The Federal Circuit clarified the use of evidence in refusing trademarks under false suggestion of connection with an individual or institution. The Lanham Act refuses registration of any mark that
[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.[i]
As discussed later in this article, evidence can be considered up through the rendering of an opinion by the Trademark Trial and Appeal Board (TTAB or Board), meaning it should be easy to introduce evidence pertaining to false suggestion of a connection- both by the examiner refusing registration and the applicant in support of registration- during the trademark application process.
A California attorney sought registration of US SPACE FORCE for numerous goods and services, and filed two intent-to-use applications on March 19, 2018.[ii] The formation of US Space Force was announced in June 2018 and formed in December 2019.[iii]
The application for US SPACE FORCE was denied for false suggestion of connection to an institution, i.e. the United States.[iv] Thomas D. Foster, APC (A Professional Corporation entity of California) appealed to the TTAB, followed by the Federal Circuit, arguing evidence used after the filing date could not be relied upon for the refusal and the refusal was not properly supported.[v]
Regarding the timing, the Court noted that precedent did preclude use of facts prior to registration, a point the Court distinguished from the present instance where the challenge was a refusal to register the mark.[vi] Rather, the Court noted the correct date for determining registration is at the time of examination.[vii] Accordingly, the TTAB can consider evidence of false connection under 2(e) through the issuance of the Board decision.[viii]
The Court next considered the evidence of false suggestion of connection, noting a four factor framework comprising;
(1) similarity in the mark to the name or identity previously used by another person or institution;
(2) the mark would associate with the name or identity of the other person or institution, as it points uniquely and unmistakably to the other person or institution;
(3) the person or institution is not connected with the activities under the mark;
(4) the reputation or fame or the person or institution is sufficient that a connection with the person to institution would be presumed.[ix]
The Court noted the factors are not exhaustive, and are merely a helpful framework.[x] Analyzing the factors, the Court noted the mark need not be identical to the name or identity; just falsely suggest a connection.[xi] Thus, US SPACE FORCE suggests a connection to the U.S., though here the mark was used in its entirety.[xii] Next, the Board’s findings that President Trump announced the formation of U.S. Space Force on March 13, 2018 in San Diego, and news coverage, evidenced that the name was widely known and associated with the U.S. military, thereby supporting the first factor.[xiii] The announcement of the formation and coverage in major news outlets supports the finding that the mark uniquely and unmistakably points to the United States and a branch of its military, supporting the second factor.[xiv] Because the last two factors were not challenged, the Court concluded there was amble evidence to support the conclusion that the mark falsely suggests a connection to the United States.[xv]
While this case does not substantively change trademark law, it does affect the procedures for applying to register a mark. Thus, applicants must consider the likelihood of evidence being submitted after the application submission, that could result in a refusal of the application. Additionally, Applicants should be diligent in collecting evidence, even during the response to a substantive action by the Office, that may challenge a refusal.
[i] 15 U.S.C. 1052(a).
[ii] https://news.bloomberglaw.com/daily-labor-report/lawyer-was-correctly-denied-space-force-trademark-court-rules (last accessed May 8, 2025); In re Thomas D. Foster, APC, No. 2023-1527, slip opinion at 1 (Fed. Cir., May 7, 2025); Trademark Ser. Nos. 87/839,062 and 87/981,611.
[iii] In re Thomas D. Foster, APC, No. 2023-1527 at 2.
[iv] In re Thomas D. Foster, APC, No. 2023-1527 at 2-3.
[v] Id. at 3.
[vi] Id. at 4 (distinguishing Piano Factory Group, Inc. v. Schiedmayer Celesta GmbH, 11 F.4th 1363, 1379 (Fed. Cir. 2021))
[vii] Id. at 4 (citing R.J. Reynolds Tobacco Co. v. Am. Brands, Inc., 493 F.2d 1235, 1238 (C.C.P.A. 1974) (the latest date permitted by USPTO rules for taking testimony and evidence); Application of Thunderbird Prods. Corp., 406 F.2d 1389, 1392 (C.C.P.A. 1969) In re Chippendales USA, Inc., 622 F.3d 1346, 1354-56 (Fed. Cir. 2010)(distinctiveness evidence can be considered up to the TTAB decision)).
[viii] Id. at 5.
[ix] Id. at 5-6 (citing to Univ. of Notre Dame Du Lac v. J.C. Gourmet Foods Imps. Co., 703 F.2d 1372 (Fed. Cir. 1983)).
[x] Id. at 6.
[xi] Id. at 6-7.
[xii] Id. at 7-8.
[xiii] Id. at 8.
[xiv] Id. at 9.
[xv] Id. at 9.
