sickle to be a national symbol of the Union of Soviet Socialist Republics (U.S.S.R.)); In re Nat'l Collection & Credit Control, Inc.,152 USPQ 200, 201 n.2 (TTAB 1966) ("The American or bald eagle with wings extended is a well-known national symbol or emblem of the United States").
Other designations have been held not to be national symbols within the meaning of §2(a). E.g., NASA v. Bully Hill Vineyards, Inc., 3 USPQ2d 1671 (TTAB 1987) (holding SPACE SHUTTLE not to constitute a national symbol on the evidence of record, the Board also finding "shuttle" to be a generic term for a space vehicle or system); Jacobs v. Int'l Multifoods Corp., 211 USPQ 165, 170-71 (TTAB 1981) , aff’d on other grounds, 668 F.2d 1234, 212 USPQ 641 (C.C.P.A. 1982) ("[H]istorical events such as the ‘BOSTON TEA PARTY’ . . ., although undoubtedly associated with the American heritage, do not take on that unique and special significance of a ‘national symbol’ designed to be equated with and associated with a particular country."); In re Mohawk Air Serv. Inc., 196 USPQ 851, 854 (TTAB 1977) (stating MOHAWK is not immediately suggestive of the United States and, therefore, not a national symbol); In re Consol. Foods Corp., 187 USPQ 63 (TTAB 1975) (holding OSS, the acronym for the Office of Strategic Services, not to constitute a national symbol); In re Gen. Mills, Inc., 169 USPQ 244 (TTAB 1971) (finding UNION JACK, which applicant was using on packages of frozen fish marked "English cut cod" and in its restaurant near representations of the British national flag, did not suggest a particular country, the Board noting that it could consider only the matter for which registration was sought).
The name of a country is not a national symbol within the meaning of §2(a) of the Trademark Act nor does use of the name of a country as a mark, by itself, amount to deception or a "false connection" under §2(a). In re Fortune Star Prods. Corp., 217 USPQ 277, 277 (TTAB 1982) (citing In re Swed. Freezer Mfg. Co., 159 USPQ 246, 248-49 (TTAB 1968)).
The common names of, and acronyms for, government agencies and instrumentalities are not considered to be national symbols. In re Consol. Foods, 187 USPQ at 64 (holding OSS, acronym for the Office of Strategic Services, not a national symbol but rather merely designates a particular and long-defunct government agency).
While the prohibition of §2(a) against the registration of matter that may falsely suggest a connection with national symbols may not be applicable to a particular designation, many names, acronyms, titles, terms, and symbols are protected by other statutes or rules. See TMEP §1205.01 and Appendix C.
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)(i) regarding persons, §1203.03(a)(ii) regarding institutions, §1203.03(a)(iii) regarding national symbols, and §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:
In re Thomas D. Foster, APC, 136 F.4th 1090, 1094 (Fed. Cir. 2025); Piano Factory Grp., Inc. v. Schiedmayer Celesta GmbH, 11 F.4th 1363, 1377 (Fed. Cir. 2021) (citing In re Jackson Int’l Trading Co. Kurt D. Bruhl GmbH & Co. KG, Ser. No. 77600412, 2012 TTAB LEXIS 246, at *4-5 (2012)); U.S. Olympic Comm. v. Tempting Brands Neth. B.V., Opp. No. 91233138, 2021 TTAB LEXIS 45, at *22-23 (2021) (citing Pierce-Arrow Soc’y v. Spintek Filtration, Inc., 2019 USPQ2d 471774, at *4 (TTAB 2019)); see In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *3 (TTAB 2020); In re Pedersen, 109 USPQ2d 1185, 1188-89 (TTAB 2013); In re Peter S. Herrick, P.A., 91 USPQ2d 1505, 1507 (TTAB 2009); In re MC MC S.r.l., 88 USPQ2d 1378, 1379 (TTAB 2008); Ass’n Pour La Def. et la Promotion de L'Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838, 1842 (TTAB 2007); In re White, 80 USPQ2d 1654, 1658 (TTAB 2006); In re White, 73 USPQ2d 1713, 1718 (TTAB 2004); In re Nuclear Rsch. Corp., 16 USPQ2d 1316, 1317 (TTAB 1990); In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77 (Fed. Cir. 1983) (providing foundational principles for four-factor test). The four-factor test provides a helpful framework to assess whether there is a false suggestion of a connection, but it is not an exhaustive list. In re Thomas D. Foster, APC, 136 F.4th at 1094.
