‘The Force’ Abandons Applicant for US SPACE FORCE Trademark at CAFC

Source: Wikipedia

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday affirmed a Trademark Trial and Appeal Board (TTAB) decision upholding an examiner’s refusal to register the mark US SPACE FORCE to Thomas Foster.

The CAFC, in an opinion authored by Chief Judge Moore, agreed with the TTAB that the mark created a false suggestion of a connection with the United States government based on President Donald Trump’s creation of the Space Force as a sixth military branch, which was established by congress in December of 2019.

Foster argued the TTAB erred in rejecting the mark because it failed to credit his intent-to-use application “as constructive use of the mark” and because the Board relied on “evidence post-dating the filing date.”

Foster filed the application for US SPACE FORCE on March 19, 2018, six days after Trump first announced his intent to create the U.S. Space Force. However, the official announcement didn’t come until June 2018 and congress didn’t pass legislation on it until December 2019.

Foster contended that only facts preceding the filing date should be considered for a false suggestion of a connection analysis, while the government argued facts after the filing date can be relevant.

The CAFC explained that the court addressed the timing issue in Piano Factory Group, Inc. v. Schiedmayer Celesta GmbH, 11 F.4th 1363, 1379 (Fed. Cir. 2021) and concluded that “the Board is required to assess the facts as of the time the mark was registered,” but that case involved a registered mark. “For a refusal to register, the appropriate timing cannot be the registration date because the mark was never registered,” wrote the CAFC of the present case.

The CAFC’s predecessor court, the Court of Customs and Patent Appeals, ruled regarding other inquiries under Section 2 of the Lanham Act, such as R. J. Reynolds Tobacco Co. v. Am. Brands, Inc., 493 F.2d 1235, 1238 (C.C.P.A. 1974), that evidence can be considered as of the time of examination. “The false connection inquiry can therefore include evidence that comes into existence during the examination process,” wrote the CAFC. In Foster’s case, the opinion explained:

“[T]he Patent and Trademark Office considered the registrability of Foster’s mark during examination and did not end its analysis until the Board issued its December 12, 2022, Reconsideration Decision affirming the examiner’s refusal to register. The appropriate timing to assess whether there was a false connection properly ran through December 12, 2022.”

Turning to the false connection inquiry, the court then applied a four-part test that includes assessing whether: “(1) the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution; (2) the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution; (3) the person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and (4) 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.”

Foster argued the first two prongs of the test were not supported by substantial evidence, but the CAFC disagreed. Noting that the four-factor test outlined was “not exhaustive,” the opinion explained that it did not include another relevant factor in assessing false connection, namely, whether “there was evidence the mark holder intended to create a false association between his mark and the person, which would be ‘highly persuasive’ of a false connection.”

The CAFC also ultimately rejected Foster’s arguments that the Board’s findings on the first two factors were not supported by substantial evidence, holding that its reliance on Trump’s March 13, 2018, speech announcing  the U.S. Space Force and national news coverage to show the “mark was the same as or a close approximation of a name or identity of the United States”, as well as evidence post-dating the application, was sufficient.

The TTAB also relied on this evidence to show the mark pointed “uniquely and unmistakably to the United States,” and dismissed Foster’s argument that certain evidence submitted contradicts that finding. The CAFC said Foster failed to make a substantive argument on this point and instead merely provided a list of citations. “This is insufficient to show the Board’s finding lacked substantial evidence,” wrote the court.

The TTAB’s decision was therefore affirmed.