Trademarks That Create a False Association

A trademark is a word, symbol, design, or combination of these elements that identifies and distinguishes the source of goods or services of one party from those of others. Trademarks are valuable assets that help consumers recognize and trust the quality and reputation of a brand. However, not all trademarks are eligible for registration or protection under the law. One of the grounds for refusal or cancellation of a trademark is that it falsely suggests a connection with another person, institution, belief, or national symbol.

clear sign with the neon words "this must be the place" on a geometric background

A trademark is a word, symbol, design, or combination of these elements that identifies and distinguishes the source of goods or services of one party from those of others. Trademarks are valuable assets that help consumers recognize and trust the quality and reputation of a brand. However, not all trademarks are eligible for registration or protection under the law. One of the grounds for refusal or cancellation of a trademark is that it falsely suggests a connection with another person, institution, belief, or national symbol.

What is False Association?

False association is a type of trademark infringement that occurs when a mark is likely to cause confusion, mistake, or deception as to the affiliation, connection, or association of the mark’s owner with another person or entity, or as to the origin, sponsorship, or approval of the mark’s goods or services by another person or entity. False association can also occur when a mark dilutes the distinctiveness or harms the reputation of a famous mark by creating an unwanted association.

False association can be based on the name, identity, likeness, signature, voice, photograph, or other indicia of another person or entity. The person or entity does not have to be famous or well-known; it can be any individual, group, organization, institution, belief system, or national symbol that has a protectable interest in its name or identity. For example, a trademark that consists of or includes the name LAKOTA may falsely suggest a connection with the Lakota people, a Native American tribe.

How to Avoid False Association?

To avoid false association, trademark applicants and owners should conduct a thorough search and clearance of their proposed marks before filing an application or using them in commerce. They should also consult with an experienced trademark attorney who can advise them on the availability and registrability of their marks and help them avoid potential conflicts with existing marks. Additionally, they should monitor their marks and enforce their rights against any unauthorized use by third parties that may create a false association.

If a trademark examiner issues a refusal based on false association during the examination process, the applicant can respond by submitting evidence and arguments to overcome the refusal. For example, the applicant can show that:

  • The mark is not the same as or a close approximation of the name or identity of another person or entity;

  • The mark does not point uniquely and unmistakably to another person or entity;

  • The mark is used with the consent or authorization of the person or entity;

  • The mark is used in a parody, criticism, commentary, news reporting, or educational context that does not imply endorsement or affiliation;

  • The mark is used in a way that clearly distinguishes it from the name or identity of another person or entity.

If a trademark owner faces a cancellation proceeding or a lawsuit based on false association after registration, they can defend themselves by raising similar arguments and evidence as above. They can also assert affirmative defenses such as laches, acquiescence, estoppel, fair use, nominative use, descriptive use, generic use, or lack of likelihood of confusion or dilution.

Conclusion

False association is one of the legal risks that trademark owners should be aware of and avoid. It can result in the refusal or cancellation of a trademark registration and expose the owner to liability for damages and injunctive relief. Therefore, it is advisable to consult with a qualified trademark attorney who can help you select and protect your trademarks without creating a false association with others.

If you have any questions about trademarks and false association, please feel free to contact us. We are happy to assist you with your trademark needs.