New York Trademark Attorney Blog
Nieves and Nieves LLC, (the “Applicant”) filed an intent-to-use application with the USPTO for the mark ROYAL KATE for various goods, including apparel, cosmetics, watches, bedding, and hand bags. The Examining Attorney refused to register the trademark application under Section 2(a) of the Trademark Act of 1946 for falsely suggesting a connection with Kate Middleton and under Section 2(c) of the Trademark Act on the ground that ROYAL KATE consists of a name identifying a particular living individual whose consent is not of record, (British Royal Kate Middleton). The Applicant appealed to the Trademark Trial and Appeal Board (the “Board”).
To determine if the Applicant’s mark falsely suggests a connection with Kate Middleton, the Board reviews the record to see if the evidence satisfies a four-part test:
(1) Is Applicant’s mark ROYAL KATE the same as or a close approximation of Kate Middleton’s previously used name or identity;
(2) Would Applicant’s mark ROYAL KATE be recognized by consumers to point unmistakably to Kate Middleton;
(3) Can it be said that there is no connection between the goods sold by Applicant and Kate Middleton; and
(4) Is Kate Middleton’s name or identity sufficiently famous that when Applicant’s mark is used on its goods, a connection with Kate Middleton would be presumed.
The existence of a false suggestion of a connection results from an applicant’s use of a term that is closely associated with a particular personality or persona of someone other than the applicant. In this case, the question is does the relevant public understand the mark, ROYAL KATE to identify Kate Middleton. The Applicant argued that Kate Middleton was not officially a “royal” and also she did not identify herself as “Royal Kate”. Applicant further argued that “Royal” is not part of Kate Middleton’s official title. The Board rejected the Applicant’s argument.