North American Free Trade Association

Trademark Trial and Appeal Board

Jun 10, 1997

EX (T.T.A.B. Jun. 10, 1997)

THIS OPINION IS
CITABLE AS PRECEDENT OF THE TTAB June 10, 1997
Hearing: Paper No. 27
April 24, 1996 EJS
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re North American Free Trade Association
________
Serial No. 74/179,335
_______
Robert T. Maguire and Joel Rogers of Ablondi, Foster, Sobin
& Davidow, P.C. for North American Free Trade Association
Vivian Micznik First, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney)
_______
Before Simms, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
North American Free Trade Association, a corporation of
the District of Columbia, applied to register the mark NAFTA
and design, as shown below, for services which were
subsequently amended to "promotion of trade and investment
among the United States, Canada, Mexico and other countries;
providing information and consultation to members regarding
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2
the issues and effects of a free trade area on their
investments."1

A final refusal was ultimately issued pursuant to Section
2(a) of the Trademark Act, 15 U.S.C. 1052(a), on the ground
that applicant's mark consists of or comprises matter which
may falsely suggest a connection with the North American
Free Trade Agreement, which is known by the acronym NAFTA.
In addition, the Examining Attorney has made final a
requirement for a disclaimer of exclusive rights to "NAFTA"
pursuant to Section 6 of the Trademark Act, 15 U.S.C. 1056,
should the mark be determined to be otherwise registrable.
It is from this final refusal and final requirement
that applicant has appealed. The case was fully briefed,
and an oral hearing was held before the Board.
Section 2(a) prohibits, inter alia, the registration of
a mark if it "consists of or comprises...matter which

