A trademark may be refused registration by the U.S. Patent and Trademark Office (“USPTO”) if it falsely suggests a connection with another person or institution.

Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), in relevant part, prohibits registration of “matter which may … falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols…”

“[T]he rights protected under the § 2(a) false suggestion provision are not designed primarily to protect the public, but to protect persons and institutions from exploitation of their persona.” Bridgestone/Firestone Rsch. Inc. v. Auto. Club de l'Ouest de la France, 245 F.3d 1359 (Fed. Cir. 2001) (citing Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372 (Fed. Cir. 1983) (“[I]t appears that the drafters sought by § 2(a) to embrace concepts of the right to privacy,” even in the absence of likelihood of confusion)).

“Will and Kate” Case

The Trademark Trial and Appeal Board (“TTAB”) recently addressed whether the applied-for WILL AND KATE PHOTOGRAPHY mark identifying “photography services” in International Class 41 for creating a false association with Prince William and Kate Middleton under Section 2(a). In re Will and Kate Photography, Serial No. 90568132 (TTAB May 18, 2022).

The WILL AND KATE PHOTOGRAPHY application contained the following statement: “The name(s), portrait(s), and/or signature(s) shown in the mark identifies Caitlin ‘Kate' Terry and William ‘Will' Oakley, whose consent(s) to register is made of record.”

The specimen of use submitted for the application was a social media profile page in which the “About” field states “We treat you like Royalty.”

Citing Notre Dame, 703 F.2d at 1375–77 (providing the foundational principles for the current four-part test used to determine the existence of a false suggestion of connection), the TTAB stated that to find a false association, the following must be shown:

(1) Applicant's mark is the same as, or a close approximation of, the name or identity previously used by another person(s) or institution, in this case Prince William and Kate Middleton;

(2) Applicant's mark would be recognized as such, in that it points uniquely and unmistakably to Prince William and Kate Middleton;

(3) Prince William and Kate Middleton are not connected with the services offered by Applicant under the mark; and

(4) the fame or reputation of Prince William and Kate Middleton is such that, when Applicant's mark is used with Applicant's services, a connection with them would be presumed.

Name or Identity

For the first part of the test, the TTAB found that, although they may not refer to themselves as “Will and Kate,” it is a nickname attributed to the royal couple by the public.  Thus, “Will and Kate” is a name or identity of Prince William and Kate Middleton.

Points Uniquely and Unmistakably

Next, the TTAB found that the evidence of record does not point to “widespread” use of “Will and Kate” to refer to Prince William and Kate Middleton. Instead, the evidence suggested they are more commonly referred to as “William and Kate.”

Evidence that the words “like royalty” were extensively used by third-party vendors in the hospitality and wedding industries with respect to how their clients and customers would be treated, also showed that the Applicant's use of “Will and Kate” did not point uniquely to Prince William and Kate Middleton.

There also were a number of third-party uses of “Will and Kate” formatives for a variety of goods and services, so relevant consumers will perceive the designation as identifying couples or pairs of individuals named “Will and Kate.”

Actual Connection

There was no dispute that Prince William and Kate Middleton are not connected with the services provided or intended to be provided under the WILL AND KATE PHOTOGRAPHY mark.

Fame

Notwithstanding that Prince William and Kate Middleton are British royalty and the subject of great public interest in the United States and the world, the TTAB found insufficient evidence that consumers of Applicant's photography services will presume an association with members of British royalty.

Even consumers viewing Applicant's specimen of record, including a crown and the promise to treat clients “like royalty,” are unlikely to believe Applicant and its services are associated with [Prince] William Windsor and Kate Middleton. Accordingly, the requirement that the name or identity of [Prince] William Windsor and Kate Middleton are of such notoriety that a connection with Applicant's photography services under its WILL AND KATE PHOTOGRAPHY mark would be presumed, has not been satisfied.

In conclusion, the TTAB held there is no false suggestion of a connection with the royal couple arising from Applicant's use of “Will and Kate” in its WILL AND KATE PHOTOGRAPHY mark.

The trademark attorneys at Thomas P. Howard, LLC are experienced in prosecuting trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.