First element. The term at issue need not be the actual, legal name of the party falsely associated with the applicant’s mark. See, e.g., In re Leathernecks Motorcycle Club Int’l, Inc., 2024 TTAB LEXIS 208, at *7-9 (finding LEATHERNECKS to be the nickname of the U.S. Marine Corps based on dictionary and website evidence, including the name of the Marine Corps Association monthly magazine, Leatherneck); NPG Recs., LLC v. JHO Intell. Prop. Holdings LLC, 2022 USPQ2d 770, at *6, *15 (TTAB 2022) (finding PURPLE RAIN, the name of a well-known song and album written and performed by Prince and the title of a motion picture scored by and starring Prince, to be "synonymous with Prince"); Hornby v. TJX Cos., 87 USPQ2d 1411, 1417, 1424 (TTAB 2008) (finding TWIGGY to be the nickname of professional model Lesley Hornby); In re Sauer, 27 USPQ2d 1073, 1073-75 (TTAB 1993) (finding BO BALL to be the nickname of professional football and baseball player Bo Jackson); Buffett v. Chi Chi’s, Inc., 226 USPQ at 429-30 (finding MARGARITAVILLE, the name of a well-known song written and performed by Jimmy Buffett, to be the public persona of singer Jimmy Buffett). "[A] nickname or an informal reference, even one created by the public, can qualify as an entity's ‘identity,’ thereby giving rise to a protectable interest." Bos. Athletic Ass'n v. Velocity, LLC, 117 USPQ2d 1492, 1496 (TTAB 2015) (citing Buffett v. Chi Chi’s, Inc., 226 USPQ at 429 n.4); see In re Sauer, 27 USPQ2d at 1074-75. A term may also be considered the identity of a person "even if the person has not used that term." In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *4 (citing In re Nieves & Nieves LLC, 113 USPQ2d 1629, 1644 (TTAB 2015); In re Urbano, 51 USPQ2d 1776, 1779 (TTAB 1999)). In addition, the fact that a term identifies both a particular group of people and the language spoken by some of the members of the group is not evidence that it fails to identify the group. In re Pedersen, 109 USPQ2d at 1190 (rejecting applicant’s argument that, because the term LAKOTA identifies a language, it does not approximate the name or identity of a people or institution).
Second element. The requirement that the proposed mark would be recognized as pointing uniquely and unmistakably to the person or institution does not mean that the term itself must be unique. In re Leathernecks Motorcycle Club Int’l, Inc., 2024 TTAB LEXIS 208, at *12 (citing In re Jackson Int’l Trading Co. Kurt D. Bruhl GmbH & Co. KG, 2012 TTAB LEXIS 246, at *5-8 ; Hornby v. TJX Cos., 87 USPQ2d at 1426). Rather, the question is whether, as used with the goods or services in question, or as used to identify membership in an applicant’s collective organization for a collective membership mark, consumers would view the mark as pointing uniquely to the person or institution, or whether they would perceive it to have a different meaning. E.g., Univ. of Notre Dame du Lac, 703 F.2d at 1377 (finding NOTRE DAME did not point uniquely and unmistakably to the appellant, the University of Notre Dame in Indiana, because the name identifies a famous religious figure and is used in the names of churches dedicated to this figure such as the Cathedral of Notre Dame in Paris, France); In re Leathernecks Motorcycle Club Int’l, Inc., 2024 TTAB LEXIS 208, at *12-14 (finding LEATHERNECKS pointed uniquely and unmistakably to the U.S. Marine Corps, even though it is also a slang term referring to the British Royal Marines, based on evidence that the name identifies a known nickname of the USMC and all of applicant’s current members are active duty or honorably discharged USMC or U.S. Navy Corpsman); Schiedmayer Celesta GmbH v. Piano Factory Grp., Inc., 2019 USPQ2d 341894, at *7 (TTAB 2019) (quoting In re White, 73 USPQ2d at 1720) (finding SCHIEDMAYER pointed uniquely and unmistakably to petitioner based on evidence that the name had been associated with a family prominent in the keyboard musical instrument industry for hundreds of years and had no other meaning), aff’d, 11 F.4th 1363 (Fed. Cir. 2021); Hornby v. TJX Cos., 87 USPQ2d at 1427 (finding TWIGGY pointed uniquely and unmistakably to petitioner, who was recognized as a famous British model, and that the dictionary meaning of "twiggy" as resembling or abounding in twigs would not be the consumers’ perception of the name for respondent’s children’s clothing).