1 Application Serial No. 74/179,335, filed June 24, 1991, and
asserting first use on March 28, 1991 and first use in
interstate commerce on May 1, 1991.
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3
may...falsely suggest a connection with persons, living or
dead, institutions, beliefs, or national symbols...." As
the Court explained in The University of Notre Dame du Lac
v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217
USPQ 505, 508 (Fed. Cir. 1983), Section 2(a) was designed to
protect "the name of an individual or institution which was
not a technical 'trademark' or 'trade name' upon which an
objection could be made under Section 2(d)." Further, the
court stated that Section 2(a) embraces the concepts of the
right to privacy and the related right of publicity. 217
USPQ at 509.
This Board, in In re Cotter & Co., 228 USPQ 202, 204
(TTAB 1985), delineated what was required of the Office to
support a refusal under the "falsely suggests a connection"
clause of Section 2(a):
...it is the Examining Attorney's burden
to show that the mark sought to be
registered is unmistakably associated
with a particular "persona." In order
to do this, an Examining Attorney must
show that the mark sought to be
registered is the same or a close
approximation of the name or identity of
a person, living or dead, or of an
institution and that it would be
recognized as such. It must also be
clear that the person or institution
identified by the mark is not connected
with the goods or services performed by
applicant under the mark. Finally, it
must be shown that the fame or
reputation of the named person or
institution is of such a nature that a
connection with such person or
institution would be presumed when the
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4
applicant's mark is used on its goods or
services.
See also, In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB
1990.)
Moreover, in In re Nuclear Research Corp., supra, the
Board stated that the phrase "falsely suggest a connection
with" requires, by implication, that the person or
institution with whom a connection is suggested must be the
prior user.
There is no question that NAFTA is an acronym for a
treaty called the "North American Free Trade Agreement."
See Acronyms, Initialisms & Abbreviations Dictionary (1993)
made of record by the Examining Attorney. The term NAFTA
has also received widespread publicity, as is shown by the
excerpts from various articles made of record by the
Examining Attorney, some of which we quote below:
One day after Democratic presidential
candidate Bill Clinton endorsed the
North American Free Trade Agreement with
reservations, an administration official
said Oct. 5 that it would be "very
difficult" to have a viable NAFTA under
a Democratic administration.
Speaking at a Border Trade Alliance on
NAFTA....
"Daily Report for Executives," Oct. 6,
1992
***
NAFTA ERODES U.S. POWER OF SELF-RULE
(headline)
...but under NAFTA local power will be
drastically reduced even further....
"The Phoenix Gazette," Nov. 5, 1993
Ser No. 74/179,335
5
***
NAFTA expectations and reservations
(headline)
They could expect Carol Browner's
Environmental Protection Agency to have
something to say about it, and NAFTA
will provide the excuse.
"The Washington Times," Oct. 26, 1993
***
How Green Is NAFTA? Two
environmentalists--one pro, one con--
take on the treaty (headline)
...negotiated for NAFTA are very strong.
There's a five-step process.
"The San Francisco Chronicle," Oct. 24,
1993
...NAFTA, the trade treaty that has
become a major test of his presidency,
was coming up for a vote in Congress on
Nov. 17.... ...and the unions were
clobbering NAFTA with TV ads. How,
Clinton and Gore wondered, do they sell
NAFTA?
"Newsweek," Nov. 15, 1993
***
The "Newsweek" article points out that NAFTA was a
major issue for President Clinton during the 1994
Congressional election campaign; as a result, most Americans
would be aware of this term. The fact that many of the
articles refer to "NAFTA" in their headlines, and the
"Newsweek" article refers only to "NAFTA," without any
mention of the entire phrase "North American Free Trade
Agreement," supports the view that the term NAFTA is
recognized by the public at large. Moreover, applicant has
acknowledged that the press and the U.S. government use the
Ser No. 74/179,335
6
acronym NAFTA to identify and discuss the trade agreement.
Brief, p. 7.
While applicant's mark also includes the design of a
globe, this does not avoid the commercial impression that
the mark is the same as or a close approximation of the
NAFTA treaty. One cannot overcome a refusal based on a
false suggestion of a connection merely by adding a design
element to an entity or institution's identity; in this
case, moreover, the design which applicant has adopted
reinforces that the mark will be identified with the NAFTA
treaty because it depicts the three countries which are the
parties to the agreement.
Thus, with respect to the requirement that the Office
show the mark sought to be registered is the same or a close
approximation of the name or identity of a person or of an
institution and that it would be recognized as such, we have
no doubt that applicant's mark would be recognized by both
the general public and the specialized business audience
which are the asserted consumers of applicant's services as
the name or identity of the North American Free Trade
Agreement.
Applicant has pointed out that the Trademark Act refers
to a false suggestion of a connection with a person or
institution, and argues that Section 2(a) cannot apply in
this case because NAFTA is a treaty. While applicant
recognizes that the term "institution" as used in Section
2(a) has been found to encompass universities, fraternal
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7
organizations and professional organizations, brief, p.5,
applicant argues that a trade agreement or treaty should not
be considered an institution, and to do so would result in
an institution being created whenever persons or
institutions enter into a contract.
NAFTA is not merely a contract or agreement. Rather, it
is an original treaty, with three supplemental agreements,
between the United States, Canada and Mexico, which sets up
a series of relationships between these countries on a
number of issues ranging from trade to environmental
concerns. Moreover, NAFTA provides for the establishment of
a Free Trade Commission,2 a Secretariat,3 committees and
working groups,4 binational panels,5 as well as the
establishment of permanent offices in each country. The
treaty further provides that the commissions, etc. are to
support the work of committees and groups established under
NAFTA and resolve disputes between the parties to the
agreement.
The totality of NAFTA, thus, is not merely a contract,
but it is the treaty, the supplemental agreements, and the
various commissions, committees, offices, etc. which are
established by those documents. When viewed as this
totality, we find that NAFTA qualifies as an "institution"

2 See Chapter Twenty, Article 2001(1).
3 See, for example, Chapter Twenty, Article 2002.
4 See, generally, Annex 2001.2.
5 See, generally, Chapter 19.
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8
within the meaning of Section 2(a) of the Trademark Act.6
In stating this, we are mindful of the legislative history
which indicates that the reference to an "institution" in
Section 2(a) was designed to have an expansive scope. See
Hearings on H.R. 4744 Before the Subcomm. on Trademarks of
the House Comm. on Patents, 76th Cong., 1st Sess., (1939),
included as an appendix to University of Notre Dame v. J.C.
Food Imports, supra at 217 USPQ 510, 512.7

