Indian Nation Leather Co.

Trademark Trial and Appeal Board

Jun 3, 1997

EX (T.T.A.B. Jun. 3, 1997)

THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB June 3, 1997
Paper No. 17
AKP/EWH
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Indian Nation Leather company
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Serial No. 74/294,182
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Mark G. Kachigian of Head & Johnson, P.A. for Indian Nation
Leather Company
Ari Leifman, Trademark Examining Attorney, Law Office 102
(Myra K. Kurzbard, Managing Attorney)
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Before Simms, Hanak and Hohein, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Indian Nation Leather Company (applicant) seeks to
register INDIAN NATION LEATHER CO. and design in the form
shown below for "wholesale distributorship and mail-order
services for equestrian equipment, namely: saddles, bridles,
bits, brushes, billets, bell boots, cinches, curry combs,
flank sets, halter, rasp, spurs, whips, latigos, leads,
shipping boots, punches, splint boots, pads, blankets and
Ser No. 74/294,182
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veterinarian supplies." The application was filed on July
14, 1992 with a claimed first use date of December 1986. In
response to the first office action, applicant disclaimed
the exclusive right to use LEATHER CO. apart from the mark
as shown. In response to the fifth office action, applicant
expanded its disclaimer to disclaim the exclusive right to
use INDIAN NATION LEATHER CO. apart from the mark as shown.

After a lengthy examination process spanning four years
and involving various grounds of refusal, the Examining
Attorney finally refused registration on two grounds.
First, the Examining Attorney refused registration pursuant
to Section 2(a) of the Lanham Trademark Act because of the
Examining Attorney's belief that the mark consists of
"matter which falsely suggests a connection with persons,
namely, Native American persons." (Examining Attorney's
brief page 1). Second, the Examining Attorney refused
Ser No. 74/294,182
3
registration "on the further ground that the use of the mark
in connection with the services violated the Federal Indian
Arts and Crafts Act, 18 U.S.C Section 1159(a), and that in
view of this, the applicant could not assert lawful use of
the mark in commerce under Trademark Act Sections 1 and 45."
(Examining Attorney's brief page 1).
In order to be properly refused registration
pursuant to Section 2(a), the mark in question "must point
uniquely to" persons, living or dead, institutions, beliefs,
or national symbols. The University of Notre Dame v. J. C.
Food Imports, 703 F. 2d 1372, 217 USPQ 505, 509 (Fed. Cir.
1983).
The Examining Attorney has simply failed to demonstrate
that the applied for mark violates Section 2(a) for at least
two reasons. First, the Examining Attorney has not
established that the term "Indian Nation" is recognized as
referring uniquely to specific persons, and in particular,
to use the Examining Attorney's own words, "Native American
persons." The Examining Attorney argues that "the literal
portion of the mark includes INDIAN -- a term frequently
used to denote Native Americans." (Examining Attorney's
brief page 4). However, while there is evidence to indicate
that some tribes of American Indians are refered to by their
tribal name followed by the term "Indian Nation" (i.e.
Yakima Indian Nation), there is no evidence to indicate that
American Indians in general are referred to as to the Indian
Nation.
Ser No. 74/294,182
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Second, applicant has made of record substantial
evidence showing that the State of Oklahoma is still
occasionally referred to as the Indian Nation, and that more
commonly, that the central and eastern regions of Oklahoma
are known as the Indian Nation. Applicant has made of
record a list of dozens of companies operating in Oklahoma
whose names begin with the term INDIAN NATION. These
include Indian Nation Power, Indian Nation Fuel, Indian
Nation Gas Supply, Indian Nation Aviation, Indian Nation
Energy and many others. In addition, applicant has made of
record evidence demonstrating that there is an Indian Nation
Council of Governments which has no connection with Native
Americans, but instead is a planning committee for the City
of Tulsa and surrounding communities. Finally, applicant
has demonstrated that there is a turnpike in eastern
Oklahoma called the Indian Nation Turnpike, and that this
turnpike derives its name from the geographic region where
it is located, much like the Ohio Turnpike or the
Pennsylvania Turnpike.
The Examining Attorney has even conceded that "a
plausible reading of [applicant's] evidence" demonstrates
"that INDIAN NATION designates a geographic region."
(Examining Attorney's brief page 9).
Thus, even if we were to assume for the sake of
argument that the Examining Attorney established that the
term INDIAN NATION referred to all Native Americans (which
he did not), the Examining Attorney still did not establish
Ser No. 74/294,182
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that the term INDIAN NATION "points uniquely" to Native
Americans. The Examining Attorney has conceded that INDIAN
NATION designates a geographic region. Indeed, it is in
this very geographic region were applicant's Langley,
Oklahoma headquarters are located.
We will consider next the Examining Attorney's
contention that applicant's use of its mark is unlawful
because it purportedly violates the aforementioned Indian
Arts and Crafts Act. According to the Examining Attorney,
that Act reads, in part, as follows: "It is unlawful to
offer or display or sell any good, with or without a
government trademark, in a manner that falsely suggests it
is Indian produced, an Indian product, or the product of a
particular Indian tribe or Indian arts and crafts
organization, resident within the United States."
(Examining Attorney's brief page 16).
This Board has held that "in trying to determine
whether use of a mark is lawful under one or more of the
myriad regulatory acts, [the better practice] is to hold a
use in commerce unlawful only when the issue of compliance
has previously been determined (with a finding of non-
compliance) by a court or government agency having competent
jurisdiction under the statute involved, or where there has
been a per se violation of a statute regarding the sale of a
party's goods." Kellogg Co. v. New Generation Foods, 6
USPQ2d 2045, 2047 (TTAB 1988). See also 2 J. McCarthy,
McCarthy on Trademarks and Unfair Competition Section 19:124
Ser No. 74/294,182
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at page 19-216 (4th ed. 1996). It should be noted that the
holding of New Generation Foods is specifically referenced
in Section 907 of the Trademark Manual of Examining
Procedure (2d ed. 1993).
The Examining Attorney has never contended that
applicant's use for over ten years of its mark has ever been
determined "by a court or government agency having competent
jurisdiction" to be unlawful.
As for applicant's use constituting a possible "per se
violation of a statute," we note that this ground of refusal
was very belatedly raised for the first time in Office
Action No. 5 of November 28, 1994 when the Examining
Attorney stated that the "use of [applicant's] mark would
appear not to meet the requirements of the Indian Arts and
Crafts Act," and "that registration of the applicant's mark
may be barred by the Indian Arts and Crafts Act." (Office
Action No. 5 page 2, emphasis added). We find that use of
applicant's mark by no means constitutes a per se violation
of any statute, if indeed, it constitutes any violation of
any statute. Indeed, given the geographic significance of
the phrase INDIAN NATION, and the fact that applicant is
located within that geographic region, it would appear that
the word portion of applicant's mark (which has been
disclaimed in its entirety) aptly describes applicant,
namely, a LEATHER CO. located in the INDIAN NATION (i.e.
central to eastern Oklahoma).
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Decision: The refusal to register on both grounds is
reversed.
R. L. Simms
E. W. Hanak
G. D. Hohein
Trademark Administrative
Judges, Trademark Trial
and Appeal Board