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:
- Is the mark the same as or a close approximation of a name previously used by another person or institution?
- Would the mark be recognized as such, because it points unmistakably to that person or institution?
- Is the applicant not connected with the person or institution named by the mark?
- 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.
Pederson also argued that because Lakota refers to a loose confederation of people, it does not have a centralized authority to either affirm his use or make use of the LAKOTA mark itself. However, the Board found this argument unpersuasive, noting that a false suggestion of a connection may be found when the Lakota’s right to control the mark is violated “even if the name was never commercially exploited as a trademark” beforehand.
Pederson also pointed to third-party registrations that contain the word LAKOTA. In his view these demonstrated that the mark is registrable because the USPTO had previously allowed the mark to be registered. The Board retorted that third-party registrations lack persuasive weight in an inquiry regarding falsely suggesting a connection under Section 2(a). This is because the facts of each case uniquely bear on whether the connection is false.
The fourth point focused on whether the fame of the Lakota people is significant enough to cause consumers to associate Pederson’s herbal remedies with the Lakota people. The Board looked favorably on the examining attorney’s depiction of the Lakota’s economic activities, including their extensive development of their communities. The evidence also showed that the Lakota people market products and services to the general public, including an ever-increasing tourism industry that includes multiple casinos.
The Board also considered the Lakota’s reputation in practicing traditional herbal remedies, but was careful to note that “the fourth factor does not require proof of a reputation closely related to the applicant’s goods.” Instead, the trademark office need only show such fame that a consumer might think the goods were connected to the identified people.
It is this fourth factor – the likelihood of a presumed connection between the goods and the tribe – that sets this case apart from the more common instances where the name of an Indian tribe appears in a commercial context with no apparent commercial connection to the tribe (e.g., “MOHAWK” for bus parts). If the applicant had been seeking to register LAKOTA for use in connection with GPS systems, for example, he would not have had such difficulty. But the proposed use – herbal remedies – involved traditional Lakota activities, creating an inference of a connection that was not there.
Satisfied with the evidence presented by the examining attorney on each part of the four-point test, the Board concluded that LAKOTA falsely suggested a connection with the Lakota people and affirmed the refusal to register.
A version of this article first appeared in WTR Daily, part of World Trademark Review, in January 2014.