Dexter S. Kingv.Trace Publishing Co.

Trademark Trial and Appeal Board

Jul 15, 1999

No. 91096881 (T.T.A.B. Jul. 15, 1999)

Paper No. 23
ejs
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE TTAB
JULY 15, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Dexter S. King,
as agent for
the heirs of
Dr. Martin Luther King, Jr.
v.
Trace Publishing Co.
_____
Opposition No. 96,881
to application Serial No. 74/475,017
filed on December 29, 1993
_____
Miles J. Alexander of Kilpatrick Stockton LLP for Dexter S.
King, as agent for the heirs of Dr. Martin Luther King, Jr.
C. Emmett Pugh of Pugh/Associates for Trace Publishing Co.
______
Before Seeherman, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Dexter S. King, as agent for the heirs of Dr. Martin
Luther King, Jr., has filed an opposition to the
registration of the mark WE HAVE A DREAM for "promoting
sports competitions and/or events of others." This
application was filed by Trace Publishing Company on
Opposition No. 96,881
2
December 29, 1993, claiming a bona fide intention to use the
mark in commerce.1
The opposition has been brought on the grounds that
applicant’s use of the mark falsely suggests a connection
with Dr. Martin Luther King, Jr. (Section 2(a) of the
Trademark Act) and that it is likely to cause confusion
(Section 2(d) of the Trademark Act). Specifically, opposer
has alleged that since as early as August 28, 1963, when Dr.
Martin Luther King, Jr. delivered his "I Have A Dream"
speech at the Lincoln Memorial, the phrase and mark I HAVE A
DREAM have been unmistakably associated with and used to
identify Dr. King and goods and services sponsored or
approved by or affiliated with, Dr. King; that the mark was
used continuously by Dr. King and subsequently by the heirs
of Dr. King (hereafter the King Estate); that Dr. King
and/or the King Estate have used and continue to use the
mark for, inter alia, t-shirts, posters, pens, key chains,
letter openers, books and other printed materials,
statuettes, and educational services and charitable fund
raising; that the mark I HAVE A DREAM uniquely identifies
Dr. King and goods and services sponsored or approved by, or
affiliated with, Dr. King and the King Estate; that the mark
I HAVE A DREAM is unmistakably associated with and
identified with Dr. King, and points uniquely to him; that

1 Application Serial No. 74/475,017.
Opposition No. 96,881
3
applicant’s mark falsely suggests a connection with or
sponsorship by Dr. King; that the rights of the King Estate
were confirmed in a Georgia Supreme Court case which held
that Dr. King’s family and estate maintain the right to
control, preserve and extend his status and memory and to
prevent unauthorized exploitation thereof by others; that
Dr. King and the King Estate used the mark I HAVE A DREAM
since prior to the filing date of applicant’s application;
that applicant’s mark is substantially identical to the King
Estate’s mark; that the parties’ goods and services are
closely related; and that applicant’s use and registration
of WE HAVE A DREAM is likely to cause confusion, mistake and
deception.
In its answer to the notice of opposition, applicant
acknowledged that Dr. King gave a speech using the phrase "I
have a dream," but that this reference was not to any sports
competition but rather was within the context of a
political, civil rights speech about what he foresaw in the
political and social future for others. Applicant also
acknowledged that this political speech occurred before
applicant began using the mark WE HAVE A DREAM for promoting
sports competition and/or events of others.2 Applicant

