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Institutionally False Association

Posted by Thomas P. Howard | Dec 03, 2021 | 0 Comments

By James Juo.

Section 2(a) of the Trademark Act prohibits the registration of a mark that consists of or comprises matter that may falsely suggest a connection with “persons, living or dead, institutions, beliefs, or national symbols.” 15 U.S.C. § 1052(a); see also In re Sauer, 27 USPQ2d 1073 (TTAB 1993) (finding registration of BO BALL properly refused under Section 2(a), since use of “Bo” would be recognized by purchasers as reference to football and baseball player Bo Jackson, and there was no connection between Jackson and applicant), aff'd mem., 26 F.3d 140 (Fed. Cir. 1994).

This provision against “false suggestion” is designed primarily “to protect persons and institutions from exploitation of their persona,” rather than to protect the public. Bridgestone/Firestone Research Inc. v. Auto. Club de l'Ouest de la France, 245 F.3d 1359 (Fed. Cir. 2001).

To establish that a proposed mark falsely suggests a connection with a person or an institution, it must be shown that:

(1) The mark is the same as, or a close approximation of, the name or identity previously used by another person or institution;

(2) The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;

(3) The person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and

(4) The fame or reputation of the person or institution is such that, when the mark is used with the applicant's goods or services, a connection with the person or institution would be presumed.

In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013) (citing Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372 (Fed. Cir. 1983)); see also Piano Factory Grp., v. Schiedmayer Celesta GmbH, 11 F.4th 1363 (Fed. Cir. 2021); The U.S. Olympic Comm. v. Tempting Brands Netherlands B.V., 2021 USPQ2d 164, at *17-18 (TTAB 2021); In re Jackson Int'l Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417, 1419 (TTAB 2012); Buffett v. Chi-Chi's, Inc., 226 USPQ 428, 429 (TTAB 1985); In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985).


The Trademark Trial and Appeal Board (“TTAB”) recently issued several decisions regarding trademark applications seeking to register the “NATO” mark for different goods. For the application seeking to register the NATO mark for “Canopies comprised primarily of tensile fabric membranes; canopies of textile or synthetic materials; Tents; Tents made of textile materials; canvas canopies,” the TTAB found that the mark falsely suggests a connection because tents “are the type of items consumers would associate with the military,” such as NATO. In re International Watchman, Inc., Serial No. 87302907 (TTAB Nov. 30, 2021) (precedential). But, for the application directed to “Nutritional supplement energy bars; Nutritional supplement meal replacement bars for boosting energy,” the TTAB reversed the refusal but suggested, “Perhaps on a more developed record, we would have found otherwise.” In re International Watchman, Inc., Serial No. 87418156 (TTAB Nov. 30, 2021).

The threshold issue addressed in these cases was whether the North Atlantic Treaty Organization, or NATO, was “person” or “institution” under Section 2(a). The TTAB noted that the case law makes clear that “institution” is to be broadly construed, and includes Native American tribes and multilateral bodies created by international treaties. See, e.g., In re Shinnecock Smoke Shop, 571 F.3d 1171 (Fed. Cir. 2009) (“the Shinnecock Indian Nation is an ‘institution' under [Section 2(a)]”); In re White, 73 USPQ2d 1713, 1718 (TTAB 2004) (“each federally recognized Apache tribe is necessarily either a juristic person or an institution”); In re N. Am. Free Trade Ass'n, 43 USPQ2d 1285–6 (TTAB 1997) (“NAFTA is an institution, in the same way that the United Nations is an institution”). While the North Atlantic Treaty Organization is not a “juristic person” capable of being sued, this does not diminish its status as an “institution” within the meaning of the statute.


For the application directed to “tents,” the Board then found that tents are “items used by military personnel in the performance of their duties and during combat.”

Given that NATO is a military alliance that has been actively involved in military operations, consumers are likely to assume that “tents” and “tents made of textile materials” bearing the NATO trademark have the North Atlantic Treaty Organization's imprimatur. Indeed, first responders searching for high quality tents and camping enthusiasts would be enticed by any implied NATO sponsorship.

Thus, the Board found that the NATO mark in the “tents” application points uniquely and unmistakably to the North Atlantic Treaty Organization under the second factor, and NATO's fame and prominent role as an intergovernmental military alliance satisfied the fourth factor.

Nutritional Supplement Energy Bars

For the application directed to “nutritional supplement energy bars,” however, the Board concluded the record, which consisted of a partial excerpt from Wikipedia and a post from the website “MRE Info” were not persuasive sources and had little probative value. “Because of evidentiary deficiencies, the Board cannot find that consumers are likely to assume that ‘nutritional supplement energy bars; nutritional supplement meal replacement bars for boosting energy' bearing the NATO trademark are connected to the North Atlantic Treaty Organization.”

“Better quality evidence would be required to show a connection with such ordinary consumer items,” notwithstanding NATO's fame as a military alliance. Compare NASA v. Record Chem. Co. Inc., 185 USPQ at 568 (dismissing opposition to registrations of APOLLO 8 for moth preventatives and mothproofing agent-air freshener because, while NASA is a juristic person and prior user of the terms APOLLO and APOLLO for its space missions, it is unlikely that the average purchaser of applicant's goods would assume NASA to be source or sponsorship of the goods or mistakenly believe that the goods are of NASA space exploration technology) and U.S. Navy v. United States Manufacturing Co., 39, 1260 (TTAB 1987) (“we see no reasonable basis for concluding that ordinary consumers would think that elastic braces for tennis elbows or sprained ankles have any connection whatsoever with the Marine Corps”), with Cotter & Co., 228 USPQ at 205 (Board found that “the goods sold by applicant under the WESTPOINT designation, namely, shotguns and various rifles, are goods of a type that customers would associate with a military post or reservation” and as such “purchasers of firearms sold under the mark would be misled by use of said mark into making a false assumption of a connection in the nature of sponsorship, approval, support or the like with the United States Military Academy.”).

Thus, the second factor was not satisfied; and the fourth factor also was not satisfied for the same reason with respect to the “nutritional supplement energy bars” application.

Thomas P. Howard, LLC

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

About the Author

Thomas P. Howard

Thomas Howard is an experienced trial lawyer that handles intellectual property litigation nationwide, including copyright, trademark, trade secret and patent litigation, as well as complex civil litigation, including breach of contract, interference with contract, breach of fiduciary duty, conspiracy, fraud and fraudulent transfer of assets.


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