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August 1, 2013 Vol. 68 No. 14 Back to Bulletin Main Page

What’s in a Name? Comparing Rights and Recoveries for False Suggestion of a Connection in the United States and Germany


Protection in the United States
Many brand owners are familiar with the normal protections afforded the brand names of products and services and the provisions of the U.S. Trademark Act preventing a likelihood of consumer confusion between products’ brand names (Trademark Act Sec. 2(d), 15 U.S.C. § 1052(d)). Fewer are familiar with protections afforded the names of natural persons or institutions, who do not necessarily sell products. In the United States, the Trademark Act protects persons, living or dead, and institutions from trademarks that may falsely suggest a connection, disparage or bring them into contempt or disrepute (Trademark Act Sec. 2(a), 15 U.S.C. § 1052(a)).

While the traditional trademark law in the United States focuses on the goals of protecting the public from source confusion over trade symbols and protecting the trademark owner’s investment in its trademark as property, Section 2(a) of the Trademark Act protects natural persons and institutions from misappropriation of their names or identities, even where those names or identities are not used to sell closely related goods, or any goods at all. This section protects against an invasion of privacy or infringement of the right of publicity, and does not rely on the trademark test of a likelihood of confusion.

The Four-Factor Test of Notre Dame v. J.C. Gourmet Food
The leading case concerning Section 2(a) is the decision of the Court of Appeals for the Federal Circuit in University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372 (Fed. Cir. 1983). In that case, the University of Notre Dame appealed from the decision of the U.S. Patent and Trademark Office (USPTO) dismissing the University’s opposition to the registration of the mark NOTRE DAME & Design by a European cheese importer. While affirming the USPTO’s decision, the court recognized that Section 2(a) had evolved out of the concepts of the rights of privacy and publicity and was intended to protect the name of an individual or institution that was not technically a trademark upon which a likelihood-of-confusion claim could be based. The Federal Circuit found that, even while there might be no trademark confusion as to the source of goods, Section 2(a) prevented the violation of a person or institution’s right of privacy or publicity. 703 F.2d at 1375.

This case announced a four-factor test for determining whether there is a false suggestion of association under Section 2(a):

(1)  Is the mark the same as, or a close approximation of, the name or identity previously used by another
      person or institution?
(2)  Would the mark be recognized as such, in that it points uniquely and unmistakably to that person or
      institution?
(3)  Is the person or institution whose name is reproduced by the mark connected with the activities performed
      by the trademark applicant under the mark?
(4)  Is the fame or reputation of the person or institution such that, when the mark is used with the applicant’s
      goods or services, a connection with the person or institution would be presumed?

MOHAWK(s), NAFTA and the First Factor
Under the first factor, an applicant cannot take a significant element of the name of a person or institution and avoid a Section 2(a) refusal by eliminating one or more elements. So long as the element that was taken would still be unmistakably associated with that person or institution, the first factor is satisfied. For instance, in In re White, 80 U.S.P.Q.2d 1654 (T.T.A.B. 2006), an application to register the mark MOHAWK for cigarettes was refused on the ground that when MOHAWK was used on cigarettes, it could “falsely suggest a connection with the federally recognized tribe the St. Regis Band of Mohawk Indians of New York.” The applicant’s argument that its proposed mark MOHAWK was not a close approximation because the mark lacked the terms “St. Regis” and “New York” was unavailing.

Similarly, the mere fact that the applicant adds matter to a person’s or institution’s name will not itself avoid a Section 2(a) bar. In In re North American Free Trade Association, 43 U.S.P.Q.2d 1282 (T.T.A.B. 1997), the applicant’s addition of a picture of a globe to a service mark with the letters “nafta” did not differentiate the mark enough to preclude a Section 2(a) refusal based on a false suggestion of a connection with the North American Free Trade Agreement, which is known by the acronym NAFTA.