In addition, unassociated third-party use of a term does not in and of itself establish that that the term does not point uniquely or unmistakably to a particular person or institution. See In re Leathernecks Motorcycle Club Int’l, Inc., 2024 TTAB LEXIS 208, at *18-19, *21-22 (quoting U.S. Olympic Comm. v. Tempting Brands Neth. B.V., 2021 TTAB LEXIS 45, at *33) (finding thirteen third-party uses and seven subsisting third-party registrations for the term in the singular, plural, or possessive form for unrelated goods and services not relevant to whether the term pointed uniquely or unmistakably to the U.S. Marine Corps);In re Pedersen, 109 USPQ2d at 1196 (finding consumer exposure to third-party use of LAKOTA on products and services unrelated to applicant’s insufficient to show that applicant’s use of LAKOTA did not point uniquely to the Lakota people); Hornby v. TJX Cos., 87 USPQ2d at 1427 (finding evidence of third-party registrations showing registration of the term "TWIGGY" for goods unrelated to children’s clothing had "no probative value"); cf. NPG Recs., LLC v. JHO Intell. Prop. Holdings, 2022 USPQ2d 770, at *19 (finding applicant’s evidence of three third-party registrations for items related to the goods in applicant’s application insufficient to show that PURPLE RAIN did not point uniquely to opposer).
Third element. A connection with an entity is established when the record establishes a specific endorsement, sponsorship, or the like of the particular goods and services, whether written or implied. In re White, 80 USPQ2d at 1660-61; see In re Leathernecks Motorcycle Club Int’l, Inc., 2024 TTAB LEXIS 208, at *23-24. In In re Sloppy Joe’s International Inc., 43 USPQ2d 1350, 1353-54 (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 did not establish the kind of "connection" that entitled applicant to register a mark consisting in part of a portrait of Hemingway. 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. Id.
If it is unclear whether the person or institution is connected with the goods sold or services performed by the applicant, or applicant’s organization for a collective membership mark, the examining attorney must make an explicit inquiry under 37 C.F.R. §2.61(b). If the examining attorney independently confirms that the person or institution is connected with the goods sold or services performed by the applicant, or applicant's organization, a Note to the File (also referred to as a Public Note or Notation to File) must be entered in the record to reflect that no further action is required as to the issue of false suggestion of a connection. See TMEP §710.02.
Fourth element. To establish the fame or reputation of the person or institution under this factor, one is not required to show the fame or reputation of the name "in the entire United States." Ass’n Pour la Defense et la Promotion de L'Oeuvre de Marc Chagall Dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d at 1843, 1844 (finding the evidence sufficiently showed the fame and reputation of Russian artist Marc Chagall where his work had been featured in exhibits in several major U.S. cities in several regions as well as in permanent public displays, including large stained-glass windows installed at the United Nations).
Further, the Court of Appeals for the Federal Circuit has stated
[A] party's name may be famous among the particular consumers of those goods and services even if it is not famous among members of the general public. And a party's name may be associated with particular goods such that a false association may be established with goods or services of that type even if it would not have been established with respect to entirely different goods or services.
Piano Factory Grp., Inc. v. Schiedmayer Celesta GmbH, 11 F.4th at 1380 (citing In re Nieves & Nieves, LLC, 113 USPQ2d at 1633; In re Pedersen, 109 USPQ2d at 1202; U.S. Navy v. U.S. Mfg. Co., 2 USPQ2d 1254, 1260 (TTAB 1987); 7 Louis Altman & Mall Pollack, Callmann on Unfair Competition, Trademarks & Monopolies §26.21, at 26-103-04 (4th ed. 2021)).
