Originally published on InsideCounsel
Fame is a mystery. Sometimes it attaches to people understandably, at others awkwardly. It can be won because of great actions and achievements, such as those of athletes or politicians. But it also arises due to notorious acts or dubious decisions (Did someone just say The Kardashians?).
In a complex interplay of tradition, history, attractiveness and pop adoration, fame lends its febrile aura to popes and kings. And, of course, to the members of the British royal family.
It's no surprise that some businesses want to cash in. But in seeking to trademark a royal's name, said the Trademark Trial and Appeal Board recently, "We are not amused."
The Board didn't say exactly that, of course. But in In re Nieves & Nieves LLC, it affirmed a USPTO examiner's refusals to register the trademarks Royal Kate and Princess Kate for cosmetics, jewelry, handbags, bedding and clothing.
The Board rested this refusal on its belief that these marks would falsely suggest a connection with Catherine, Duchess of Cambridge — the wife of Prince William of England commonly referred to in the media as "Kate" — in violation of Section 2(a) of the Lanham Act. In addition, the TTAB held that because the applied-for marks consist of or include a name identifying a particular living individual without her consent, registration was also barred by Section 2(c) of the Lanham Act.
To prove that an applicant's marks falsely suggest a connection with someone pursuant to Section 2(a), the Board utilizes a four-part test:
- Whether the mark is the same as or a close approximation of the person's previously used name or identity
- Whether the mark would be recognized as such by purchasers, in that it points uniquely and unmistakably to the person in question
- Whether the person in question is or is not connected with the goods sold by the applicant under the mark
- Whether the person's name or identity is of sufficient fame or reputation that when the mark is used with the applicant's goods, a connection with that person would be presumed
In response to the first part of this test, the applicant argued that Princess Kate and Royal Kate are not close approximations of Kate Middleton's name or identity because she is not, in fact, a princess, and she never used either name.
"Rubbish!" one almost hears in one's head — of course, in an upper-class English accent, on considering that argument. And the Board dutifully agreed with you. It explained that a term can rightfully be considered the identity of a person even if his or her name or likeness is not used. All that is required, according to the TTAB, is that the mark sought to be registered clearly identifies a specific person.
The Board went further, making explicit what it felt was implicit in a couple of its earlier decisions addressing similar issues: It stated that the first part of the test for the false suggestion of a connection questions whether the applicant's mark is the same as or a close approximation of the name or identity of a particular person other than the applicant, whether or not the particular person actually used the name or identity herself.
To support its decision, the Board's opinion cited numerous articles and other media mentions that referred to Kate Middleton as Princess Kate or Royal Kate. On the strength of this, it felt comfortable holding that the applied-for marks were indeed close approximations of the identity of Kate Middleton.
In moving to the second part of the four-part test, the Board held that the applicant's goods clearly reinforced the conclusion that the marks uniquely and unmistakably pointed to Kate Middleton, because she is looked to by many as a fashion trendsetter.
The third part was easy to rule on. The applicant admitted that Kate Middleton was neither associated with its goods nor had consented to the use of her identity.
To prove the fourth and final part — whether Kate Middleton's name or identity was of sufficient fame or reputation that a connection with her would be presumed when the mark is used with the applicant's goods, the examiner submitted evidence from foreign news sources. The examiner hoped that such evidence would help show the perception of the general U.S. public — the relevant consumers of the goods in the application — that they associated Kate Middleton with royalty and with fashion.
The examiner may have been concerned that because Kate Middleton lives and travels outside the U.S., the TTAB would not give her name as much protection as it would, say, to Michelle Obama's. Those concerns, however, were short-lived; the Board quickly observed, in holding that part four of the test was proven, that many American consumers use the Internet to gather news and information and thus may access these foreign sources.
Thus, the Board found that the evidence supported a conclusion that Kate Middleton, as a member of the British royal family, was the subject of great public interest in the United States and throughout the world. As such, the Board held that because of the interest surrounding her, media reports often report what she is wearing (or not wearing), where she goes and what she purchases. Ms Middleton's identity was of sufficient fame or reputation, noted the opinion, that if the applicant's marks Princess Kate and Royal Kate were used in connection with its goods, a connection with the duchess would be presumed. Both marks then falsely suggested a connection with Kate Middleton, said the Board, and it affirmed the Section 2(a) refusal.
Next, the Board moved on to the Section 2(c) refusal. Section 2(c) of the Lanham Act bars registration of a mark that consists of or comprises a name, portrait or signature identifying a particular living individual without her or his written consent. Such consent is only required if the person bearing the name in the mark will be associated with the mark as used on the goods, because either the person is so well known that the public would reasonably assume a connection between the person and the goods or the individual is publicly connected with the business in which the mark is used.
For purposes of Section 2(c) a name does not have to be a full name, but can also be a nickname, or a stage name, etc. When the individual identified is famous or well-known, it is not necessary to show some connection between the goods involved and the individual.
Particularly relevant to this case was the Board's holding in In re Steak & Ale Rest. of Am., Inc. In that case, the Board affirmed a Section 2(c) refusal of the mark Prince Charles for fresh and cooked meat, because the proposed mark identified a particular well-known living individual whose consent was not of record. In this case, in rather short order, the Board held that the Princess Kate and Royal Kate marks consisted of the name of a particular living individual, and because Her Royal Highness had not consented to the use and registration of that name, the Board affirmed the Section 2(c) refusal as well.
Importantly, in this ruling, the Board made clear that the famous person whose name or identity is being used by a business seeking to monetize its wares does not have to be within the U.S. to receive protection within the U.S.
Second, the Board possibly expanded the definition of name or identity by protecting a famous person from use of marks that served to describe that person as opposed to only protecting that famous person's actual name. This analysis could find its way into right of publicity cases and strengthen celebrities' ability to protect not only their own names, but names/descriptors that the general public might use to refer to that famous person. So while this case involved the registrability of two trademarks, it could have a significant impact in future right of publicity cases.
Third, it clarifies the test for a Section 2(a) refusal for future applicants. If a company is interested in using a mark that may or may not suggest a connection with a famous person, its general counsel now has a better sense of whether its application will be approved.
This article is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Gilson & Lione lawyer.
