PRINCESS KATE case opens door for reliance on evidence originating outside the US
In two precedential decisions, the Trademark Trial and Appeal Board (TTAB) has upheld refusals under Sections 2(a) and 2(c) of the Lanham Act to register the marks PRINCESS KATE and ROYAL KATE for use with a variety of fashion items on the grounds that the marks created a false connection with Kate Middleton and consisted of the name of a living individual whose consent was not of record (In re Nieves & Nieve LLC (Serial Nos 85179243 and 85179263, January 30 2015)).
In deciding whether to uphold the refusal under Section 2(a) that the marks created a false connection with Kate Middleton, the TTAB applied a four-part test of whether:
- the marks were the same as, or a close approximation of, Kate Middleton’s identity;
- the marks would be recognised by the relevant purchasers as pointing uniquely to Kate Middleton;
- Kate Middleton is not connected with the applicant’s goods to be sold under the marks; and
- Kate Middleton is sufficiently famous that a connection between her and the applicant’s goods would be presumed due to the use of the marks.
The TTAB easily found that each factor weighed in favour of the refusal. As to the first factor, with respect to the PRINCESS KATE mark, the TTAB rejected the applicant’s argument that Kate Middleton’s title is technically a duchess rather than a princess. Central to the TTAB’s analysis was the purpose of a Section 2(a) refusal as protecting the right of publicity (meaning a person’s right to control his or her identity) rather than avoiding consumer confusion.
Interestingly, in evaluating media evidence that Kate Middleton is sometimes inaccurately referred to as Princess Kate, the TTAB considered articles from publications outside the United States. This is a departure from the usual practice that limits the probative value of evidence that hails from outside the United States, reasoning that it is not reflective of the perception of the US consuming public. Here, however, the TTAB found that US consumers interested in Kate Middleton, particularly because she is a celebrity who lives outside the United States, “would consult available English-language information sources, regardless of the geographic location of the information source”. The TTAB also took note of the increasing reliance of Americans on the Internet for news information, as further supporting its willingness to consider foreign news sources as evidence in this case. The TTAB hastened to add, however, that its decision would have been the same even if it had not considered the non-US articles. Regardless, this case opens the door for reliance by both the Trademark Office and applicants on evidence that originates outside the United States, at least where there is a good argument for doing so.
As to the second factor, the TTAB relied on evidence that Kate Middleton is perceived as a fashion icon. Based on that reputation, and having found that the marks closely approximate her identity, the TTAB determined that consumers would draw a connection between the marks and the fashion-related goods in the applications.
The third factor was undisputed, and the fourth factor regarding Kate Middleton’s fame was easily supported by the evidence. Thus, the TTAB upheld the refusals under Section 2(a).
Similar reasoning allowed the TTAB to refuse registration under Section 2(c) as well on the ground that the marks identified a living person whose consent was not of record:
“Whether consent to registration is required depends on whether the public would recognise and understand the mark as identifying a particular living individual. A consent is required only if the individual bearing the name in the mark will be associated with the mark as used on the goods or services, either because: (1) the person is so well known that the public would reasonably assume a connection between the person and the goods or services; or (2) the individual is publicly connected with the business in which the mark is used.”
Having already determined that the marks point to Kate Middleton and that she is sufficiently connected with fashion that consumers would assume a connection between her and the goods in the application, the TTAB easily found that her consent as a living individual was required in order for the marks to be registered. As there was not such consent, registration was refused.
Ultimately, the TTAB’s willingness to consider evidence that hails from outside the United States may be the most noteworthy and impactful part of these cases.
Karin Segall, Leason Ellis LLP, White Plains
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