Intent. 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) ; Consol. Natural Gas Co. v. CNG Fuel Sys., 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. In re Thomas D. Foster, APC, 136 F.4th at 1094 (citing Univ. of Notre Dame du Lac, 703 F.2d at 1377); Piano Factory Grp., Inc. v. Schiedmayer Celesta GmbH, 11 F.4th at 1380-81 (citing Univ. of Notre Dame du Lac, 703 F.2d at 1377; In re Pedersen, 109 USPQ2d at 1202; In re Peter S. Herrick, P.A., 91 USPQ2d at 1509; Ass’n Pour la Defense et la Promotion de L'Oeuvre de Marc Chagall Dite Comite Marc Chagall, 82 USPQ2d at 1843).
Prior user. 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 Rsch. Corp., 16 USPQ2d at 1317 (citing In re Mohawk Air Servs., Inc., 196 USPQ 851, 854-55 (TTAB 1977)); see In re Wielinski, 49 USPQ2d 1754, 1758 (TTAB 1998) (citing In re Kayser-Roth Corp., 29 USPQ2d 1379, 1384-85 (TTAB 1993); Kardex Sys., Inc. v. Sistemco N.V., 221 USPQ 149, 151 (TTAB 1983)). However, it is not necessary that the prior user ever commercially exploit the name as a trademark or in a manner analogous to trademark use. In re Pedersen, 109 USPQ2d at 1193; see In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *4. A false suggestion of a connection may be found when the party’s right to control the use of its identity is violated, even if there is no juristic entity having the authority to authorize use of the mark. In re Pedersen, 109 USPQ2d at 1193.
Timing. The Court of Appeals for the Federal Circuit has held that §2(a) bars registration of a pending application due to a false suggestion of a connection as of the time of examination. In re Thomas D. Foster, APC, 136 F.4th at 1093. Accordingly, the false connection inquiry can include evidence that "comes into existence during the examination process." Id.
See TMEP §1304.03(d) for additional information regarding the false suggestion of a connection refusal under §2(a) for collective membership marks.
Registration of matter that may falsely suggest a connection with a U.S. government agency or instrumentality is prohibited under Trademark Act §2(a). See TMEP §1203.03(b)(i) (setting out the four-element test). Some names, acronyms, titles, terms, and symbols of U.S. government agencies or instrumentalities are also protected by separate statute. See TMEP §1205.01 for information about statutorily protected matter and Appendix C for a nonexhaustive list of U.S. statutes protecting designations of certain government agencies and instrumentalities. Many of these statutes allow third parties to use the protected matter when authorized by an agency official. This authorization to use, by itself, should not be construed to extend to authorization to register marks that include matter the applicant does not own. See generally TMEP §1201 regarding the ownership requirement. Where it appears from the record that the applicant is not the agency or instrumentality referenced in the mark, but the record suggests an affiliation between the applicant and the referenced agency, the examining attorney must require the applicant to establish its authorization to register the mark by requesting information pursuant to 37 C.F.R. §2.61(b). See TMEP §1201.06(c).
Registration must be refused if the nature of the mark and the nature of the goods or services is such that a U.S. government agency or instrumentality would be presumed to be the source or sponsorship of the applicant’s goods or services, or connected to or otherwise affiliated with applicant’s organization for a collective membership mark. In re Leathernecks Motorcycle Club Int’l, Inc., Ser. No. 90498154, 2024 TTAB LEXIS 208, at *24-27 (2024); In re Peter S. Herrick, P.A., 91 USPQ2d 1505, 1507-08 (TTAB 2009) (finding "U.S. CUSTOMS SERVICE" a close approximation of the former name of the government agency, U.S. Customs Service, which is now known as the U.S. Customs and Border Protection but which is still referred to as the U.S. Customs Service by the public and the agency itself, that the seal design in the proposed mark is nearly identical to the seal used by the former U.S. Customs Service, the only meaning the "U.S. Customs Service" has is to identify the government agency, and a connection between applicant’s attorney services and the activities performed by the U.S. Customs and Border Protection would be presumed); In re Nat'l Intel. Acad., 190 USPQ 570, 572 (TTAB 1976) (holding NATIONAL INTELLIGENCE ACADEMY, for educational and instructional services in intelligence gathering for law enforcement officers, falsely suggests a connection with the U.S. government since intelligence gathering is a known function of a number of government agencies and "[a] normal outgrowth and development of such activities would be the training of officers in intelligence gathering"); In re Teasdale Packing Co., 137 USPQ 482 (TTAB 1963) (holding U.S. AQUA and design falsely suggests a connection with the U.S. government on the ground that purchasers of applicant’s canned drinking water would be misled into assuming approval or sponsorship by the U.S. government in view of the nature of the mark, including a red, white, and blue shield design; the nature of the goods; the Board noting a program for stocking emergency supplies of water in fallout shelters; and the setting of standards for drinking water by U.S. government agencies).
