Times and time buildings
No connection

First published on June 7, 2013.

John Welch has posted a collection of “false connection” claims under Section 2(a) of the Lanham Act (15 U.S.C. 1052(a)).

As it happens, a couple of weeks ago I mentioned that I had written a chapter in the New York State Bar Association’s new publication, In the Arena:  A Sports Law Handbook.  My contribution focuses on the how both trademark and other laws can be used to protect the persona in particular (i.e., for purposes of the book, the persona of a professional athlete), typically names.  An excerpt (footnotes omitted; I pulled a couple of sources out of them however and put them in the text here):

Trademark law’s main focus with respect to the protection of famous identities is on the names of the famous, although, as will be seen, this focus is not exclusive.When it comes to personal names, fame is the sine qua non for trademark protection. The word “fame” is not used here as it usually is in trademark law, referring to the requirement that a trademark be “famous” to qualify for federal protection against dilution. Yet in the ordinary sense of the word, fame is the relevant standard for trademark protection of names, because only “famous” names have secondary meaning.  See, Tonawanda St. Corp. v. Faye’s Drug Co., Inc., 842 F.2d 643, 648 (2d Cir. 1988).  As the Eastern District of Pennsylvania explained in the remarkable decision of Tillery v. Leonard & Sciolla, LLP, 437 F. Supp. 2d 312, 321 (E.D. Pa. 2006) investment of a personal name with trademark significance is not a casual process . . .

Note that under contemporary trademark law, the question of actionable confusion is not merely as to source identification but can also be based on “association.” Under the original source-identification criterion pursuant to the Lanham Act, unauthorized use of the names of people who were no longer living was usually not found to be infringement. The rationale was that no one would think that a deceased person was the manufacturer of the good or provider of the service at issue.  “[I]f a historical name is recognized as such by the buying public, they will recognize that the name does not denote the identity of the maker, but is merely an arbitrary use of a historical name as a distinctive trademark.  2 McCarthy on Trademarks and Unfair Competition § 13:25 (4th ed.). But see George T. Stagg Co. v. Taylor, 95 Ky. 651, 27 S.W. 247, 251 (1894) (right to use signature of distillery’s deceased founder as trademark had not been conveyed along with the company’s other trademarks upon sale of the concern).

This approach began to change as the concept of what trademarks communicated to consumers evolved, as did the institution of celebrity endorsements, whose growth and significance tracks that of professional sports. The new thinking was reflected in the 1962 amendment of the Lanham Act removing language that limited actionable confusion, mistake or deception to “the source of origin of such goods and services.”  This trend accelerated as the value of trademark licensing, franchises, cobranding, affiliate marketing, and original equipment manufacturer relationships exploded, and in 1989 § 43(a) was broadened to protect not only against confusion not only as to source, but with respect to “affiliation, connection, sponsorship, association, and/or approval.” That the law now affords much greater protection to branding and endorsements is clearly illustrated in a recent case in the trademark registration context. Section 2(a) of the Trademark Act bars the registration of a designation that falsely suggests a connection with a third person.

Thus while your name may or may not be a “a trademark,” and amenable to secondary meaning, as John points out,

[F]or a Section 2(a) claim of false connection, a party need not allege proprietary rights in its name for purposes of standing. “[A] petitioner may have standing by virtue of who petitioner is, that is, its identity.” Petroleos Mexicanos v. Intermix S.A., 97 USPQ2d 1403 (TTAB 2010) [precedential]. [TTABlogged here].

Keep in mind:  That last quote refers to standing, not necessarily a substantive grant of relief.  I don’t want to make any false connections here either.  As commenter Rob advises in response to John’s post, “Do not bother moving to dismiss for lack of standing. The Board hardly ever grants them, on appeal there has not been one instance in the last decade where the [Court of Appeals for the Federal Circuit] affirmed a Rule 12(b)(6) dismissal for lack of standing.”

Huh.  That’s a lesson right there in 12(b)(6) practice I could stand to use myself.

By Ron Coleman

I write this blog.