Finally, the proposed mark need not be the same as the actual name of the relevant person or institution to be barred under Section 2(a). In Buffett v. Chi-Chi’s, Inc., 226 U.S.P.Q. 428 (T.T.A.B. 1985), folk singer Jimmy Buffett opposed registration of the term MARGARITAVILLE for restaurant services on the ground that the mark falsely suggested a connection with his persona within the meaning of Section 2(a). The USPTO’s Trademark Trial and Appeal Board (TTAB or Board) agreed, finding that there was significant evidence to support the argument that Jimmy Buffett and his famous song “Margaritaville” were closely associated and identified with each other.

The Poet of Margaritaville, Hemingway and the Second Factor
Notre Dame’s second factor requires that the mark be recognized as uniquely and unmistakably pointing to a specific person or institution. Frequently, evidence sufficient to show that the mark is a close approximation of a name or identity under the first factor suffices to show that the mark uniquely and unmistakably points to that name or identify. For example, in Buffett, the plaintiff used evidence such as press clippings referring to him as “Jimmy (Margaritaville) Buffett,” “The Monarch of Margaritaville” and “The Poet of Margaritaville” to demonstrate that the term MARGARITAVILLE pointed uniquely and unmistakably to him. The applicant’s intent is important in evaluating whether the mark points uniquely to the individual or institution. For example, in In re Sloppy Joe’s International Inc., 43 U.S.P.Q.2d 1350 (T.T.A.B. 1997), the Board was persuaded that the applicant intended to draw an association between his restaurant and the writer Ernest Hemingway as a result of his use of Hemingway’s likeness in the mark, his sponsorship of celebrations and festivals honoring Hemingway’s life and work, and the fact that his restaurant was the “Home of the Papa Hemingway Look-A-Like Contest.” Id. at 1354. Likewise, in Association pour la Defense et la Promotion de L’Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 U.S.P.Q.2d 1838 (T.T.A.B. 2007), the Board found intent in a letter from the applicant to the petitioner proposing a cooperative arrangement to market the vodka product under the MARC CHAGALL mark.

The threshold to prove intent is quite low. In NAFTA, the TTAB found that the applicant’s very name, North American Free Trade Association, was almost identical to the North American Free Trade Agreement, and that at the time it filed its application and adopted its mark, the applicant was very well aware that NAFTA was an acronym for the treaty. The Board held that the applicant’s “knowledge of the proposed treaty provided evidence of [the] applicant’s intent in adopting its mark to identify the NAFTA treaty.” 43 U.S.P.Q.2d at 1282.

The LAPD and the Third Factor
The third factor in the Section 2(a) false suggestion analysis is whether there is a commercial connection between the applicant and the opposing individual or institution related to the particular goods and services, which can be obvious from the adversarial nature of the opposition or cancellation proceeding.

In an ex parte context, the applicant usually is required to prove that there is a connection. There must be a specific endorsement, sponsorship or the like of the particular goods and services, but it is acceptable if that endorsement is merely implied. Thus, for example, in In re Los Angeles Police Revolver & Athletic Club, Inc., 69 U.S.P.Q.2d 1630 (T.T.A.B. 2004), the Board reversed the refusal to register the mark TO PROTECT AND TO SERVE, applied for by a police athletic club. The identical phrase was the well-known slogan of the Los Angeles Police Department (LAPD). In this case, the Board found that although there was no formal agreement between the applicant and the LAPD, the evidence showed that the LAPD had “openly advanced the commercial activities of [the] [a]pplicant”; consequently, it found that there was “a substantial commercial connection between [the] applicant and the LAPD.” Id. at 1633.

The King of Swing and the Fourth Factor
The last question is whether the person’s or institution’s name or identity is of sufficient fame or reputation that a connection with such person or institution would be presumed when the applicant’s mark is used on its goods. In In re Jackson International Trading Co. Kurt D. Bruhl GmbH & Co. KG, Serial No. 77600412 (T.T.A.B., July 11, 2012), the Board affirmed a refusal to register the mark BENNY GOODMAN COLLECTION THE FINEST QUALITY (stylized) for fragrances, cosmetics, leather goods and clothing, finding that the mark falsely suggested a connection with the late band leader Benny Goodman.

