TTAB authorizes registration of MARIA CALLAS in the absence of heir

In In re MC MC Srl (Application 79022561, September 26 2008), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has reversed the refusal of the US Patent and Trademark Office (USPTO) to register the mark MARIA CALLAS.

MC MC Srl, an Italian Corporation, sought to register the name of the famous deceased opera singer Maria Callas as a trademark for goods in Class 14 of the Nice Classification, including jewellery. The examining attorney of the USPTO refused the application after applying the four-factor test of Section 2(a) of the Lanham Act, which states that a mark “consisting or comprising […] matter which may falsely suggest a connection with persons living or dead” should be refused registration. In particular, the examining attorney asserted that:

the trademark MARIA CALLAS was identical to the name Maria Callas;
the trademark MARIA CALLAS would be recognized as being exactly the same as the singer’s name;
Maria Callas was not connected with the goods sold by MC; and
the fame of Maria Callas was such that consumers would presume a connection between the singer and MC's goods.

MC appealed, arguing that the singer was deceased and that no heir or estate was vested with rights to enforce Maria Callas’s name and personality. MC contended that Maria Callas’s name was in the public domain and, therefore, its registration could not violate the act.

The TTAB considered the “contradictory information” submitted by MC and the examining attorney as to the existence of a person vested with rights to protect Maria Callas’s name and concluded that a “significant doubt” remained. On one side, the examining attorney referred to an entity that “appears to authorize releases” of Maria Callas’s recordings and to a Greek law firm that claims to represent her estate. On the other side, MC submitted declarations from a Greek investigator and the president of the International Maria Callas Cultural Association in which both deny the existence of any heir or estate vested with rights in Maria Callas’s name.

The TTAB confirmed that the burden of proof was on the examining attorney to demonstrate that registering the mark would falsely suggest a connection with the deceased singer by showing evidence of a successor-in-interest to Maria Callas’s rights. The examining attorney claimed that Section 2(a) did not require the USPTO to prove beyond any doubt the current existence of heirs or estate protecting Maria Callas’s rights. However, the TTAB held that the existence of doubt favoured MC and the registration could not be refused. In addition, the TTAB pointed out that if an heir or estate of Maria Callas ever did allege rights in the name, such a party could seek to cancel the registration at any time under Section 14 of the act.

Ron N Dreben and Alix Bretonniere, Morgan Lewis, Washington DC