The U.S. Court of Appeals for the Federal Circuit recently affirmed a Trademark Trial and Appeal Board (“Board”) decision confirming the Examining Attorney’s refusal to register the mark “US SPACE FORCE” pursuant to § 2(a) of the Lanham Act for falsely suggesting a connection to the United States government.
On March 19, 2018, Thomas D. Foster filed an intent-to-use trademark application for “US SPACE FORCE” covering various goods and services. This filing came shortly after the announcement of the formation of a sixth military branch called “Space Force”. During the examination process, the Examining Attorney refused to register Foster’s mark based on § 2(a) of the Lanham Act which bars trademark registration for marks which may disparage or falsely suggest a connection to persons or institutions, including the United States. The Trademark Trial and Appeal Board (Board) affirmed the Examiner’s Attorney’s refusal, and Foster appealed to the U.S. Court of Appeals for the Federal Circuit.
In its Decision, the Court addressed two primary issues:
- Timing of Evidence : Foster argued that a false connection can only be based on facts prior to the filing date of the intent-to-use application. The government, on the other hand, contended that such determination can be based on facts after the filing date. The Court ultimately ruled in favor of the government, holding that that § 2(a) bars registration of a pending application that falsely suggests a connection as of the time of examination, which could therefore include evidence that comes into existence during examination.
2. Application of the Four-Part Test :The Court then addressed whether Foster’s mark falsely suggested a connection with the United States, by applying a four-part test developed by the Board:
(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.
The Court found substantial evidence supporting the Board's findings on the first two parts of the test, noting that "US SPACE FORCE" is the same or a close approximation of the name of the newly established military branch and uniquely and unmistakenly points to the United States government. Foster did not challenge the Board’s conclusions regarding the third and fourth parts of the test.
The Court also noted that this four-part test is not exhaustive and that additional factors from cases such as Univ. of Notre Dame Du Lac v. J.C. Gourmet Foods Imps. and In re E.I. du Pont de Nemours & Co. may be helpful in the false connection analysis.
This decision underscores the importance of considering both pre- and post-application evidence in trademark examinations. In view of this holding, it will be interesting to follow how the false connection test develops in the future.