American Airpower Heritage Museum

Trademark Trial and Appeal Board

Nov 18, 2004

No. 76158198 (T.T.A.B. Nov. 18, 2004)

Mailed: November 18, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re American Airpower Heritage Museum
________
Serial Nos. 76144075, 76144076, 76158198, 76165093,
76149868, 76149869 and 76173211
_______
Wendy K. B. Buskop of Buskop Law Group, P.C. for American
Airpower Heritage Museum.
Margery A. Tierney, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
_______
Before Hohein, Chapman and Drost, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
American Airpower Heritage Museum (a Texas non-profit
organization)1 has filed ten applications which have been
appealed to the Board.2
1 When the Examining Attorney inquired as to whether applicant
was a corporation, applicant responded by stating that “Applicant
is not a corporation but a Texas non-profit organization
organized under Texas law.” (See applicant’s January 2, 2002
response, p. 2 in application Serial No. 76173211.)
2 Application Serial Nos. 76148150 and 76165096 (both for the
mark SACK TIME and design, the former for goods in International
Class 16 and the latter for goods in International Class 9) will
be remanded to the Examining Attorney for consideration of the
substitute drawing submitted in each case with applicant’s reply
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. Nos. 76144075, 76144076, 76158198, 76165093, 76149868,
76149869 and 76173211
2
Of the ten applications, the seven which are the
subjects of this opinion were filed by applicant to
register on the Principal Register the six different marks
shown below. All seven applications are based on
applicant’s assertion of a bona fide intention to use the
mark in commerce.
3 4
brief; and application Serial No. 76158188 (for the mark NIGHT
MISSION and design for goods in International Class 9) was
remanded to the Examining Attorney at her request by Board order
dated May 21, 2004.
3 Application Serial No. 76144075, filed October 10, 2000 for
goods ultimately amended to read “printed matter, namely,
newsletters, brochures, books in the field of aviation history,
postcards, greeting cards, posters, stationary [sic] and flyers,
in the field of aviation history” in International Class 16. The
application includes the following statements: (i) “The mark
consists of a black and white drawing of the mark with the words
‘O-O-Nothing’ and the image of a woman”; and (ii) “Applicant
asserts this is not a portrait of an individual, but an image
contrived from the heads of some unknown painter[s] during Word
War II.”
4 Application Serial No. 76144076, filed October 10, 2000 for
goods ultimately amended to read “printed matter, namely,
newsletters, brochures, books in the field of aviation history,
postcards, greeting cards, posters, and stationary [sic], in the
field of aviation history” in International Class 16. The
application includes the following statements: (i) “The mark
consists of a black and white drawing of the mark that contains a
photographic image”; and (ii) “Applicant asserts this is not a
Ser. Nos. 76144075, 76144076, 76158198, 76165093, 76149868,
76149869 and 76173211
3
5 6
7 8
portrait of an individual, but an image contrived from the heads
of the service men who painted the image during Word War II.”
5 Application Serial No. 76158198, filed November 2, 2000 for
goods ultimately amended to read “printed matter, namely,
newsletters, brochures, books in the field of aviation history,
postcards, greeting cards, posters, and stationary [sic], in the
field of aviation history” in International Class 16. The
application includes the following statements: (i) “The mark
consists of a black and white drawing of the mark that contains a
photographic image”; and (ii) “The portrait in the mark does not
identify a living individual, but an image contrived from the
heads of the painters during Word War II.”
6 Application Serial No. 76165093, filed November 14, 2000 for
goods ultimately amended to read “printed matter, namely,
newsletters, brochures, books in the field of aviation history,
postcards, greeting cards, posters, and stationary [sic], in the
field of aviation history” in International Class 16. The
application includes the following statements: (i) “The mark
consists of a black and white drawing of the mark that contains a
photographic image”; and (ii) “Applicant asserts this is not a
portrait of an individual, but an image contrived from the heads
of the painters during Word War II.”
