Terminal Moraine Inc. (“Applicant” or “Terminal Moraine”) sought registration on the Principal Register of the mark:
for the following goods and services:
- Backpacks and shoulder bags for use in camping, and hiking, sold exclusively at sporting goods, outdoor, and mountaineering stores and websites or through the sporting goods departments of general retailers; and
- Tent flies, Tents; Tents for mountaineering or camping; Tents made of textile materials; Bivouac sacks; Rain flies for tents, all of the aforesaid goods being sold exclusively at sporting goods, outdoor, and mountaineering stores and web sites or through the sporting goods departments of general purpose retailers.
Mystery Ranch, Ltd. (“Mystery Ranch” or “Opposer”) opposed registration of the DANA DESIGN mark based on an alleged false suggestion of a connection with Mystery Ranch and Dana Gleason, Mystery Ranch’s co-owner, under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a) as well as under Section 2(c) of the Trademark Act, 15 U.S.C. § 1052(c), based on an allegation that “DANA” identifies Dana Gleason, whose written consent to registration of Applicant’s mark had not been granted.
In a precedential decision, the Trademark Trial and Appeal Board (“TTAB”) rejected Mystery Ranch’s claim that the application falsely suggested a connection between Mystery Ranch and Terminal Moraine, but upheld the opposition because Mr. Gleason had not consented to registration of the mark. Mystery Ranch, Ltd. v. Terminal Moraine Inc., Opp. No. 91250565, 2022 USPQ2d 1151 (TTAB Nov. 30, 2022).
Dana Gleason founded a company called Dana Design Ltd. in 1985. In 1992, Dana Design Ltd. registered the typeset mark DANA DESIGN for “sporting goods sold exclusively in sporting goods, outdoor and mountaineering shops; namely, backpacks, frames for backpacks, fanny packs and hip sacks.” In 1997, Dana Design Ltd. registered the design depicted below for “all-purpose sport bags, backpacks, internal frame backpacks, and rucksacks:”
By 2000, both of these marks were assigned to another company with the registrations cancelled by 2018. Applicant Terminal Moraine applied to protect the DANA DESIGN mark in 2018, incorporating the marks that Mr. Gleason and successive owners had previously abandoned despite the fact that Gleason had formed Mystery Ranch and had been selling backpacks since 2000.
Entitlement to Statutory Cause of Action
Entitlement to a statutory cause of action is an element of the plaintiff’s case in every inter partes proceeding. To establish entitlement to a statutory cause of action, a plaintiff must demonstrate: (i) an interest falling within the zone of interests protected by the statute, and (ii) a reasonable belief in damage proximately caused by the registration or continued registration of the mark. In other words, a plaintiff is entitled to bring a statutory cause of action by demonstrating a real interest in the proceeding and a reasonable belief of damage.
In the context of a Section 2(a) claim, entitlement “does not rise or fall on the basis of a plaintiff’s proprietary rights in a term; rather, a Section 2(a) plaintiff has standing by virtue of who the plaintiff is, that is, the plaintiff’s personality or ‘persona.’” Thus, Mystery Ranch need not demonstrate a proprietary interest in Applicant’s mark. Mystery Ranch need only demonstrate a real interest in the proceeding and a reasonable belief that it will incur some direct injury to its own established trade identity (“persona”) if Applicant’s mark is registered.
Even a nickname or an informal reference “can qualify as an entity’s ‘identity,’ thereby giving rise to a protectable interest.” Indeed, corporate or institutional plaintiffs may assert a real interest even where such interest in the outcome of a proceeding is based on the asserted rights of its members. Here, the TTAB noted that Mystery Ranch had asserted its entitlement on the basis of its own persona having been misappropriated together with its co-owner’s interest, on the theory that both entities’ interests coincide as it is “widely known that Mystery Ranch is owned and operated by Dana Gleason,” and that it “has made a substantial investment in advertising and promoting Mr. Gleason as its Owner and backpack designer.” In view of the evidence, the TTAB concluded that Mystery Ranch had demonstrated its personal stake in preventing the registration of a mark in the backpack field that allegedly appropriates the persona of one of its owners promoted in connection with the business, and a reasonable belief in resultant damage. Having demonstrated entitlement under Trademark Act Section 2(a), Mystery Ranch was entitled to rely on any available statutory grounds for opposition set forth in the Trademark Act.
Trademark Act Section 2(a)
Trademark Act Section 2(a), in relevant part, prohibits registration of “matter which may . . . falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols . . . .” 15 U.S.C. § 1052(a). A false suggestion of a connection has been established when four elements are proved:
- Applicant’s mark is the same or a close approximation of Opposer’s name or identity;
- The mark would be recognized as such, in that it points uniquely and unmistakably to Opposer;
- Opposer is not connected with the goods sold by Applicant; and
- Opposer is of sufficient fame or reputation that, when Applicant’s mark is used in connection with its goods, a connection with Opposer would be presumed.
In rejecting Mystery Ranch’s opposition on the basis of Trademark Act Section 2(a), the TTAB held that Terminal Moraine’s mark did not falsely suggest a connection between the Terminal Moraine and Mystery Ranch. A Section 2(a) claim requires proof that consumers view [DANA] so closely with Mystery Ranch that they recognize it as Mystery Ranch’s name (or nickname), identity or persona. Because consumers do not perceive Dana Gleason and Mystery Ranch as each other’s alter ego, there was no merger of the two such that the ‘Dana’ in DANA DESIGN refers interchangeably to either entity. As a result, the opposed mark was not a close approximation of Mystery Ranch’s name or identity and Mystery Ranch’s Section 2(a) claim fails.
Trademark Act Section 2(c)
To assert a claim under Section 2(c), an entity “must assert that it has a ‘cognizable or proprietary right’ in the name, image, likeness or signature, such as through a ‘linkage or relationship’ with that particular individual sufficient to assert the third party’s rights.” The provisions of Section 2(c) are applicable to attempts to register a person’s full name, a nickname, a first name or a surname, so long as the name identifies a particular living person.
The TTAB first considered whether Mystery Ranch could invoke Section 2(c) on behalf of Dana Gleason. The TTAB found that the evidence established that Dana Gleason was publicly connected with the business in which Applicant’s mark is intended for use; and consumers would make an association between Gleason and Applicant’s mark.
Turning next to whether the DANA DESIGN mark identifies Dana Gleason, the TTAB set forth two ways to show that a “name” identifies a particular living individual for purposes of Section 2(c):
1) if the person is so well known that the public would reasonably assume the connection, or
2) if the person is publicly connected with the business in which the mark is being used.
The TTAB proceeded to quickly conclude that despite the abandonment of certain prior registrations featuring Mr. Gleason’s name, “Dana,” the record did not support a conclusion that Mr. Gleason had abandoned his name and the rights associated with the same. Instead, Mr. Gleason had started a new backpack company, honored warranties from his former company, and had continued to publicly design backpacks, all of which demonstrated his intent to keep using his name in the space.
In the present case, the TTAB concluded that the record established that Dana Gleason was known by the relevant consuming public to be associated with backpacks and hiking gear, and that he had remained publicly connected with the relevant marketplace by his ongoing affiliation with Opposer Mystery Ranch’s business. Thus, use of the name DANA in connection with equipment in the field would lead to the assumption that Dana Gleason was in some way associated with the goods being offered under the name. Because the name DANA as used in Applicant’s mark identified Dana Gleason, a living individual and Mystery Ranch’s co-owner, President, and co-Director, Terminal Moraine needed his consent to register the mark. Mystery Ranch’s opposition was sustained and registration was refused.