The Federal Circuit affirmed a Trademark Trial and Appeal Board ("TTAB") decision refusing to register the mark US SPACE FORCE under § 2(a) of the Lanham Act based on false suggestion of a connection with the United States government.
Background
At a press conference in March 2018, President Donald Trump proposed a new military branch, to be called "Space Force," to cover space operations. Shortly after this announcement, an intellectual property attorney named Thomas D. Foster filed an intent-to-use trademark application in the name of his professional corporation for the mark US SPACE FORCE covering a wide variety of goods. Later that year, President Trump issued a directive to create the U.S. Space Force. Congress finally passed legislation officially establishing "Space Force" as the sixth military branch in December 2019.
The USPTO Examining Attorney refused to register Foster's mark for all classes of goods pursuant to § 2(a) of the Lanham Act based on a false suggestion of a connection with the United States government. Foster then appealed to the TTAB, which affirmed the refusal.
By way of background, Section 2(a) of the Lanham Act bars registration of trademarks where they may "falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols." The rationale behind this provision is to protect consumers from confusion as to the origin of goods and also to protect persons and institutions from exploitation of their persona.
Foster proceeded to challenge the TTAB's false connection analysis under § 2(a) on appeal to the Federal Circuit, arguing that (1) the TTAB improperly considered facts that post-dated the application's filing date and (2) the TTAB's findings under the first two parts of the four-part false connection test were not supported by substantial evidence.
Decision
The Federal Circuit considered a number of prior decisions on the issue of timing. Consistent with those cases, the Federal Circuit held that § 2(a) bars registration of a pending application for a mark that falsely suggests a connection as of the time of examination. Therefore, an examining attorney or tribunal considering whether there is a false connection can consider evidence that comes into existence during the examination process. Accordingly, the appropriate time to assess whether there was a false connection properly ran through to the date on which the TTAB issued its decision affirming the examiner's refusal to register.
On addressing the second point of appeal, the Federal Circuit noted that the test for false suggestion of a connection with a person or an institution encompasses four factors:
- the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution;
- the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;
- the person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and
- the fame or reputation of the person or institution is such that, when the mark is used with the applicant's goods or services, a connection with the person or institution would be presumed.
The Federal Circuit suggested that while the four-part test is a helpful framework to assess whether there is a false suggestion of a connection, it is not an exhaustive list.
In this case, the United States was using the entirety of the mark, U.S. Space Force, during the relevant time. The TTAB's finding that the applicant's mark is the same as or a close approximation of a mark used by the government was supported by substantial evidence. The TTAB relied upon President Trump's announcement and subsequent coverage in major news publications, including those post-dating the filing date, to show that the mark US SPACE FORCE points uniquely and unmistakably to the United States, specifically, a military branch called the U.S. Space Force. There was therefore substantial evidence supporting the TTAB's finding regarding the first and second factors, and the Federal Circuit affirmed the TTAB's refusal to register Foster's mark.
Read more here. The case is In re Foster, APC, No. 23-1527 (Fed. Cir. May 7, 2025).
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