Benny Goodman—known as “The King of Swing”—made his name in the 1930s and remained a popular jazz composer and musician even as the genre lost widespread popularity to other genres of music. Accordingly, the applicant argued that few music lovers under 30 would recognize Benny Goodman’s name. The TTAB was unpersuaded, finding that “Benny Goodman remains a well-known figure among a sufficient segment of the population as to support finding a false suggestion of a connection.” Op. at 9.

Although a separate finding of likelihood of trademark confusion under Section 2(d) of the Trademark Act may increase the likelihood that a court will find false association under Section 2(a), it does not make it absolute. Alternatively, a finding of no likelihood of trademark confusion does not eliminate the chance that a court may find false association under Section 2(a).

Protection in Germany
Under the Community Trade Mark Regulation (CTMR) (Council Regulation (EC) No. 207/2009, Feb. 26, 2009) and the European Trademarks Directive (European Parliament and Council Directive 2008/95/EC, Oct. 22, 2008), which have been implemented in Germany by the provisions of the German Trademark Act (Markengesetz, or MarkenG), the principles of protecting names and identities are similar, but still different.

Names as Trademarks

With regard to the protection of a personal name as a trademark, Article 4 of the CTMR provides that “a Community trade mark may consist of any signs capable of being represented graphically, particularly words, including[, inter alia,] personal names.” Similarly, Section 3(1) of the MarkenG provides that “any signs, particularly words, including personal names, … which are capable of distinguishing the goods or services of one undertaking from those of other undertakings may be protected as trade marks.” However, in order to preserve rights in a CTM or a German trademark after the grace period of five years, the mark must, in general, be used for the goods or services in respect of which it is registered (Art. 15(1) CTMR; Sec. 26(1) MarkenG).

Protection Beyond the Trademark Sphere

On the other hand, personal names are protected under Section 12 of the German Civil Code (and the national legislation of other member states of the European Union) without any requirement of use of the name for certain goods or services or any use in commerce. Section 12 provides as follows: “If the right of a person to use a name is disputed by another person, or if the interest of the person entitled to the name is injured by the unauthorized use of the same name by another person, the person entitled may require the other to remove the infringement. If further infringements are to be feared, the person entitled may seek a prohibitory injunction.”

According to settled case law, Section 12 of the German Civil Code does protect the names (including pseudonyms that are known and thus have acquired a secondary meaning) of natural persons as well as the names of legal entities, including public bodies and nonprofit organizations.

However, an opposition against a CTM or a German national trademark may not be based on name rights under Section 12.

Don’t Oppose—Just Cancel
Under Article 8(4) of the CTMR, an opposition against a CTM application may be based only on a “non-registered trade mark or…another sign used in the course of trade of more than mere local significance.” Under Section 42 of the MarkenG, only “the proprietor of an earlier trademark may give notice of opposition” against the registration of the contested trademark. Thus, proprietors of name rights other than trademarks or signs used in the course of trade or commercial designations are not entitled to file oppositions against CTM applications or German trademarks.

However, pursuant to Section 13(1) of the MarkenG, “[t]he registration of a trade mark may be cancelled where another person…has acquired a right other than the rights specified in Sections 9 to 12 [(i.e., other than trademarks or other commercial designations) before the date of priority of the registered trademark] throughout the entire territory of the Federal Republic of Germany.” Under Section 13(2) of the MarkenG, “other rights” within the meaning of Section 13(1) includes, inter alia, “rights in a name,” including names under Section 12 of the German Civil Code.

While, as explained above, an opposition may not be based on such “rights to names” (other than those used in commerce), the proprietor is entitled to file a request for cancellation before the German Patent and Trademark Office (GPTO) under Section 51(1) of the MarkenG. If the proprietor of the registered trademark does not object to the cancellation within two months of service of the notice of the application for cancellation by the GPTO, the registration shall be cancelled (Sec. 53(1) MarkenG). If the proprietor of the registered trademark objects to the cancellation within the two-month deadline, the proprietor of the prior name right may file an action for cancellation before the courts of ordinary jurisdiction (Sec. 55 MarkenG).