2 We note that applicant’s application was based on an asserted
intention to use the mark and that, although applicant asserted
in its answer that the mark is in use, there is nothing in the
record to support this statement.
Opposition No. 96,881
4
otherwise denied the salient allegations of the notice of
opposition.
Only opposer filed a brief; an oral hearing was not
requested.
The record includes the pleadings and the file of the
opposed application. Opposer submitted, under notices of
reliance, various articles, taken from a computer data base,
which were published in periodical publications; portions of
a trademark application, Serial No. 75/019,950, filed by the
Estate of Martin Luther King, Jr., Inc.; and the complaints
and consent judgments from three civil actions in the U.S.
District Court for the Northern District of Georgia, one
brought by Dexter King, Coretta Scott King, Yolanda King,
Bernice King, and Martin Luther King, III, another brought
by the Estate of Martin Luther King, Jr., Inc., and a third
brought by The Martin Luther King, Jr. Center for Social
Change, Inc. and Mrs. Coretta Scott King, Administratrix of
the Estate of Dr. Martin Luther King, Jr., deceased, and
Motown Record Corporation. Applicant did not submit any
evidence.
As noted, the only evidence which has been submitted
has been in the form of articles and documents from official
records. The printed publications are probative only for
what they show on their face; they are not proof of the
statements made in the articles, since that would be
Opposition No. 96,881
5
hearsay. See Logicon, Inc. v. Logisticon, Inc., 205 USPQ
767 (TTAB 1980). Similarly, the official records are not
probative of the statements made in the records. See Jetzon
Tire & Rubber Corporation v. General Motors Corporation, 177
USPQ 467 (TTAB 1973). Thus, for example, the declarations
which are exhibits to the request for reconsideration in
Serial No. 75/019,950 cannot be considered in the manner of
testimony, i.e., that the statements contained in the
declaration evidence the facts asserted. To do otherwise
would conflict with the Trademark Rules of Practice
regarding the submission of evidence, which provide the
manner in which the testimony of witnesses may be taken.
See, for example, Trademark Rules 2.123 and 2.124. In
particular, to allow the declarations to substitute for the
testimony of the declarants as witnesses in this proceeding
would deprive applicant of the ability to cross-examine
those witnesses.
Turning first to the question of standing, we must
confess that we are surprised that opposer did not submit
any testimony to prove standing. Nevertheless, the record
shows that the estate filed an application to register I
HAVE A DREAM, and also brought various civil proceedings.
Further, because one of the grounds for opposition is a
false suggestion of a connection with Dr. King, the heirs of
Dr. King, by virtue of their status as heirs, have a
Opposition No. 96,881
6
demonstrable interest in this proceeding. Specifically, the
statutory ground of "false suggestion of a connection" is
akin, in part, to the right of publicity, which is an
inheritable right. See University of Notre Dame du Lac v.
J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Moreover, we are mindful of the Court's caution in West
Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122,
31 USPQ2d 1660 (Fed Cir. 1994), that individual pieces of
