Nieves & Nieves, in an effort to sell cosmetics, jewelry, bedding and apparel, submitted applications to register the marks PRINCESS KATE and ROYAL KATE. In two opinions issued on January 30, 2015, the Trademark Trial and Appeal Board (TTAB) affirmed the trademark examining attorney’s refusal to issue the marks PRINCESS KATE and ROYAL KATE because the marks falsely suggest a connection with Catherine, Duchess of Cambridge, also known as Kate Middleton. In its analysis, the board reviewed whether the evidence in the record satisfies the following four-part test: (1) whether applicant’s marks PRINCESS/ROYAL KATE are the same as or a close approximation of Kate Middleton’s previously used name or identity; (2) whether applicant’s marks PRINCESS/ROYAL KATE would be recognized as such by purchasers, in that the mark points uniquely and unmistakably to Kate Middleton; (3) whether Kate Middleton is not connected with the goods that will be sold by applicant under its mark; and (4) whether Kate Middleton’s name or identity is of sufficient fame or reputation that when applicant’s marks are used on applicant’s goods, a connection with Kate Middleton would be presumed. The board affirmed that the record supported denial of the marks following the four-part test.
The applicant attempted to argue that PRINCESS KATE is not a close approximation of KATE MIDDLETON’S name or identity because she is not, in fact, a princess. The applicant offered evidence that, in particular, Catherine Middleton has communicated to the media on several occasions that her proper title is Duchess of Cambridge, not Princess. Nevertheless, the board pointed out that “a term may be considered the identity of a person even if his or her name or likeness is not used. All that is required is that the mark sought to be registered clearly identifies a specific person.” Because the examiner discovered numerous American media references to Kate Middleton as “Princess Kate” and referencing Kate Middleton as a “Royal,” the marks PRINCESS KATE and ROYAL KATE were close approximations of the identity of Kate Middleton, demonstrating that the U.S. public associates the terms with Kate Middleton and, therefore, a connection to Kate Middleton would be presumed without her written consent as required under Section 2(c) of the Trademark Act. Finally, the board analogized this use to a case involving her father-in-law’s namesake: PRINCE CHARLES. In the TTAB decision of In Re Steak & Ale Rest. Of Am., Inc., the board affirmed the refusal of issuance of a trademark for PRINCE CHARLES because the wording identified an actual well-known living individual whose consent was not of record. The board reasoned that “the addition of a given name or a surname to the word ‘PRINCE’ could well serve as a name or ‘nickname’ for a particular living individual who could be identified and referred to in the various walks of life with this appellation.” The same is true for the mark PRINCESS KATE.
In re Nieves & Nieves LLC, Serial Nos. 85179243 and 85179263 (January 30, 2015).