Nieves & Nieves LLC sought to register the word mark ROYAL KATE for a number of fashion products, including cosmetics, jewelry, handbags, bedding, and clothing. The application included a statement that the mark “does not identify a particular living individual.”
In the precedential opinion in In re Nieves & Nieves LLC, the Trademark Trial and Appeal Board (the “Board”) considered whether ROYAL KATE falsely suggests a connection with Catherine, Duchess of Cambridge, also known as Kate Middleton. The Board found that it does.
The first interesting aspect of this case is related to the test for a false suggestion. In other words, is the ROYAL KATE trademark a close approximation of the name or identity of Kate Middleton. The applicant passionately argued that ROYAL KATE is not a close approximation of Kate Middleton because (1) there was no evidence that Kate Middleton ever used the name ROYAL KATE herself as her name or identity; and (2) Kate Middleton does not officially have the title of a “royal.”
The TTAB rejected both of these arguments. First, the TTAB clarified that it does not matter whether the famous person actually used the identity. What matters is whether the relevant public would understand the mark ROYAL KATE as identifying Kate Middleton. This is because the right of publicity protects the commercial interest of celebrities in their identities. The celebrity has an interest in being protected from unauthorized commercial exploitation of their identity.
In reaching its decision the TTAB expressly held that Kate Middleton is a celebrity by any measure used, and the term ROYAL KATE points uniquely and unmistakably to her. Moreover, there was evidence in the record that the name ROYAL KATE has become an expression used by the American public and media to identify Kate Middleton, as shown in numerous examples of media coverage.
Accordingly, the Board affirmed a refusal to register the mark ROYAL KATE to the applicant, who had no connection to Kate Middleton and because Kate Middleton had not consented to the use and registration of the name.
The proceeding is Serial No. 85179263 (January 30, 2015).