evidence must be taken together, so that the body of
evidence is viewed as a whole.
With respect to the ground of likelihood of confusion,
opposer has submitted no probative evidence of any use of
the mark I HAVE A DREAM. As we have previously stated, the
declarations in the application filed by the Estate of
Martin Luther King, Jr., Inc. are evidence only of the fact
that the materials were filed, but are incompetent as proof
of the statements made in the declarations. Accordingly,
opposer has not demonstrated priority of use, let alone use
on any goods or services which would form a basis for a
finding of likelihood of confusion.
This brings us to the ground of a false suggestion of a
connection under Section 2(a) of the Act. In order to
prevail on this ground, an opposer must demonstrate:
Opposition No. 96,881
7
(1) that the applicant’s mark is the
same or a close approximation of
opposer’s previously used name or
identity;
(2) that the mark would be recognized as
such;
(3) that the opposer is not connected
with the activities performed by the
applicant under the mark; and
(4) that the opposer’s name or identity
is of sufficient fame or reputation that
when the applicant’s mark is used on its
goods or services, a connection with the
opposer would be presumed.
Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985).
With respect to the first point, WE HAVE A DREAM is
clearly a close approximation of I HAVE A DREAM, which is
alleged by opposer to be the identity of Dr. Martin Luther
King, Jr.
The second point is whether applicant’s mark would be
recognized as Dr. King’s identity, that is, does the mark
point uniquely and unmistakably to Dr. King. See, In re
Sloppy Joe’s International Inc., 43 USPQ2d 1350 (TTAB 1997).
We note that applicant itself has acknowledged that Dr. King
was a "great political, civil rights leader," answer, ¶ 10,
and that he gave a speech using the phrase "I have a dream."
answer, ¶ 7. Moreover, we think it appropriate to take
judicial notice of the historical fact of his speech, and of
Opposition No. 96,881
8
The New Encyclopaedia Britannica entry3 on Martin Luther
King, Jr., which refers to the speech as "famous":
On Aug. 28, 1963, an interracial
assembly of more than 200,000 gathered
peaceably in the shadow of the Lincoln
Memorial to demand equal justice for all
citizens under the law. Here the crowds
were uplifted by the emotional strength
and prophetic quality of King’s famous
"I have a dream" speech, based on
biblical phraseology.
The fame of I HAVE A DREAM, and its association with
Dr. King, is reflected in the various articles made of
record by opposer. Although the articles are not proof of
the truth of the statements made therein, they are competent
to show how the authors perceive the connection between Dr.
King and I HAVE A DREAM, and how the authors believe the
public will perceive it.
The articles frequently make reference to Dr. King and
the phrase "I Have a Dream" or "We Have a Dream" in such a
manner that the authors clearly assume the connection is
obvious, and that the phrase and the person are inextricably
linked. Many of the articles reveal the authors’ belief
that no explanation that Dr. King gave the "I Have a Dream"
speech is necessary. See, for example, the following:
Honey Creek Elementary School pupils are
writing ideas to make the Rev. Martin
Luther King Jr.’s dream a reality.
Their completed works will be displayed
beneath a big "We Have A Dream" banner.