7 Application Serial No. 76149868, filed October 19, 2000 for
goods ultimately amended to read “printed matter, namely,
newsletters, brochures, books in the field of aviation history,
postcards, greeting cards, posters, and stationary [sic], in the
Ser. Nos. 76144075, 76144076, 76158198, 76165093, 76149868,
76149869 and 76173211
4
Following a convoluted history of these applications
and the examination thereof, the Examining Attorney has
ultimately refused registration in each application under
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), on
the ground that each of applicant’s marks falsely suggests
a connection with a particular artist. Specifically, the
Examining Attorney takes the position that the first four
marks reproduced above “falsely suggests a connection with
the pin-up art of Alberto Vargas (later known as Alberto
field of aviation history” in International Class 16. The
application includes the following statements: (i) “The mark
consists of a black and white drawing of the mark that contains a
photographic image”; and (ii) “The likeness (or, ‘portrait’) in
the mark does not identify a living individual.”
8 Application Serial No. 76149869, filed October 19, 2000 for
goods ultimately amended to read “printed matter, namely,
newsletters, brochures, books in the field of aviation history,
postcards, greeting cards, posters, and stationary [sic], in the
field of aviation history” in International Class 16. The
application includes the following statements: (i) “The mark
consists of a black and white drawing of the mark that contains a
photographic image”; and (ii) “The likeness (or, ‘portrait’) in
the mark does not identify a living individual.”
Application Serial No. 76173211, filed November 30, 2000 for
goods ultimately amended to read “computer software for use with
aviation artwork which provides aviation artwork for display,
creating images, archiving artwork displaying graphics and charts
of historical data” in International Class 9. The application
includes the following statement: “The mark consists of a black
and white drawing of the mark that contains a photographic
image.” Although the Examining Attorney inquired about whether
the image was the portrait of a living individual, and applicant
responded, there is no statement with regard thereto entered in
the application file. The application was originally filed based
on Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a), (use in
commerce, with a claimed date of first use and first use in
commerce of August 1999). However, in a response filed November
24, 2003 (via ‘Express Mail’) applicant amended the basis of the
application to be under Section 1(b) of the Trademark Act, 15
U.S.C. §1051(b) (intent to use).
Ser. Nos. 76144075, 76144076, 76158198, 76165093, 76149868,
76149869 and 76173211
5
Varga)” (Examining Attorney’s appeal briefs); and the last
two marks (involving three applications) “falsely suggests
a connection with [the pin-up art of] Gil Elvgren”
(Examining Attorney’s appeal briefs).9
When the refusals to register were made final,
applicant appealed each refusal. Both applicant and the
Examining Attorney have filed briefs. Applicant did not
request an oral hearing in any of these applications.
In view of the common questions of law and fact which
are involved in these seven applications, and in the
interests of judicial economy, we have consolidated the
applications for purposes of this final decision. (This
decision will become part of the record in each separate
application.)
In support of the Section 2(a) refusals, the Examining
Attorney submitted in each application printouts of pages
from applicant’s website and printouts of pages from third-
party websites, including articles about “nose art”10 and
9 The Examining Attorney originally issued a final refusal in all
seven applications based on an asserted false suggestion of a
connection with the pin-up art of Alberto Vargas. In the latter
three applications, she withdrew the final refusals based on
Alberto Vargas, and ultimately issued new final refusals based on
the respective marks falsely suggesting a connection with the
pin-up art of artist Gil Elvgren (see application Serial Nos.
76149868, 76149869 and 76173211).
10 Information of record in these applications indicates that
“aviation nose art” relates to the paintings by U.S. servicemen
Ser. Nos. 76144075, 76144076, 76158198, 76165093, 76149868,
76149869 and 76173211
6
printouts of pages showing the results of the first few
pages of 129 hits in a Google search of “varga girls nose
art” for the first four applications,11 or, in the latter
three applications, printouts of pages showing the results
of the first few pages of 3,427 hits in an AltaVista search
of “Gil Elvgren.”12 The evidence submitted by the Examining
Attorney also includes, in each of the seven applications,
a copy of a particular painting by the artist Alberto
Vargas in application Serial Nos. 76144075 (“Patriotic
Gal”), 76144076 (“Military Secrets”), 76158198 (“Warning
Signal”) and 76165093 (“Sleepytime Gal”), and a copy of a
particular painting by the artist Gil Elvgren (“Double
Exposure”) in application Serial Nos. 76149868, 76149869
and 76173211.
on the forward portions of the fuselages of airplanes during
World War II to personalize the aircraft.
