INTA Bulletin

September 15, 2012 Vol. 67 No. 16 Back to Bulletin Main Page


In a precedential decision, the Trademark Trial and Appeal Board (TTAB) affirmed the decision of the U.S. Patent and Trademark Office (USPTO) refusing registration of the trademark BENNY GOODMAN COLLECTION THE FINEST QUALITY under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), on the ground that the mark falsely suggested a connection with the jazz musician Benny Goodman. In re Jackson International Trading Co. Kurt D. Bruhl GmbH & Co. KG, Serial No. 77600412 (T.T.A.B. July 11, 2012).

The applicant filed for the registration of the trademark BENNY GOODMAN COLLECTION THE FINEST QUALITY for “fragrances and cosmetics” in Class 3, “leather goods” in Class 18 and “clothing” in Class 25. The USPTO refused registration, and the applicant appealed the adverse decision.

The TTAB applied the four-part test set forth in University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372 (Fed. Cir. 1983), for determining whether a false suggestion of connection has been established:

  1. The mark is the same as, or a close approximation of, the name of or identity previously used by another person;
  2. The mark would be recognized as such because it points uniquely and unmistakably to that person;
  3. The person named by the mark is not connected with the activities performed by the applicant under the mark; and
  4. The prior user’s name or identity is of sufficient fame or reputation that a connection with such person would be presumed when the applicant’s mark is used on the applicant’s goods.

In applying the test, the TTAB determined that (1) the applicant’s mark was a close approximation of the name Benny Goodman; (2) because it was common for performers and owners of well-known marks to expand their product lines to incorporate a diverse set of goods to capitalize on the renown of their names and brands, consumers encountering the applicant’s mark in connection with fragrances and cosmetics, leather goods and clothing would associate the mark with Benny Goodman the musician; (3) there was no evidence that Benny Goodman the musician (or his estate) had any connection with the applicant’s business; and (4) the musician Benny Goodman remained a well-known figure among a sufficient segment of the population to support a finding of false suggestion of connection.

Consequently, the TTAB affirmed the USPTO’s refusal of registration.

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© 2012 International Trademark Association