The record must include evidence showing that the designation in the mark references the agency or instrumentality and that the goods or services are such that a connection with that agency or instrumentality would be presumed, particularly when it is not readily apparent that the wording or acronym in the mark refers to the agency or instrumentality. See In re Leathernecks Motorcycle Club Int’l, Inc., 2024 TTAB LEXIS 208, at *24-27 (holding LEATHERNECKS for indicating membership in a motorcycle club to falsely suggest a connection with the U.S. Marine Corps based on dictionary and website evidence indicating the term is a nickname adopted by the USMC and recognized as such, including the name of the Marine Corps Association monthly magazine, Leatherneck, given that the "term originated from the wide and stiff leather neck-piece that was part of the Marine Corps uniform from 1798 until 1872" that kept the Marine’s head erect and protected the neck and jugular vein from cutlass slashes); In re U.S. Bicentennial Soc’y, 197 USPQ 905, 906-07 (TTAB 1978) (holding U.S. BICENTENNIAL SOCIETY, for ceremonial swords, to falsely suggest a connection with the American Revolution Bicentennial Commission and the U.S. government, based on applicant’s claims in the specimen of record and the fact that "swords have historically been presented by grateful sovereigns and governments to persons who have been honored by such gifts and that ceremonial swords are on display in the museum at Mt. Vernon"). But see In re Mohawk Air Servs. Inc., 196 USPQ 851, 855 (TTAB 1977) (holding MOHAWK 298, for airplanes, to not falsely suggest a connection with the U.S. Army and the Army’s use of the term "Mohawk" to identify one of its airplanes, since there was no evidence of record that the Army continuously used the term since 1958, that the public was aware of such use, or that the public would associate "Mohawk" named airplanes with the U.S. Army).
Furthermore, the question of the registrability of a mark under §2(a) may be determined by "the nature of the goods or services in connection with which the mark is used and the impact of such use on the purchasers of goods or services of this type." NASA v. Record Chem. Co., 185 USPQ 563, 568 (TTAB 1975) . Thus, the identified goods or services must be scrutinized in the context of the current marketplace to determine whether they are of the type to be offered by U.S. government agencies and instrumentalities. For instance, if the evidence supports a finding that it is commonplace for government agencies to sell or license the sale of consumer merchandise featuring agency names or acronyms, such as clothing, toys, key chains, and calendars, a false connection with a government agency would be presumed if that agency name or acronym is used in connection with those goods and, therefore, the mark should be refused registration under §2(a).
The §2(a) false suggestion of a connection refusal and the procedures stated above also apply to marks containing names of, and acronyms and terms for, U.S. government programs (e.g., Medicare or FAFSA), military projects (e.g., BigDog), and quasi-government organizations (e.g., Smithsonian Institution). The examining attorney may also require the applicant to provide additional information about the mark and/or the goods or services, under 37 C.F.R. §2.61(b).
Disclaiming the name of, or acronym for, the U.S. government agency or instrumentality to which the mark refers generally will not overcome the §2(a) refusal. See TMEP §1213.03(a) regarding unregistrable components of marks. If the test for false suggestion of a connection under §2(a) is not met, the examining attorney must still determine whether the applicant is authorized to register the designation in the mark. If, based on the record, the applicant lacks authorization from the government agency or instrumentality to register the mark, the examining attorney must refuse under §1 and §45. See TMEP §1201.06(c).
