Section 2(a) False Association: Section 2(a), in pertinent part, bars registration of a mark that “Consists of or comprises …matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols ….” The Board shot down Applicant Moose’s novel, if goofy, argument that Section 2(a) cannot apply to Internet-based services since the Internet did not exist when the Lanham Act was written: “The critical inquiry is whether an applicant’s mark creates a false suggestion of a connection with a person, living or dead, howsoever the false suggestion is conveyed.”
Moose also argued that no one would believe that Ronald Reagan had “sanctioned, approved, or was endorsing or influencing” the information provided. The Board pointed out that even if consumers were not confused by Moose’s use of the surname Reagan, a mark that falsely suggests a connection with Ronald Reagan violates his (Reagan’s) right of privacy and publicity. “Because there is a successor to President Reagan’s legacy [The Ronald Reagan Presidential Foundation and Institute], the rights to exploit his ‘persona’ are protected under Section 2(a).”
To establish its claim of false suggestion of a connection under Section 2(a), the USPTO must prove:
(1) that Applicant’s mark is, or is a close approximation of, Ronald Reagan’s name or identity, as previously used by him or identified with him;
(2) that Applicant’s mark would be recognized as such by consumers of Applicant’s services, in that it points uniquely and unmistakably to Ronald Reagan;
(3) that Ronald Reagan is not connected with the services that are sold or will be sold by Applicant under its mark;and
(4) that Ronald Reagan’s name or identity is of sufficient fame or reputation that when used by Applicant as a mark for its services, a connection with Ronald Reagan would be presumed.
As to the first prong, it was clear from Moose’s own website that his mark is intended to identify former President Reagan. (see below)
As to the second prong, the Board had no doubt that the “Reagan” that Moose’s mark refers to is the former President, and Moose did not contest that conclusion. As to the third prong, Examining Jay K. Flowers proved that the “name REAGAN is currently protected and all rights of publicity ‘in the name, image, likeness, voice and signature of the late Ronald Wilson Reagan’ are owned by The Ronald Reagan Presidential Foundation and Institute.”
As to the fourth prong, Applicant Moose did not disagree that former president Reagan has so famous a reputation that consumers would presume that Moose’s services had a connection with Reagan. In any case, a Google search of the word “Reagan” yielded information about Ronald Reagan as “the number one hit of over 93,000,000 results.”
The term REAGAN in Applicant’s mark points uniquely and unmistakably to Ronald Reagan. Consumers of Applicant’s services would presume, due to Reagan’s continuing fame even 14 years after his death, that Applicant was connected to the entity that inherited Reagan’s rights. Because there is no such connection, the mark falsely suggests a connection where none exists. The mark is thus unregistrable under Section 2(a).
Section 2(d):: The examining attorney also refused registration of Moose’s mark on the ground of likelihood of confusion with the registered mark RONALD REAGAN for “Educational services, namely, arranging and conducting seminars and educational programs and providing webcasts in the fields of history, civics, education, and government,” owned by The Ronald Reagan Presidential Foundation and Institute.
The Board found that, because both marks refer to the same person, they are similar in sight, sound, connotation, and overall commercial impression. The word WORLD in Moose’s mark merely reinforces the impression that his services concern “Reagan’s life and times and world in which he lived.” As to the involved services, the Board found them to be in-part legally identical. They are presumed to travel in the same trade channels to the same classes of consumers.
Relying on the catch-all thirteenth du Pont factor, Moose called out that he owns registrations for KENNEDY WORLD, NIXON WORLD, and JOHNSON WORLD, noting that “these registrations also combine a former president’s name with the term “WORLD”; are for the same recitation of services as the subject application; and depict the marks in the same color and font scheme as the subject mark.” Therefore, Moose called for the same treatment of the REAGAN WORLD mark.
The Board, however, shot down Moose, agreeing with the examining attorney that the determination of registrability must be made on the basis of the particular facts and evidence in each case, “even if the PTO earlier mistakenly registered a similar or identical mark suffering from the same defect.
While we recognize that consistency is highly desirable, “consistency in examination is not itself a substantive rule of trademark law, and a desire for consistency with the decisions of prior examining attorneys must yield to proper determinations under the Trademark Act and rules.” In re Am. Furniture Warehouse CO, 126 USPQ2d 1400, 1407 (TTAB 2018); see also In re Cordua Rests., 118 USPQ2d at 1635. The USPTO must assess each mark on its own facts and record. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
And so the Board found confusion likely.
Conclusion: The Board affirmed both refusals.
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TTABlog comment: Presidential cases are usually precedential.
Text Copyright John L. Welch 2020.