MOHAWK for Tribe Member's Cigarettes Suggests False Connection
Section 2(a) of the U.S. Trademark Act prohibits the registration of a mark if it "consists of or comprises … matter which may … falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols. It is intended to protect the name of an individual or institution which is not a ‘technical’ trademark or ‘trade name’ upon which an objection could be made under Section 2(d). It also embraces the concepts of the right of privacy and the related right of publicity. To support a refusal under the "falsely suggests a connection" clause of Section 2(a), it is the examining attorney’s burden to show:
- that the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution;
- the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;
- the person or institution named by the mark is not connected with the activities performed by applicant under the mark; and
- 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.
However, according to the opinion by Administrative Trademark Judge Hairston:
. . . applicant is but one member of the tribe, and more than one individual can correctly claim a connection to the Mohawk tribe. To overcome a Section 2(a) refusal in such a situation, a general commercial connection between the applicant and the institution is insufficient. Rather, the commercial connection must be specific and relate to the particular goods and services. In other words, there must be a specific endorsement, sponsorship or the like of the particular goods and services, whether written or implied.
On the facts of this case, we find that a specific commercial connection between applicant and the Mohawk tribe has not been proven. The license and d/b/a certificate issued by the Mohawk tribe to Native American Trading Associates is not evidence that the tribe endorses or is a sponsor of the cigarettes applicant intends to sell. We note that the license is general in nature and simply states that Native American Trading Associates has agreed to the rules and regulations regarding the manufacturing of tobacco products on the Mohawk tribe’s reservation. The d/b/a certificate also is general in nature and states that Native American Trading Associates has requested and been approved to operate a tobacco manufacturing business on the reservation. Neither of these documents, however, is a specific endorsement or sponsorship of Native American Trading Associates’ activities, and in turn, the cigarettes applicant intends to sell. Thus, we find that these documents do not evidence a specific commercial connection between applicant and the Mohawk tribe.
Further, this is not a situation where we can imply a specific commercial connection between applicant and the Mohawk tribe. While the tribe is undoubtedly aware of Native American Trading Associates’ tobacco manufacturing activities, there is no evidence of a long-standing mutual relationship between Native American Trading Associates and the tribe. On the contrary, both the license and d/b/a certificate were issued in 2004 and both are for relatively short periods of time. Moreover, there is no evidence that the Mohawk tribe has openly advanced Native American Trading Associates’ tobacco manufacturing activities. In short, this is not a situation where we can imply that the Mohawk tribe has specifically endorsed Native American Trading Associates’ tobacco manufacturing activities, and in turn, the cigarettes applicant intends to sell.
The awarding of a federal registration to applicant individually for the mark MOHAWK for cigarettes would amount to the awarding of the tribe’s "imprimatur" to the mark. In the absence of a specific commercial connection between the Mohawk tribe and applicant with respect to the goods involved herein, namely, cigarettes, we are unable to find the kind of commercial connection contemplated by Section 2(a).