Mark refused based on false suggestion of connection with musician Benny Goodman

Although the applicant had previously obtained a US registration (now cancelled) for an identical mark covering similar goods, upon re-filing, the US Patent and Trademark Office refused registration under Section 2(a). In support of the refusal, the examining attorney submitted a panoply of internet references, including 'Benny Goodman: The Official Website of the King of Swing', printouts describing Benny Goodman’s biography and long and successful career as a jazz musician, and other evidence of online sales of Benny Goodman’s recordings.  Language contained on the Benny Goodman website made clear that “CMG Worldwide is the exclusive business representative for the estate of Benny Goodman”, and that use of IP rights in Benny Goodman’s name was prohibited without the “express written consent of the estate".

In reviewing the examiner’s refusal, the TTAB applied the four-part test as set forth in University of Notre Dame du Lac v JC Gourmet Food Imports Co Inc (217 USPQ 505 (Fed Cir 1983), aff’g 213 USPQ 594 (TTAB 1982)) to determine whether a false suggestion of a connection with the name Benny Goodman had been established:

• The mark is the same as, or a close approximation of, the name of or identity previously used by another person;
• The mark would be recognised as such because it points uniquely and unmistakably to that person;
• The person named by the mark is not connected with the activities performed by the applicant under the mark; and;
• The prior user's name or identity is of sufficient fame or reputation that a connection with such person would be presumed when the applicant's mark is used on the applicant's goods.

In addressing the first factor, the TTAB found that the applicant’s mark was a close approximation to the name Benny Goodman. By failing to argue otherwise, the applicant effectively conceded this point. 

Next, the TTAB cited several cases standing for the proposition that it is common for owners of famous marks to expand their product lines to include other goods “which are unrelated in nature to those goods on which the marks are normally used (…).” This factor militated against the applicant. Accordingly, the TTAB concluded that customers encountering the applicant’s use of the mark BENNY GOODMAN COLLECTION THE FINEST QUALITY for fragrances, cosmetics, leather goods and clothing would associate the mark with Benny Goodman, the musician. 

The applicant argued in its brief that Benny Goodman and his music is or was well known only to those over the ages of 30 or 40. Additionally, it argued that Benny Goodman is not a unique name because it can be found easily in “ubiquitous [F]acebook pages”. However, the applicant did not provide any evidence in support of these arguments. Even if it had, the TTAB noted that the applicant did not dispute that people over the age of 30 or 40 (still a substantial segment of the population), would be aware of Benny Goodman, the musician. 

With regard to the third factor, the TTAB found that that there was no evidence that the musician, Benny Goodman, was connected with the applicant or its provision of cosmetics and other goods. 

Lastly, the TTAB held that the evidence made of record by the examiner demonstrated that the name Benny Goodman was sufficiently famous such that use of the name by the applicant would falsely suggest a connection with Benny Goodman, the musician.

The applicant argued that there was uncertainty as to who represented the estate or heirs of Benny Goodman, and that the estate had tacitly agreed to the applicant’s use and registration for a period of 15 years. It asserted that the facts of this case were analogous to those in In re MC MC Sr1, in which the Section 2(a) refusal to register the name Maria Callas was reversed because there was no evidence of an estate with rights in the singer’s name. The TTAB found these arguments to be contrary to language on the Benny Goodman website, and to the applicant’s own statements acknowledging its awareness of heirs claiming rights in the name Benny Goodman. 

In view of the foregoing, the TTAB affirmed the examiner’s refusal of the mark BENNY GOODMAN COLLECTION THE FINEST QUALITY under Section 2(a).

Michael D Brinton, Arent Fox LLP, Washington DC