The CTMR contains quite similar provisions: Pursuant to Article 53(2)(a) of the CTMR, a CTM shall be “declared invalid on application to the Office [Office for Harmonization in the Internal Market, or OHIM] or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right under the Community legislation or national law governing its protection, and in particular…a right to a name.”

Moreover, the owner of a prior name right may seek injunctive relief and claim omission, disclosure and damages under Sections 12, 823 and 1004 of the German Civil Codeif the use of a trademark (or other name or designation) in Germany infringes his prior name rights—always on the condition that, as provided by Section 12, “the interest of the person entitled to the name is injured by the unauthorized use.”

Domain Names, Vodka and the Catholic Church: Specifics of Protection Under German Law
According to settled case law of the German Federal Court of Justice (FCJ) (Bundesgericht), an unauthorized claim to a name under Section 12 of the German Civil Code is present when a third party, without the right to bear a specific name, used said name without authorization, thereby causing confusion regarding affiliation and infringing the legitimate interests of the party rightfully bearing the name. (See, e.g., FCJ, Dec. 2, 2004, Case I ZR 92/02—Pro Fide Catholica; FCJ, June 14, 2006, Case I ZR 249/03—Stadt Geldern.)

Confusion regarding affiliation does not exist only if a name is used in order to designate another person or his goods or services, though. It is sufficient that the claimant is associated with facilities, goods or products with which he has no connection. These conditions may exist, for example, if the name of another natural or legal person is used as an Internet domain name (see, e.g., FCJ, Nov. 22, 2001, Case I ZR 138/99—shell.de; FCJ, June 26, 2003, Case I ZR 296/00—maxem.de), particularly if the domain name consists of the name of a city, county, state or other public body or authority, which are also entitled to name rights under Section 12 of the German Civil Code (see FCJ, Sept. 9, 2006, Case I ZR 201/03—solingen.info).

On the other hand, the owner of a name may not prohibit a descriptive use of its name or part of its name, even if a portion of the public incorrectly draws an association with the owner of the name. (See FCJ, Dec. 2, 2004, Case I ZR 92/02—Pro Fide Catholica, in which the Federal Court of Justice rejected claims under Section 12 of the German Civil Code by a diocese of the Catholic Church against a publishing company that published Catholic literature under the title “Pro Fide Catholica”). In Ivan Rebroff, the Higher Regional Court (Oberlandesgericht, or OLG) of Stuttgart denied claims under Section 12 of the German Civil Code by the singer who used the stage name Ivan Rebroff against the use and registration of the trademark REBROFF … VODKA. The court held that stage names of artists can be subject to protection under Section 12 of the German Civil Code, but it denied likelihood of confusion between the artist’s assumed last name and the trademark, and thus held that the public would not incorrectly associate the trademark REBROFF … VODKA with the singer. (See OLG Stuttgart, Apr. 27, 2001, Case 2 U 2004/00—Ivan Rebroff.)

According to settled case law, Section 12 of the German Civil Code shall not apply if an infringement of a trademark or another sign protected under the MarkenG is in dispute. In these circumstances, the provisions of the MarkenG shall take precedence and supersede Section 12 (see FCJ, Nov. 22, 2001, Case I ZR 138/99—shell.de). Thus, in the case of a conflict between trademarks, or between trademarks and company names or “titles of works” as defined by Section 5 of the MarkenG, the claimant may not successfully base its claims on Section 12 of the German Civil Code if the action is not founded under the MarkenG (e.g., if there is no likelihood of confusion).

Summing It Up
Both Section 2(a) of the U.S. Trademark Act and Section 12 of the German Civil Code protect natural persons and institutions from misappropriation of their names or identities, even where those names or identities are not used to sell closely related goods, or any goods at all. However, there are considerable differences between German and U.S. law regarding how conflicts between trademarks used in commerce and names not used in commerce are resolved.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

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