Some designations have been held to falsely suggest a connection to a person or an institution within the meaning of Trademark Act §2(a). 15 U.S.C. §1052(a); e.g., In re Thomas D. Foster, APC, 136 F.4th 1090, 1094-96 (Fed. Cir. 2025) (holding US SPACE FORCE for a variety of goods falsely suggested a connection with the United States, specifically the U.S. SPACE FORCE military branch created by Congress in December 2019); Piano Factory Grp., Inc. v. Schiedmayer Celesta GmbH, 11 F.4th 1363 (Fed. Cir. 2021) (holding SCHIEDMAYER for pianos falsely suggested a conection with the well-known Schiedmayer Celesta GmbH business that manufactured and sold quality keyboard musical instruments for nearly 300 years); In re Shinnecock Smoke Shop, 571 F.3d 1171 (Fed. Cir. 2009) (holding SHINNECOCK BRAND FULL FLAVOR and SHINNECOCK BRAND LIGHTS, both for cigarettes, falsely suggested a connection with the Shinnecock Indian Nation); In re Leathernecks Motorcycle Club Int’l, Inc., Ser. No. 90498154, 2024 TTAB LEXIS 208, at *27-28 (2024) (holding LEATHERNECKS for indicating membership in a motorcycle club falsely suggested a connection with the U.S. Marine Corps where the evidence showed the mark was a known nickname for the USMC); In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786 (TTAB 2020) (holding TRUMP-IT MY PACKAGE OPENER MAKE OPENING PACKAGES GREAT and design and TRUMP-IT MY PACKAGE OPENER and design, both for utility knives, falsely suggested a connection with Donald Trump); In re Jackson Int’l Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417 (TTAB 2012) (holding BENNY GOODMAN COLLECTION THE FINEST QUALITY (stylized) for fragrance and cosmetics falsely suggested a connection with the deceased musician Benny Goodman; the record showed that Benny Goodman’s estate had a business representative that granted people the use of his name and/or persona); In re Peter S. Herrick, P.A., 91 USPQ2d 1505 (TTAB 2009) (holding U.S. CUSTOMS SERVICE and seal design for attorney services falsely suggested a connection with the government agency formerly known as the U.S. Customs Service and now known as the U.S. Customs and Border Protection); Hornby v. TJX Cos., 87 USPQ2d 1411 (TTAB 2008) (holding TWIGGY for children’s clothing falsely suggested a connection with the internationally known British model and actress who was a major celebrity in the late 1960s, finding that she retained a sufficient degree of fame or reputation that a connection would still be presumed by consumers seeing the mark TWIGGY on children’s clothing as of the date on which respondent’s registration issued in 2000); Ass'n Pour La Def. et la Promotion de L'Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838 (TTAB 2007) (holdinig MARC CHAGALL for vodka falsely suggested a connection with the painter Marc Chagall); In re White, 80 USPQ2d 1654 (TTAB 2006) (holding MOHAWK for cigarettes falsely suggested a connection with the federally recognized tribe the St. Regis Band of Mohawk Indians of New York); In re White, 73 USPQ2d 1713 (TTAB 2004) (holding APACHE for cigarettes falsely suggested a connection with the nine federally recognized Apache tribes); In re Urbano, 51 USPQ2d 1776 (TTAB 1999) (holding SYDNEY 2000, used for advertising and business services and communication services, falsely suggested a connection with Olympic Games, since the general public would recognize the phrase as referring unambiguously to Olympic Games to be held in Sydney, Australia in 2000; entire organization that comprises Olympic games qualifies as "institution."); In re Sloppy Joe’s Int’l Inc., 43 USPQ2d 1350 (TTAB 1997) (holding SLOPPY JOE’S, with design that includes portrait of Ernest Hemingway falsely suggested a connection with deceased writer); In re N. Am. Free Trade Ass’n, 43 USPQ2d 1282 (TTAB 1997) (holding NAFTA, used on "promotion of trade and investment" services, falsely suggested a connection with the North American Free Trade Agreement; NAFTA qualifies as institution because it encompasses treaty, supplemental agreements, and various commissions, committees and offices created by those documents); In re Sauer, 27 USPQ2d 1073 (TTAB 1993) (holding BO BALL for oblong shaped leather ball with white stitching falsely suggested a connection with athlete Bo