[This guest post was written by Kira-Khanh McCarthy, a law clerk (soon-to-be associate) in the Trademark Group at Wolf, Greenfield & Sacks, P.C.] The USPTO refused to register the mark GLOBAL OSHA GLOBAL OCCUPATIONAL SAFETY AND HEALTH ACADEMY, LLC and Design (shown immediately below) [GLOBAL OSHA and GLOBAL OCCUPATIONAL SAFETY AND HEALTH ACADEMY disclaimed] for “consulting in the field of workplace safety,” finding that it falsely suggests a connection with the Occupational Safety and Health Administration (“Administration”) of the U.S. Department of Labor, in violation of Section 2(a) of the Trademark Act. Applicant submitted evidence of third-party use of OSHA disavowing association with the U.S. Department of Labor, similar to how Applicant’s own website expressly denies any connection with the Administration. How do you think this came out? In re Global Occupational Safety and Health Academy, LLC, Serial No. 88087696 (Dec. 8, 2020) [not precedential] (Opinion by Judge Frances Wolfson).

Section 2(a) of the Trademark Act bars registration of marks that “falsely suggest a connection with persons . . . [or] institutions . . .” The burden rests with the USPTO to show:

  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.

Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., Inc., 703 F.2d 1372, 217 USPQ 505, 508-10 (Fed. Cir. 1983) (emphasis added).

As to the first element, whether Applicant’s mark is the same as (or a close approximation of) a name or identity previously used by the Administration, the Board acknowledged that there are two prongs to this inquiry. First, the Board must consider whether OSHA is a name or identity of the Administration within the U.S. Department of Labor. Second, it must determine if Applicant’s mark is a close approximation of OSHA. Given OSHA is a well-known acronym for the Administration (as evidenced by the Administration’s own website: www.osha.gov) the Board found OSHA to be a name that identifies the Administration. Next, in light of the descriptiveness of GLOBAL OSHA and GLOBAL OCCUPATIONAL SAFETY AND HEALTH ACADEMY, LLC (remember, these terms were disclaimed) and because GLOBAL OCCUPATIONAL SAFETY AND HEALTH ACADEMY, LLC is in smaller type size (making GLOBAL OSHA the dominant feature of the mark) the Board held that Applicant’s mark is a close approximation of OSHA.

As to the second element, whether Applicant’s mark points uniquely and unmistakably to the Administration, the Board considered whether the average consumer of Applicant’s services would recognize OSHA as pointing singularly to the Administration. In its case-in-chief, Applicant submitted copies of 21 third-party registrations for OSHA-formative marks, and copies of web pages showing use of those registered marks, for similar and related services. In addition, Applicant provided evidence of other third-party use of OSHA for training or consultation services. Since the majority of the third-party websites disavowed any business relationship with the U.S. Department of Labor (similar to Applicant’s own website, discussed in more detail immediately below), the Board agreed that Applicant’s mark does not point uniquely to a single entity such that it is unmistakably associated with the Administration.

As to the third element, whether the Administration is connected with Applicant’s activities performed under its mark, the Board emphasized that the type of “connection” contemplated by Section 2(a) is “a commercial connection, such as an ownership interest or commercial endorsement or sponsorship of applicant’s services.” In re Sloppy Joe’s Int’l Inc., 43 USPQ2d 1350, 1354 (TTAB 1997). In this case, Global Osha disavowed any such commercial connection with the Administration by clearly stating as much on its website. Its home page openly displays: “Global Occupational Safety and Health Academy, LLC is not a government agency and is not affiliated with the U.S. Department of Labor or the Occupational Safety and Health Administration.” Thus, the USPTO satisfied the third element of the test.

And finally, as to the fourth element, whether the fame or reputation of OSHA is such that a connection with the Administration would be presumed, the TTAB concluded that “[a]lthough Applicant has disavowed any relationship with the [U.S. Department of Labor], we have no doubt that prospective purchasers of Applicant’s services will recognize that the term OSHA identifies the Administration.” In its analysis, the Board considered the fact that OSHA is defined by Merriam-Webster as “Occupational Safety and Health Administration” and that Applicant promotes itself as being “founded and managed by former senior management staff and safety experts from the U.S. Department of Labor, Occupational Safety and Health Administration’s Directorate of Training and Education.”

 Nonetheless, in light of the USPTO failing to meet the second element of the Section 2(a) false connection test, the Board reversed this refusal to register.

Here, because there are many companies that use the designation OSHA as a constituent part of their marks to indicate their own safety-related services, the mark does not point uniquely to the Administration. Thus, there is no false suggestion of a connection with the Administration arising from Applicant’s similar use of the term OSHA.

Read comments and post your comment here.

TTABlogger comment: How did you do? Question: So if you want to avoid a 2(a) false connection refusal, all you have to do is disavow a connection? [Kira says no, you need to show third parties using the mark in a similar way!]

Text Copyright Kira-Khan McCarthy 2020.