11 According to information of record, Alberto Vargas (1896-1982)
was born in Peru, and in 1916 he came to the United States and
embarked on his artistic career. In the 1920’s he became the
painter of the Follies Girls for Florenz Ziegfeld; later moving
into the “new” movie industry, painting promotional works of the
stars and set designs; in 1940, he replaced George Petty (creator
of the “Petty Girl”) at Esquire magazine where he created his
“Varga Girl”; in the 1950’s he created works known as “Legacy
Nudes”; and in the 1960’s and 1970’s his works were published in
Playboy magazine. (See e.g., www.sfae.com/artists/vargas.)
12 According to information of record, Gillette (Gil) Elvgren
(1914-1980) was born in St. Paul, Minnesota, and in the mid
1930’s he began his career as an artist at a Chicago advertising
agency, Stevens and Gross. In 1937, he began painting calendar
pin-up girls for a publishing company, Louis F. Dow; and he
changed to Brown & Bigelow in 1944 or 1945 and worked for that
company until 1972. (See, e.g., www.thepinupfiles.com/elvgren;
and www.gilelvgren.com/bio.)
Ser. Nos. 76144075, 76144076, 76158198, 76165093, 76149868,
76149869 and 76173211
7
The Examining Attorney essentially contends in each
case that the overall look of applicant’s mark is a close
approximation of the particular artist’s work (Vargas or
Elvgren); that the mark would be recognized by consumers as
the close approximation pointing uniquely to the artist;
that there is no association between applicant and the
involved artist; and that the artist (Vargas or Elvgren) is
sufficiently famous that a connection would be presumed by
consumers.
Applicant urges reversal in each application,
essentially arguing that each mark must be considered as a
whole, including the words, and there are no words actually
appearing in any of the pin-up art referenced by the
Examining Attorney; that the words are the dominant feature
of each of applicant’s marks and the words are how
consumers would refer to or request the goods; that Section
2(a) of the Trademark Act (false suggestion of a
connection) protects individuals, but it does not protect
particular styles of work or art; and that the evidence of
record does not meet the test to establish that each mark
falsely suggests a connection with the artist Alberto
Vargas or the artist Gil Elvgren, respectively.
In support of its position, applicant submitted (i)
printouts of pages from third-party websites relating to
Ser. Nos. 76144075, 76144076, 76158198, 76165093, 76149868,
76149869 and 76173211
8
various “pin-up girl” artists (including George Petty, Earl
MacPherson, Edward Runci, Pearl Frush, Earl Moran, and
William (Billy) DeVorss); and, except in the case of one
application, (ii) the declaration of Tami O’Bannion,
applicant’s director, regarding, inter alia, the history of
applicant’s acquisition of the original artwork on aircraft
fuselages, and the servicemen who painted the involved
marks on the fuselages of airplanes during World War II.13
The issue before the Board in these seven applications
is whether applicant’s six marks, as applied to the goods
(printed matter or computer software), falsely suggests a
connection with the artist Alberto Vargas (four
applications) or Gil Elvgren (three applications) within
the meaning of Section 2(a) of the Trademark Act, 15 U.S.C.
§1052(a).
As discussed by our primary reviewing Court in the
case of University of Notre Dame du Lac v. J.C. Gourmet
Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983), the portion of Section 2(a) dealing with false
suggestion of a connection resulted from the desire to give
statutory effect to the notions of the rights of privacy
and publicity, the elements of which are distinctly
13 Application Serial No. 76144075 (for the mark “O-O-NOTHING!”
and design) does not include a declaration from Tami O’Bannion.
