A variety of policies determine whether a trademark is eligible for federal trademark registration. The Trademark Trial and Appeal Board (TTAB) reviews applications to ensure they are in compliance with the Lanham Act, the federal statute governing trademark law in the United States, and the U.S Patent & Trademark Office’s trademark rules of practice and trademark manual of examining procedure (TMEP). One key consideration is whether a mark creates a false association with a person or institution. If an application is rejected due to this concern, it may prove difficult to resubmit successfully.

Panitch Schwarze attorney Bridget H. Labutta authored an article in The Legal Intelligencer examining the concept of false association and how it has played out in different trademark cases. She provides an overview of a case in which the owners of the Bang Energy brand attempted to register the mark “Purple Rain,” a phrase already associated with a well-known song by the musician Prince. She also cites an example of a case in which Georgia Intellectual Property Alliance, Inc. attempted to register the mark GIPA, an acronym also used by the Global Intellectual Property Academy.

Labutta urges caution when navigating the legal concerns that may arise when registering a trademark. She notes that registrants are not necessarily prohibited from adopting a mark that is the same as a mark already used by another person or institution, but they are most likely unable to use a well-known or recognizable name or mark regardless of the goods promoted by their brand.

Read the full article here: “Trademarks That Create a False Association” (Subscription is required.)