TMEP 1206.02: Connection With Goods or Services

October 2017 Edition of the TMEP

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1206.02    Connection With Goods or Services

Whether consent to registration is required depends on whether the public would recognize 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. See In re Hoefflin, 97 USPQ2d 1174, 1175-76 (TTAB 2010); Krause v. Krause Publ'ns, Inc., 76 USPQ2d 1904, 1909-10 (TTAB 2005). For purposes of §2(c), "publicly connected" means that the named individual is associated in some significant manner with the applicant, is actually connected to the goods or services at issue, or is well known in the relevant field of goods or services, and, as a result, the relevant public will recognize or perceive the name as identifying that particular individual. See In re Sauer, 27 USPQ2d 1073, 1075 (TTAB 1993), aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994); Reed v. Bakers Eng’g & Equip. Co., 100 USPQ 196 (PTO 1954) (holding registration of REED REEL OVEN barred by §2(c) in the absence of written consent to register from the designer and builder of the ovens, Paul N. Reed); see also TMEP §1206.03 (noting that, because there must be some indication that the relevant public would actually perceive the name as identifying a particular individual, the mere fact that the name is the first name, pseudonym, stage name, surname, nickname, or title of a living individual associated with the applicant (e.g., an employee, founder, or corporate officer) usually would not, by itself, necessitate an inquiry regarding the name).

The Trademark Trial and Appeal Board stated the following in Martin v. Carter Hawley Hale Stores, Inc., 206 USPQ 931, 933 (TTAB 1979) :

[Section] 2(c) was not designed to protect every person from having a name which is similar or identical to his or her name registered as a trademark. Such a scope of protection would practically preclude the registration of a trademark consisting of a name since in most cases there would be someone somewhere who is known by the name and who might be expected to protest its registration. Rather, the Statute was intended to protect one who, for valid reasons, could expect to suffer damage from another’s trademark use of his name. That is, it is more than likely that any trademark which is comprised of a given name and surname will, in fact, be the name of a real person. But that coincidence, in and of itself, does not give rise to damage to that individual in the absence of other factors from which it may be determined that the particular individual bearing the name in question will be associated with the mark as used on the goods, either because that person is so well known that the public would reasonably assume the connection or because the individual is publicly connected with the business in which the mark is used.

In Krause v. Krause Publ’ns, 76 USPQ2d at 1909-10, the evidence of record showed, among other things, that the cancellation petitioner, Chester L. Krause, formed a sole proprietorship under the name "Krause Publications" for the purpose of publishing coin collecting publications; was subsequently associated for almost fifty years with the respondent Krause Publications Inc., a major publisher of hobby magazines, newspapers, and price guides, as its president and/or chairman; coauthored at least three publications in the field of the study and collecting of coins; conducted a number of lectures on this subject around the country; received awards from national coin- and car-collecting organizations in recognition of his contributions to those fields; was the founder of a car show and swap meet; and had his large collection of cars featured in a film by an organization dedicated to automotive history. 76 USPQ2d at 1907, 1908, 1910-11. The Board found that this evidence established that the petitioner was publicly connected with the fields of coin collecting, car collecting, and publishing activities relating thereto, such that a connection between petitioner and the mark KRAUSE PUBLICATIONS would be presumed by those who have an interest in such fields. Id. at 1910. Thus, as to the goods and services related to those fields, the Board granted the petition to cancel because the mark identified a particular living individual and there was no written consent to register. Id. at 1914. However, the petition to cancel the registration for "entertainment services in the nature of competitions and awards in the field of cutlery," was dismissed because petitioner had not demonstrated that he was publicly connected with the field of cutlery, or that he is so well known by the general public that a connection between petitioner and the mark would be presumed with respect to these services. Id. at 1910, 1911-12, 1914.

If no one with the name of the person identified in the mark is actually connected with the applicant or with the business in which the mark is used, and no person with the name in the mark is generally known such that a connection would be assumed, the mark generally would not be deemed to identify a particular person under §2(c), and consent would not be required. See In re Morrison & Foerster LLP, 110 USPQ2d 1423, 1428 (TTAB 2014) (holding no consent required because applicant's FRANKNDODD mark would be understood by the relevant consuming public as referencing and commenting on the Dodd-Frank Act, rather than as specifically identifying Congressman Barney Frank and Senator Chris Dodd); Martin, 206 USPQ at 933 (holding that §2(c) did not prohibit registration of NEIL MARTIN for men’s shirts, where the individual, although well known in his own professional and social circles, failed to establish that he was so famous as to be recognized by the public in general, or that he is or ever was publicly connected or associated with the clothing field); Brand v. Fairchester Packing Co., 84 USPQ 97 (Comm’r Pats. 1950) (affirming dismissal of a petition to cancel the registration of the mark ARNOLD BRAND for use with fresh tomatoes because nothing in the record indicated that the mark identified the petitioner, Arnold Brand, an attorney specializing in patent and trademark matters, with the tomato business, or that use of the mark would lead the public to make such a connection).

To support a refusal under §2(c) as to a particular class in an application, it is not necessary to demonstrate that the individual is publicly connected with all the goods or services listed in the class. It is enough to show that the individual is publicly connected with at least some of the goods/services in the class. See Krause,76 USPQ2d at 1911.