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.
A term may be considered the identity of a person even if his or her name is not used. The critical inquiry is whether the trademark sought to be used and registered identifies a specific person. The evidence showed numerous media articles referring to Kate Middleton as Royal Kate. These references included “Daring dress for Royal Kate”, “Royal Kate leads way…”, “New Royal Kate”, “Royal Kate Middleton”, and “British Royal Kate”. Therefore, ROYAL KATE is a close approximation of the identity of Kate Middleton, even if Kate Middleton doesn’t use Royal Kate to identify herself. It has become an expression used by the American public to identify her.
The second prong of the test is more easily proven than the first because Kate Middleton as pointed out by news articles has become a fashion trendsetter. When the mark is used with fashion goods, the Board concluded that it unmistakably points to Kate Middleton. Regarding the third prong, the Applicant admitted that Kate Middleton was not connected with the goods sold. Lastly, the fourth prong was also easy to satisfy. Kate Middleton is a member of the British Royal Family and is the subject of great public interest in the U.S. and throughout the world. Media evidence demonstrated that she is one of the world’s most photographed women. Thus, it was concluded by the Board that when the mark ROYAL KATE was used with Applicant’s goods, the public would presume there is a connection with Kate Middleton.
With respect to the second basis for refusal, the Board held that the name ROYAL KATE was the name of a particular living individual, Kate Middleton. In addition, it was evident that Kate Middleton did not provide her consent to use or register the name ROYAL KATE for the fashion goods identified in the Applicant’s trademark application. In the end, the Board affirmed the Examiner’s refusal to register the mark ROYAL KATE under Sections 2(a) & 2(c) of the Trademark Act. Another example of a refusal under Section 2(a) for falsely suggesting a connection with other persons involving Blue Ivy Carter, can be found on our web page entitled, Trademarks That Falsely Suggest A Connection With Other Persons. If you have further questions regarding the subject matter, kindly contact one of our New York trademark attorneys for a courtesy consultation.