TTAB affirms refusal to register name of Native American people under Section 2(a)
A word that primarily, but not necessary exclusively, refers to a group of people may not be registrable as a trademark in the United States if the word falsely suggests to consumers an association between the applicant and the identified group. This point of law was the subject of the Trademark Trial and Appeal Board’s (TTAB) affirmance of a refusal to register Kent Pedersen’s application for the mark LAKOTA, applied for in connection with herbal remedies and similar medicinal goods in Class 5 of the Nice Classification (In re Pedersen (Serial No 85328868, December 30 2013)).
In an opinion stretching 43 pages, the TTAB set out the reasons why registration of LAKOTA was impermissible under 15 USC §1052(a). Section 2(a) of the Lanham Act prohibits registration of a mark that consists of, or comprises, matter that may falsely suggest a connection with persons, institutions, beliefs or national symbols. Under Section 2(a), the trademark office has the burden to show that a mark falsely suggests a connection with a person or an institution, judged by the following four-part test:
- Is the mark the same or a close approximation of a name previously used by another person or institution?
- Would the mark be recognised as such, because it points uniquely and unmistakably to that person or institution?
- Is the applicant not connected with the person or institution named by the mark?
- Is the fame or reputation of the person or institution such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution is presumed?
For the first two points, the TTAB agreed with the examining attorney’s contention that the word 'Lakota' referred to the Native American people who are part of the Sioux Indian tribe. The dictionary definition and evidence showing countless uses of 'Lakota' to refer to the western part of the Sioux tribe easily carried the day over the applicant’s argument that, because 'Lakota' also referred to the name of the language spoken by the Lakota people, it could not uniquely and unmistakably refer only to the people. Further, the TTAB concluded that a group of people like the Lakota do qualify as an 'institution' for the purposes of §2(a).
As to the third point, the applicant offered evidence showing that his organisation, through a licensee, is philanthropically connected to the Lakota people. However, the TTAB considered this philanthropy not sufficiently connected to commercial interests between the applicant and the Lakota people, especially as related to the applied-for goods. An actual commercial connection between the applicant and the identified person or institution is necessary to show that a connection made in the mind of a consumer is not “false”; mere philanthropy in favour of the identified person is not sufficient.
In addition, the applicant argued that, because 'Lakota' refers to a loose confederation of people, it lacks the ability to affirm or authorise the applicant’s use of LAKOTA as a trademark, and thus, the refusal was incorrect. However, the TTAB disagreed, noting that a false suggestion of a connection may be found when one’s right to control is violated “even if the name was never commercially exploited as a trademark” beforehand.
One last argument made by the applicant included reference to third-party registrations that contain the word 'Lakota'. In the applicant’s view, these registrations demonstrated that the mark is registrable because the USPTO has previously allowed the mark to be registered. However, the TTAB reminded the applicant that each case is decided on its own merits and noted that third-party registrations are not afforded significant weight in an inquiry regarding falsely suggesting a connection under §2(a) because the facts of each case uniquely bear on whether the connection is false.
Finally, the TTAB addressed the fourth point, as to whether the fame of the Lakota people is significant enough to cause consumers to associate applicant’s herbal remedies with the Lakota people. The TTAB looked favourably on the evidence presented by the examining attorney depicting the economic activities of the Lakota people, including their extensive involvement in the economic development of their communities. In addition, the evidence showed that the Lakota people market products and services to the general public, including an ever-increasing tourism industry that includes multiple casinos. The TTAB also considered evidence of the Lakota’s reputation in practicing traditional herbal remedies, but was careful to note that “the fourth factor does not require proof of a reputation closely related to the applicant’s goods”. Instead, the office need only show fame such that a consumer might recognise the mark and think the goods were connected to the referenced people.
Thus, the TTAB, satisfied with the evidence presented by the examining attorney on each point of the four-point test, concluded that LAKOTA did falsely suggest a connection with a person or institution, and affirmed the refusal to register.
Steve Abreu, Sunstein Kann Murphy & Timbers LLP, Boston
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