Ser. Nos. 76144075, 76144076, 76158198, 76165093, 76149868,
76149869 and 76173211
9
different from the elements of a trademark infringement
claim of likelihood of confusion, which is the essence of
Section 2(d) of the Trademark Act. Specifically, the Court
stated as follows (footnote omitted):
Under concepts of the protection of
one’s “identity,” in any of the forms
which have so far been recognized, the
initial and critical requirement is
that the name (or an equivalent
thereof) claimed to be appropriated by
another must be unmistakably associated
with a particular personality or
“persona.” …
Thus, to show an invasion of one’s
“persona,” it is not sufficient to show
merely prior identification with the
name adopted by another. Nor is it
sufficient, as urged by the University,
that the fame of the name of an
institution provides the basis for
protection in itself. The mark, NOTRE
DAME, as used by Gourmet, must point
uniquely to the University.
217 USPQ at 509.
Following the University of Notre Dame case, the Board
enumerated the elements necessary to establish a claim
under Section 2(a) (false suggestion of a connection) or to
test the propriety of a refusal to register a mark based
thereon. The elements are that: (i) applicant’s mark (or
part of it) must be shown to be the same as or a close
approximation of the person’s previously used name or
identity; (ii) applicant’s mark would be recognized as such
Ser. Nos. 76144075, 76144076, 76158198, 76165093, 76149868,
76149869 and 76173211
10
(i.e., the mark points uniquely and unmistakably to that
person); (iii) the person in question is not connected with
the goods or services of the applicant; and (iv) the
person’s name or identity is of sufficient fame that when
it is used as all or part of applicant’s mark for its goods
or services, a connection with that person would be
presumed by purchasers and potential purchasers. See
Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985). See
also, In re Sloppy Joe’s International Inc., 43 USPQ2d 1350
(TTAB 1997); and In re Kayser-Roth Corp., 29 USPQ2d 1379
(TTAB 1993).
The Examining Attorney must accordingly establish a
prima facie case that the mark falsely suggests a
connection with the artist Alberto Vargas (four
applications) or with Gil Elvgren (three applications).
See In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629
(Fed. Cir. 2003), and cases cited therein.
The records herein include ample evidence to establish
that Alberto Vargas and Gil Elvgren were successful artists
who painted, inter alia, “pin-up girls,” and that the
respective artist created particular paintings which have
significant similarities to the six marks applied for by
applicant herein. However, in applicant’s six applied-for
marks, each include words, while the specific painting
Ser. Nos. 76144075, 76144076, 76158198, 76165093, 76149868,
76149869 and 76173211
11
pointed out by the Examining Attorney in each application
(e.g., Patriotic Gal, Warning Signal, Double Exposure) as
well as the artist’s “pin-up girl” artwork in general
(Vargas or Elvgren) do not include words. In addition, the
drawing depicted in each of applicant’s marks, although
certainly reminiscent of the artist’s specific painting
referenced in the application, is not the same as the
artist’s specific painting. Moreover, there is scant
evidence that the “pin-up girl” painting(s) of either
Vargas or Elvgren amounted to the artist’s name or identity
in the minds of consumers. There are simply hundreds of
“pin-up girl” art pieces. The fact that one artist paints
a particular picture which another artist copies to some
degree does not establish that the original particular
picture amounts to that artist’s name or identity. The
case of Carson v. Here’s Johnny Portable Toilets, Inc., 698
F.2d 831, 218 USPQ 1 (6th Cir. 1983) is distinguishable
from the facts herein on many levels. For example, in that
case, the defendant “admitted that it adopted the name
‘Here’s Johnny’ because it identified appellant Carson. We
do not understand appellee to even contend that that it did
not successfully accomplish its intended purpose of
appropriating his identity.” 218 USPQ at 5.
