A trademark that falsely suggests a connection with individuals (living or dead), institutions, beliefs, or national symbols is ineligible for registration with the United States Patent and Trademark Office (USPTO). The Lanham Act (which is the federal law that governs trademark registration in the U.S.) requires the USPTO to refuse registration of a trademark if it concludes that a false suggestion of a connection exists. Unlike other types of rejections (such as merely descriptive and surname refusals), a showing of acquired distinctiveness cannot overcome a false suggestion of a connection refusal under any circumstances.
Does My Trademark Falsely Suggest a Connection?
How do you know if your trademark falsely suggests a connection within the meaning of the Lanham Act? Well, the USPTO uses the following test to determine if it’s obligated to issue a false suggestion of a connection refusal:
- Is the mark the same as, or a close approximation of, the name or identity previously used by another person or institution?
- Would the mark be recognized as such, in that it points uniquely and unmistakably to that person or institution?
- Is the person or institution named by the mark not connected with the products and/or services of the mark owner?
- Is the fame or reputation of the person or institution such that a connection with the person or institution would be presumed when the mark is used with the products/services?
If the answer to each of these questions is “yes,” then the USPTO will refuse registration of your trademark on the basis that it falsely suggests a connection. If you file a trademark application seeking to register such a trademark, the USPTO will send you a trademark office action detailing why it believes your trademark warrants a false suggestion of a connection rejection.
What are Some Examples?
Let’s say a toy company wants to register the name SEAL TEAM 6 as a trademark for toy action figures. Would the USPTO find that the trademark falsely suggests a connection with the elite naval special operations unit responsible for raiding an al-Qaeda compound and killing Osama bin Laden back in 2011? Well, let’s go through the four factors. First, the mark is the same as the name of the naval special operations unit. Second, the general public would likely recognize the mark as pointing uniquely and unmistakably to Seal Team 6 since there is only one such naval unit with that name and no other organization or institution operates under that name. Third, the toy company’s action figures are certainly not connected with Seal Team 6 or the U.S. Navy. And, four, Seal Team 6 is a famous special operations unit with a stellar reputation for successfully carrying out high-profile and dangerous missions all over the world. Therefore, the toy company’s trademark application should receive a false suggestion of a connection refusal.
Now let’s pretend a jewelry manufacturer wants to register the name THE VATICAN as a trademark for rosaries and religious-themed jewelry. Would the USPTO find that the trademark falsely suggests a connection with the Romain Catholic Church and/or the Pope? Let’s again examine each of the four factors. First, the mark is a close approximation of the name of the Pope’s home and the official headquarters/offices of the Roman Catholic Church (Vatican City). Second, the general public would recognize the mark as pointing uniquely and unmistakably to the city-state within Rome that is governed by the Holy See and ruled by the Pope. Third, the jewelry company’s rosaries and jewelry are clearly not connected with the Pope or the Roman Catholic Church. And, four, the Vatican (and by extension the Roman Catholic Church) is extremely famous and the Pope is known to routinely bless certain personal items, including rosaries and pieces of jewelry. Therefore, the USPTO should issue a false suggestion of a connection refusal on the jewelry company’s trademark application.
Questions About False Suggestion of a Connection?
I’m experienced US trademark attorney Morris Turek. If you’ve received an office action containing a false suggestion of a connection refusal, or you’re perhaps wondering whether your particular trademark falsely suggests a connection with a person, institution, belief, or national symbol, please don’t hesitate to contact me for your complimentary consultation. You can call me at (314) 749-4059, send an email to firstname.lastname@example.org, or fill out the contact form located below. I look forward to speaking with you soon.