3 15th ed., © 1988.
Opposition No. 96,881
9
"Atlanta Journal and Constitution,"
Feb. 15, 1996
_________
More than a dozen youths followed in the
footsteps of civil rights leader Martin
Luther King Jr. yesterday, by holding a
peaceful protest at the town park on
Main Street.
And though their mission was not nearly
as monumental as King’s they looked to
him for inspiration. As they celebrated
his birthday with a day off from school,
the students carried picket signs
asserting the right to have fun in the
snow.
"We have a dream also: to play in the
park without being harassed," one sign
announced, borrowing a phrase from
King’s famous 1963 speech in Washington.
"Telegram & Gazette," (Worcester, MA),
Jan. 16, 1996
_________
Few people will ever forget the hot
August day in 1963 when civil-rights
leader the Rev. Dr. Martin Luther King
Jr. stood on the steps of the Lincoln
Memorial in Washington, D.C., and
delivered his trademark speech, "I Have
a Dream." "The Harrisburg Patriot,"
Jan. 14, 1995
_________
Multicultural events will be featured
during the week surrounding Martin
Luther King Jr. Day in Vancouver.
Clark County’s multicultural community
is sponsoring "We Have a Dream: A
Celebration of Harmony and Diversity"
Jan. 15-22…. "Portland Oregonian,"
Jan. 6, 1993
_________
King's Dream Still Lives in Marchers'
Hearts, Lives (Headline)
Opposition No. 96,881
10
"We have not forgotten him. We have a
dream, too--we want drug-free kids in
Eustis and everywhere else."
***
A group of teens performed a walking
street dance. Marchers occasionally
held up an arm, fist clenched, and
yelled, "Martin Luther King--Keep the
dream alive.!" "Orlando Sentinel,"
Jan. 19, 1992
A painting titled "We Have a Dream
Martin and I," inspired by Dr. Martin
Luther King Jr. and created by Michelle
Poole, will be on exhibit today through
Feb. 28 …. "The Arkansas Gazette,"
Feb. 1, 1991
_________
"We have a dream too," Jean Forbath,
executive director of SOS, told the
crowd, in reference to the Monday
holiday marking the birthday of slain
civil rights leader Dr. Martin Luther
King Jr. "Los Angeles Times," Jan. 14,
1990
In view of the foregoing, we find that applicant's mark
WE HAVE A DREAM points uniquely and unmistakably to the
identity or persona of Dr. Martin Luther King, Jr.
As for the third part of the test, opposer has pointed
out that the very fact that it has brought this proceeding
shows that opposer is not connected with the activities
proposed to be performed by applicant under the mark. Nor
is there any evidence in the record of an affiliation with
or sponsorship of applicant's proposed activities by Dr.
King or his heirs or assigns.
Finally, Dr. King's identity I HAVE A DREAM is clearly
of sufficient fame or reputation that, if applicant's mark
Opposition No. 96,881
11
were used on its identified services, a connection with Dr.
King would be presumed. As indicated above, an encyclopedia
has characterized Dr. King’s "I have a dream" speech as
famous. The newspaper articles which opposer has made of
record show not only a connection between I HAVE A DREAM and
Dr. King, but discuss how Dr. King’s heirs are approving the
licensing of merchandise bearing Dr. King’s image and words.
See, for example:
If that is the way we live now, who will
condemn the King estate for licensing
King-themed statuettes and checkbooks,
or for suing CBS News and USA Today for
using the "I Have a Dream" speech
without paying fees?" "The New Orleans
Times-Picayune," Sept. 2, 1997
_________
A nagging controversy over how Martin
Luther King Jr.’s family profits from
his legacy threatened to overshadow the
hometown events that mark the observance
of the national holiday that honors him
today.
Less than two weeks ago the King estate
signed a publishing deal for the slain
civil rights leader’s writings and
speeches that may earn the family $50
million during the next five years.
***
"Intellectual property is what my father
created," Dexter King said. "Because my
father owned no real property, his
intellectual property is especially
important as an asset." "Pittsburgh
Post-Gazette," Jan. 20, 1997
_________
The disagreement has toppled a sacred
cow that prevented the King family from
being publicly criticized. Now they
also are being attacked for how they
Opposition No. 96,881
12
have profited from their exclusive
rights to King’s name and likeness.
That includes licensing fees, the
selling of the "I Have a Dream" speech
and price tags for family interviews.
"Austin American-Statesman," Jan. 16,
1995
While, again, the articles are not proof of the truth
of the statements made in them, they do show that the public
has been exposed to the statements. See Kabushiki Kaisha
Hattori Seiko v. Satellite International Ltd., 29 USPQ2d
1317 (TTAB 1991); American Paging Inc. v. American
Mobilphone Inc., 13 USPQ2d 2036 (TTAB 1989), aff’d unpub.
opin., 17 USPQ2d 1726 (Fed. Cir. 1990). In addition, it is
common knowledge that in the United States today licensing
is widespread and the names and likenesses of celebrities,
both living and dead, are frequently used in connection with
the advertising and sale of goods and services. See, e.g.,
In re Phillips-Van Heuson Corp., 228 USPQ 949 (TTAB 1986).
As a result of the public’s exposure to the newspaper
references to Dr. King’s heirs’ licensing activities,
combined with the general merchandising climate, consumers
are likely to presume a connection between applicant’s use
of WE HAVE A DREAM for promoting sports competitions and/or
events of others, and I HAVE A DREAM, the identity of Dr.
Martin Luther King, Jr.
Opposition No. 96,881
13
Accordingly, we find that opposer has established that
applicant’s mark consists of matter which may falsely
suggest a connection with Dr. Martin Luther King, Jr.
Opposition No. 96,881
14
Decision: The opposition is sustained on the ground of
false suggestion of a connection and dismissed on the ground
of likelihood of confusion.
E. J. Seeherman
T. J. Quinn
G. D. Hohein
Administrative Trademark Judges
Trademark Trial and Appeal Board