Ser. Nos. 76144075, 76144076, 76158198, 76165093, 76149868,
76149869 and 76173211
12
We find that in these applications it has not been
established that applicant’s six marks are a close
approximation of the respective artist’s previously used
name or identity (i.e, persona), much less what such name
or identity respectively is. The first element of the test
is not met.
Likewise, the record clearly does not establish that
“pin-up girl” art in general is uniquely and unmistakably
associated with either artist, Vargas or Elvgren. To the
contrary, it is clear in these records that numerous
artists were involved in painting “pin-up girls,”
particularly in the 1940s, which was the time during which
applicant’s various “nose art” design marks were originally
painted on the fuselages of airplanes. Further, with
regard to the specific painting referenced in each
application by the Examining Attorney, there is no evidence
that applicant’s mark would point uniquely and unmistakably
to Alberto Vargas or Gil Elvgren, respectively, based on
the specific painting identified in each application. In
fact, it is noteworthy that even the Examining Attorney
originally made final the refusal to register in all seven
applications based on her assertion that there was a false
suggestion of a connection with Alberto Vargas, and
thereafter she withdrew that refusal in three applications
Ser. Nos. 76144075, 76144076, 76158198, 76165093, 76149868,
76149869 and 76173211
13
and asserted a refusal of a false suggestion of a
connection with a different artist, Gil Elvgren. Thus, we
find that consumers would not recognize these six marks as
pointing uniquely and unmistakably to the artist named by
the Examining Attorney, and the second element of the test
is not met.
There is no dispute that applicant is not connected
with the artistic works of either Alberto Vargas or Gil
Elvgren. Thus, the third element of the test for false
suggestion of a connection is met.
Finally, as to the last element, the person’s name or
identity must be shown to be of sufficient fame that, when
used on the involved goods, a connection between applicant
and the named artist would be presumed by consumers. While
there are articles and web sites referencing each artist’s
career and general successes, there is no evidence that the
particular paintings deemed respectively to be the basis of
each of these six marks is famous, and would be recognized
by the purchasing public as identifying either Alberto
Vargas or Gil Elvgren, such that a connection with the
particular artist would be presumed. While there is no
doubt that many of the “nose art” paintings on the
fuselages of airplanes during World War II were inspired by
magazine and calendar “pin-up girl” art, and that Alberto
Ser. Nos. 76144075, 76144076, 76158198, 76165093, 76149868,
76149869 and 76173211
14
Vargas’ works in particular were widely copied therefor,
the record does not establish that either Alberto Vargas or
Gil Elvgren were sufficiently famous that consumers would
view applicant’s marks (in relation to applicant’s
identified goods), and presume a connection with the
respective artist.14 The fourth element of the test is not
met.
Inasmuch as the ex parte records here do not establish
that each of these six marks (for seven applications)
falsely suggests a connection with the pin-up art of
Alberto Vargas or that of Gil Elvgren, we must reverse.
See In re Los Angeles Police Revolver and Athletic Club,
Inc., 69 USPQ2d 1630 (TTAB 2003). See generally, 3 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §19:76 (4th ed. 2001).
14 Compare the case of Buffet v. Chi-Chi’s, Inc., supra, wherein
the Board denied applicant’s motion for summary judgment and
found genuine issues as to the elements of a Section 2(a) claim.
There was extensive evidence providing factual support “for
opposer’s allegations that the song ‘Margaritaville’ and [Jimmy]
Buffet are well-known and that Buffet has attempted, through his
commercial licensing program, publicity, and entertainment
services, to associate the term ‘MARGARITAVILLE’ with the public
persona of Jimmy Buffet.” 226 USPQ at 430.
Ser. Nos. 76144075, 76144076, 76158198, 76165093, 76149868,
76149869 and 76173211
15
Decision: The refusal to register under Section 2(a)
is reversed in each of the seven applications.15
15 We note, however, that if applicant ultimately submits a
statement of use in any of these seven applications, the
Examining Attorney would be free to consider the issue of whether
or not the marks function as trademarks for the involved goods
based on applicant’s manner of use of the mark(s) on any
specimen(s).