United States: Miss Thee, Kate! A TTAB Victory For The Royals

Last Updated: March 10 2015
Article by Scott J. Slavick

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:

  1. Whether the mark is the same as or a close approximation of the person's previously used name or identity
  2. Whether the mark would be recognized as such by purchasers, in that it points uniquely and unmistakably to the person in question
  3. Whether the person in question is or is not connected with the goods sold by the applicant under the mark
  4. 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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Scott J. Slavick
Similar Articles
Relevancy Powered by MondaqAI
Stites & Harbison PLLC
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Stites & Harbison PLLC
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions