Fashion Brands Can’t Get a Royal Boost

n a rare precedential opinion, the Trademark Trial and Appeal Board (the “Board”) affirmed a refusal to register the trademark ROYAL KATE for use on cosmetics, handbags, bedding and apparel.  The Board found that this mark falsely suggests a connection with Kate Middleton, the Duchess of Cambridge and, more famously, wife of Prince William, and that it identified the Duchess without her consent.  The decision counsels fashion brands that the trademark office will not condone trading off of the fame of others, even when the mark sought is not such a person’s actual name.

Drawing from roots in privacy and publicity law meant to maintain the right to control one’s identity, the Lanham Act prohibits the registration of any mark that falsely suggests a connection with a person other than the applicant.  The three-judge panel looked to four factors in analyzing the applicant’s rather dubious claim that ROYAL KATE did not actually refer to Kate Middleton.

The Board first asked whether the mark is the same or a close approximation of Kate Middleton’s name or identity.  With reference to a plethora of evidence from the American news media, the Board determined that, while perhaps not her actual name, ROYAL KATE is certainly a close approximation of Kate Middleton’s identity.  In order to create such a false association, the Board found, an applicant for registration must merely use a mark that is closely associated with a particular persona of someone other than the applicant.  It is irrelevant whether or not the person allegedly identified by the mark has ever actually used the mark to refer to herself.  As in much of trademark law, it is the perception of the public that truly carries weight.

Second, the Board asked whether ROYAL KATE would be recognized by purchasers to be a close approximation of Middleton’s identity.  In finding that it would be so recognized, the Board again referenced the news media.  It is a rare day, it seems, when the mainstream news media makes no mention of what Kate is wearing and from where she bought it.  This constant attention, according to the Board, underscores that the relevant consuming public will undoubtedly recognize ROYAL KATE as pointing unmistakably to Kate herself.

The third prong of the test asks whether the person allegedly identified by the mark is connected with the goods that are, or will be, sold under the mark.  The applicant in this case acknowledged that Kate Middleton was not connected with the goods it intended to sell, so, this factor also fell against the applicant.

Fourth and finally, the Board asked whether Kate Middleton’s name is of sufficient fame that when ROYAL KATE is used on the applicant’s goods, a connection with Kate Middleton would be presumed.  The Board again discussed the massive news coverage that Kate Middleton gets in the United States for her fashion.  In fact, the Board cited one CNN article that described her royal highness as “one of the world’s most photographed women” and dubbed her “one of the world’s biggest, if not the biggest, stars.”  This degree of fame, in connection with fashion, led the Board readily to determine that a connection between fashion goods and Kate Middleton would be presumed.  As each of the four factors fell against the applicant, the Board upheld the trademark office’s refusal to register ROYAL KATE.

The Board also affirmed the refusal on the grounds that ROYAL KATE identified Kate Middleton without her consent being of record pursuant to section 2(c) of the Lanham Act.  The prohibition on registration should be upheld under section 2(c) if either (1) the person allegedly identified is so well known that the public would presume a connection between her and the goods or (2) such person is publicly connected with the business in which the mark is used.  Interestingly, well-known celebrities are entitled to the privacy protection of section 2(c) without having to show a public connection between the goods and the mark.  Regardless however, the Board had already determined that Kate Middleton is one of the most recognized celebrities in the country.  Moreover, the Board found that the phrase ROYAL KATE had come to identify her in the eyes of the American public.  Therefore, the refusal to register under section 2(c) was also affirmed.

This decision should serve to remind those in the fashion industry, and across all industries, that trading off the fame of another is not countenanced by the trademark office or the Board.  Despite the boost that a famous name can give, it is better to contrive a unique and distinctive mark to identify one’s products.