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Failure to Obtain Consent of the President
In In re Hoefflin, 97 USPQ2d 1174 (TTAB 2010), the TTAB affirmed the refusal of three intent-to-use applications for the marks OBAMA BAHAMA PAJAMAS, OBAMA PAJAMA, and BARACKS JOCKS DRESS TO THE LEFT. The decision was based on Section 2(c) of the Lanham Act, which requires that an applicant obtain the written consent of a living individual if they are using “his name, portrait or signature” to distinguish their goods.
The applicant argued that the terms ‘Barack’ and ‘Obama’ were not representative of any particular individual and that the wods held a separate meanings that did not associate his sleepwear goods with President Obama. He further argued that he did not use the full name of the President, and that the names of many past presidential candidates had been incorporated into trademarks absent their consent.
The TTAB rejected the Applicant’s arguments, citing the timing of the Applicant’s filings, which coincided with both the presidential election and the “Obamafication” phenomenon. The Board further held that despite whether an applicant has the intent to associate his goods with a celebrity or politician, these “well-known individuals” are still entitled to protection under Section 2(c). Concluding that consumers would directly associate all three marks with President Barack Obama, and applicant failed to acquire his consent, the TTAB affirmed the refusal.
Fraud on the PTO
MCI Foods Inc v Bunte (Cancellation 92045959, September 13 2010). This decision spotlights the difficulty opponents and cancellation petitioners are having in the post In re Bose era to prove an applicant or registrant committed fraud on the PTO. In this case, the TTAB refused to cancel a registration even though there was good evidence the registration was overbroad and not in use for all goods for which it claimed.
MCI filed a petition to cancel Bunte’s registration for CABO CHIPS in connection with corn ships alleging a likelihood of confusion with MCI’s registrations for CABO PRIMO & Design and other similar marks registered for a wide variety of Mexican food products. Bunte counterclaimed to cancel MCI’s registration, contenting that MCI committed a fraud on the PTO because it never used the mark for many of the Mexican food products claimed and it signed its trademark application with knowledge of the false representation. Despite good evidence that MCI had never used the mark for all the claimed goods, the TTAB found there was no clear and convincing evidence that MCI intended to deceive the PTO when it filed its application. A material false representation is not a material fraudulent misrepresentation. As a result, the TTAB refused to cancel MCI’s registration but instead restricted the description of goods in MCI’s CABO PRIMO registration to those goods that MCI had actually sold under the mark.
Likelihood of Confusion
The Ninth Circuit overturned a grant of summary judgment in Fortune Dynamic Inc v Victoria’s Secret Stores Brand Management Inc. (Case 08-56291, August 19 2010), a case that highlighted the fact intensive inquiry that is likelihood of confusion. In this case, Victoria’s Secret gave away and sold pink tank tops with the word “delicious” displayed across the chest as part of a sales promotion. Fortune sued for trademark infringement based on its incontestable federal registration for DELICIOUS for footwear. Victoria Secret was granted summary judgment that there was no likelihood of confusion that consumers would confuse the source of the respective products. The Ninth Circuit reversed, holding that there were questions of fact regarding likelihood of confusion and that the “fair use” defense offered by Victoria’s Secret (that they were not making “trademark use” of DELICIOUS) should be decided by a jury.
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