6 We also take judicial notice of the Black's Law Dictionary
(5th ed. © 1979) definition of "institution" quoted by the
Examining Attorney in her brief:
Political law. A law, rite, or ceremony enjoined by
authority as a permanent rule of conduct or of
government. An organized society, established either
by law or the authority of individuals, for promoting
any object public or social.
A system or body of usages, laws, or regulations, of
extensive and recurring operation, containing within
itself an organism by which it effects its own
independent action, continuance, and generally its
own further development. Its object is to generate,
effect, regulate, or sanction a succession of acts,
transactions, or productions of a peculiar kind or
class. We are likewise in the habit of calling
single laws or usages "institutions," if their
operation is of vital importance and vast scope, and
if their continuance is in a high degree independent
of any interfering power.
(The Board may take judicial notice of dictionary
definitions. Marcal Paper Mills, Inc. v. American Can Co., 212
USPQ 852 (TTAB 1981).
The NAFTA treaty not only provides for the establishment of a
Secretariat, regional offices, committees, working groups and
the like, but it engendered further implementing legislation
passed by Congress, and Executive Orders issued by the
President.
7 We note applicant's position that the legislative history
"shows that the term 'institution' was included strictly for the
purpose of protecting 'fraternal societies and organizations.'"
Reply brief, p. 4. However, although a treaty such as NAFTA was
not specifically mentioned during this discussion, it is our
view that the term "institution" was included so that Section
2(a) would have an expansive scope.
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9
Applicant argues that its NAFTA and design mark is not
unmistakenly associated with another institution because it
does not point uniquely to an institution. That is,
applicant argues that NAFTA does not only identify a
particular NAFTA commission nor does it only identify one of
the signatories to the agreement. We are not persuaded by
this argument. NAFTA, as we have previously stated, refers
to the totality of the agreement, including the various
commissions and offices established by it. It is this
institution to which the term NAFTA points uniquely. NAFTA
is an institution, in the same way that the United Nations
is an institution. The United Nations was created by treaty
to which different sovereign entities are signatories, and
has various governing bodies such as a Secretariat and
General Assembly, agencies which carry out specific tasks,
and even armed forces.
We would also point out that, unlike Notre Dame, where
Notre Dame was associated not only with the University, but
identified a famous and sacred religious figure and was used
in the names of churches dedicated to Notre Dame, such as
the Cathedral in Paris, in this case NAFTA does not have a
variety of well-known meanings.
This brings us to the requirement that the institution
identified by the mark is not connected with the goods or
services performed by applicant under the mark. Clearly the
Office has met its burden with respect to this requirement.
Ser No. 74/179,335
10
Applicant does not claim that it is part of, or established
by, the NAFTA treaty.
The next requirement is that a connection with the
NAFTA institution would be presumed when applicant's mark is
used with its services. Applicant's services are "promotion
of trade and investment among the United States, Canada,
Mexico and other countries; providing information and
consultation to members regarding the issues and effects of
a free trade area on their investments." These services are
closely related to the activities performed under the NAFTA
agreement, the preamble of which states that the United
States, Canada and Mexico are resolved to, inter alia:
create an expanded and secure market for
the goods and services produced in their
territories;
establish clear and mutually
advantageous rules governing their
trade;
ensure a predictable commercial
framework for business planning and
investment; and
enhance the competitiveness of their
firms in global markets.
In addition, the NAFTA treaty establishes, inter alia,
a Secretariat to facilitate the operation of the agreement
(Article 2002); committees such as the Committee on Trade in
Goods, which addresses issues related to movement of goods
through the three countries' ports of entry (Article 316);
and working groups such as the Working Group on Trade and
Competition, which makes recommendations on issues
Ser No. 74/179,335
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concerning the relationship between competition laws and
policies and trade in the free trade area. (Article 1504).
Given these similarities in the activities performed under
NAFTA, and applicant's own activities, we find that a
connection between applicant's activities and the
institution of NAFTA would be presumed when applicant uses
the mark NAFTA and design in connection with its services.
Applicant argues that it performs its services for its
members, who are sophisticated international business
persons. While applicant acknowledges that these people