Jackson), aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994); Bd. of Tr. of Univ. of Ala. v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986) (granting petition to cancel registration of BAMA, for shoes, slippers, stockings, socks, and insoles because BAMA pointed uniquely to the University of Alabama and thus falsely suggested a connection with the University); In re Cotter & Co., 228 USPQ 202 (TTAB 1985) (holding WESTPOINT, for shotguns and rifles, falsely suggested a connection with an institution, the U.S. Military Academy); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985) (denying applicant’s motion for summary judgment because evidence of record supported an association of MARGARITAVILLE with the public persona of opposer Jimmy Buffett); In re U.S. Bicentennial Soc'y, 197 USPQ 905 (TTAB 1978) (holding U.S. BICENTENNIAL SOCIETY, for ceremonial swords, falsely suggested a connection with the American Revolution Bicentennial Commission and the U.S. government); In re Nat'l Intel. Acad., 190 USPQ 570 (TTAB 1976) (holding NATIONAL INTELLIGENCE ACADEMY, for educational and instructional services in intelligence gathering for law enforcement officers, falsely suggested a connection with the U.S. government); In re Nat’l Collection & Credit Control, 152 USPQ 200 (TTAB 1966) (holding the word "national" along with an outline representation of the United States or a representation of an eagle, for collection and credit services, falsely suggested a connection with the U.S. government).
Other designations have been held not to falsely suggest a connection to a person or institution within the meaning of §2(a). E.g., Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1377 (Fed. Cir. 1983) (holding NOTRE DAME and design, for cheese, not to falsely suggest a connection with the University of Notre Dame. "As the Board noted, ‘Notre Dame’ is not a name solely associated with the University. It serves to identify a famous and sacred religious figure and is used in the names of churches dedicated to Notre Dame, such as the Cathedral of Notre Dame in Paris, France. Thus it cannot be said that the only ‘person’ which the name possibly identifies is the University and that the mere use of NOTRE DAME by another appropriates its identity."); Mystery Ranch, Ltd. v. Terminal Moraine Inc., 2022 USPQ2d 1151, at *1, *11-12 (TTAB 2022) (holding DANA DESIGN and design for camping and hiking backpacks and shoulder bags and camping tents and tent accessories not to falsely suggest a connection to opposer Mystery Ranch Ltd., despite consumer’s associating Dana Gleason and opposer, because DANA was not the same or close approximation of opposer’s name or identity and did not point uniquely and unmistakably to opposer); U.S. Olympic Comm. v. Tempting Brands Neth. B.V., 2021 USPQ2d 164, at *2-3, *22, *32-33 (TTAB 2021) (holding PIERRE DE COUBERTIN for a variety of personal goods, including toiletries, jewelry, and clothing, not to falsely suggest a connection with opposer the U.S. Olympic Committee because, although Coubertin is widely recognized for launching the Olympic movement in the late 19th century, evidence did not show his name pointing uniquely to the USOC or the Olympic movement); Pierce-Arrow Soc’y v. Spintek Filtration, Inc., 2019 USPQ2d 471774, at *6-8 (TTAB 2019) (holding PIERCE-ARROW for automobiles not to falsely suggest a connection with the Pierce-Arrow Society because the evidence did not show the society was a legal successor of the Pierce-Arrow Motor Car Company, the society’s preservation efforts of the car made by and protection of the marks of that company did not uniquely point to the society, and the former company and its abandoned trademarks were not famous or had any reputation that transferred to the society); Bos. Athletic Ass'n v. Velocity, LLC, 117 USPQ2d 1492, 1496-99 (TTAB 2016) (holding MARATHON MONDAY for clothing not to falsely suggest a connection with opposer because the evidence did not establish that MARATHON MONDAY is perceived by the relevant public as a close approximation of the name or identity of opposer, and frequent and various third-party uses of MARATHON MONDAY indicated that the term does not point uniquely and unmistakably to opposer); In re MC MC S.r.l.,88 