Trademark Falsely Suggesting Connection to a Native American People is Denied Registration

By Steven Abreu. A member of the Trademark Practice Group

 

A word that primarily refers to a group of people may not be registrable as a trademark in the United States if the word falsely suggests to consumers an association between the applicant and the identified group.

This principle explains the Trademark Trial and Appeal Board’s affirmance of a refusal to register an application for the mark LAKOTA, applied for in connection with herbal remedies in Class 5. In re Kent Pederson, Serial No. 85328868 (TTAB Dec. 30, 2013).

In an opinion stretching 43 pages, the Board set out the reasons why registration of LAKOTA was impermissible under section 2(a) of the Lanham Act. That statute prohibits registration of a mark that may falsely suggest a connection with persons, institutions, beliefs or national symbols. The trademark office has the burden to show that a mark falsely suggests such a connection through the application of a four-part test:

1. Is the mark the same as or a close approximation of a name previously used by another person or institution?
2. Would the mark be recognized as such, because it points unmistakably to that person or institution?
3. Is the applicant not connected with the person or institution named by 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 is presumed?

On the first two points, the Board agreed with the examining attorney that Lakota referred to the Native American people who are part of the Sioux Indian tribe. The dictionary definition and evidence, showing countless uses of Lakota to refer to the western part of the Sioux tribe, easily carried the day over the applicant’s argument that Lakota also referred to the name of the language spoken by the Lakota people and so could not unmistakably refer only to the people.

As to the third prong of the test, the applicant, Kent Pederson, offered evidence that his organization, through a licensee, is philanthropically connected to the Lakota people. However, the Board considered this philanthropy not sufficiently connected to commercial interests between Pederson and the Lakota people, especially regarding the applied-for goods. An actual commercial connection between the applicant and the identified person or institution is necessary to show that a connection made in the mind of a consumer is not “false;” mere philanthropy in favor of the identified person is not sufficient. (More)