USPQ2d 1378, 1381 (TTAB 2008) (holding MARIA CALLAS for jewelry and other goods not to falsely suggest a connection with Maria Callas, the famous deceased opera singer, her heirs or her estate because the record contained contradictory evidence as to the existence of anyone currently possessing rights in the name "Maria Callas," and resolving doubt in favor of applicant "removes the possibility that we might be denying registration to an applicant based on non-existent rights," and because a person or entity claiming rights in a name or persona has recourse since §2(a) is not time barred); In re L.A. Police Revolver & Athletic Club, Inc., 69 USPQ2d 1630 (TTAB 2004) (holding slogan TO PROTECT AND TO SERVE, used by applicant Los Angeles Police Revolver and Athletic Club, Inc., not to falsely suggest a connection with the Los Angeles Police Department, where evidence showed an actual longstanding commercial connection, publicly acknowledged and endorsed by both parties); Internet Inc. v. Corp. for Nat’l Resch. Initiatives, 38 USPQ2d 1435 (TTAB 1996) (holding cancellation petitioners failed to state claim for relief where they had not alleged, and could not reasonably allege, that the term INTERNET points uniquely and unmistakably to their own identity or persona); Ritz Hotel Ltd. v. Ritz Closet Seat Corp., 17 USPQ2d 1466, 1471 (TTAB 1990) (holding RIT-Z in stylized form for toilet seats not to falsely suggest a connection with opposer, where there was no evidence showing a connection between applicant’s mark and opposer corporation, The Ritz Hotel Limited); In re Nuclear Rsch. Corp., 16 USPQ2d 1316 (TTAB 1990) (holding NRC and design, for radiation and chemical agent monitors, electronic testers, and nuclear gauges, not to falsely suggest a connection with the U.S. Nuclear Regulatory Commission in view of applicant’s use of NRC long prior to the inception of that agency); NASA v. Bully Hill Vineyards, Inc., 3 USPQ2d 1671, 1676 (TTAB 1987) (dismissing opposition to the registration of SPACE SHUTTLE for wines and holding "shuttle" to be a generic term for a space vehicle or system; "[w]here a name claimed to be appropriated does not point uniquely and unmistakably to that party’s personality or ‘persona,’ there can be no false suggestion" of connection); In re Mohawk Air Servs. Inc., 196 USPQ 851 (TTAB 1977) (holding MOHAWK 298 not to falsely suggest a connection with the U.S. Army and the Army’s use of the term "Mohawk" to identify one of its airplanes, since there was no evidence that the Army continuously used that term since 1958, the public was aware of such use, or the public would associate "Mohawk" named airplanes with the Army); NASA v. Rec. Chem. Co., 185 USPQ 563 (TTAB 1975) (dismissing opposition to registrations of APOLLO 8 for moth preventatives and mothproofing agent-air freshener because, while NASA is a juristic person and prior user of the terms APOLLO and APOLLO 8 for its space missions, it is unlikely that the average purchaser of applicant’s goods would assume NASA to be source or sponsorship of the goods or mistakenly believe that the goods were of NASA space exploration technology); FBI v. Societe: "M.Bril & Co.", 172 USPQ 310 (TTAB 1971) (dismissing opposition to registration of FBI FABRICATION BRIL INTERNATIONAL for clothing since it was unreasonable that the public would assume applicant’s goods originated with, were sponsored or endorsed by, or associated with the Federal Bureau of Investigation, finding that "FBI" represents "Fabrication Bril International" and purchasers would see the entire composite mark on the goods and not just "FBI," and noting that both the U.S. government and the Federal Bureau of Investigation are juristic persons); In re Horwitt, 125 USPQ 145, 146 (TTAB 1960) (holding U. S. HEALTH CLUB registrable for vitamin tablets. "Considering both the nature of the mark and the goods, it is concluded that the purchasing public would not be likely to mistakenly assume that the United States Government is operating a health club, that it is distributing vitamins, or that it has approved applicant’s goods."); Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329 (S.D.N.Y. 1970) (holding DA VINCI not to falsely suggest a connection with deceased artist Leonardo Da Vinci).