know that NAFTA is used by the press and the government to
identify the trade agreement, it asserts that they would
know that NAFTA and design, as applied to the services
obtained from applicant, indicates the services of
applicant. Applicant further explains that these
sophisticated consumers would realize that the NAFTA treaty
does not provide information services regarding the effects
of a free trade area on investments, and that they, as well
as the general public, would realize that only the three
government signatories to the NAFTA treaty have standing to
negotiate changes to the agreement.
We do not find applicant's arguments to be persuasive.
The question is not whether its members, after learning who
applicant is and what it does, realize that applicant is not
connected with the NAFTA institution, but whether, upon
seeing the trademark used in connection with applicant's
services, the potential consumers of such services are
Ser No. 74/179,335
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likely to believe that there is a connection. Because of
the number of committees, working groups and the like which
are established by the treaty, even sophisticated business
people may believe, when viewing the mark NAFTA and design
in connection with the identified services, that applicant
has been established pursuant to the treaty to facilitate
trading and investment in the free trade area created by the
treaty. Or they may believe that applicant's services are
sponsored or approved by one of the NAFTA Commissions,
committees, working groups, etc. Thus, even if they later
learn that applicant is not connected with the NAFTA treaty,
they may become members of applicant because of the false
suggestion of a connection conveyed by applicant's mark.
Moreover, applicant's identified services include
"promotion of trade and investment among the United States,
Canada, Mexico and other countries," without any limitation
as to its customers. Such services could be rendered to the
public at large, e.g., ordinary investors and small
businesses which do not have the asserted sophistication of
applicant's members.
Applicant recognizes that "the Notre Dame case, supra,
states that even if there is no presumed connection between
the free trade agreement and the Association's services,
§ 2(a) can be violated if the evidence shows that the
applicant intended such a violation." Brief, p. 8. See
Notre Dame, supra at 217 USPQ at 509, "Evidence of such
intent would be highly persuasive that the public will make
Ser No. 74/179,335
13
the intended false association." Although applicant asserts
that there is no evidence to indicate such an intent by
applicant, we note that applicant's very name, North
American Free Trade Association, is almost identical to the
North American Free Trade Agreement, and that at the time
applicant filed its reservation of name, and adopted its
mark, applicant was well aware that NAFTA referred to the
North American Free Trade Agreement. In fact, applicant
proudly states that its executives played a role "in the
creation of a North American free trade agreement," and that
its president testified before Congress in support of such
an agreement. Brief, p. 4. Applicant's knowledge of the
proposed treaty provides the evidence of applicant's intent
in adopting its mark to identify the NAFTA treaty.
Finally, we turn to the "implicit" requirement that the
person or institution with whom a connection is suggested
must be the prior user of the term. Applicant asserts that
its use of its mark predates the NAFTA agreements, and
predates the use of the globe design on the Supplemental
NAFTA agreements.8 Applicant claims that it has used its
mark since at least May 1, 1991.9 However, the United

8 As previously discussed, our conclusion that applicant's mark
is the same or a close approximation of the institution of NAFTA
was based on the inclusion in applicant's mark of the term
NAFTA; thus, even if applicant can prove prior user of the globe
design, this would not affect our decision herein.
9 Applicant has submitted with its brief a letter dated May 1,
1991 showing use of its mark on its stationery. While applicant
claims that this exhibit had been submitted with its original
application "dated May 29, 1991," the original application
papers were signed on June 24, 1991, and the application was
filed on that date. Moreover, this letter was not submitted
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States government was using the term NAFTA to refer to a
proposed North American Free Trade Agreement prior to that
date. On March 1, 1991 President Bush submitted a report to
Congress requesting the extension of fast track procedures
to facilitate passage of certain foreign trade legislation.
That report includes the following statement:
North American FTA. We have a historic
opportunity to achieve a North American
Free Trade Agreement (NAFTA) with Canada
and Mexico. ... Building on those
reforms and on the existing FTA we have
with Canada, we can create a NAFTA that
encompasses some 360 million people with
almost $6 trillion in output. A
comprehensive NAFTA will create growth
and better jobs in all three countries,
and will make us more competitive in the
global marketplace.
We recognize that the NAFTA treaty was not entered into
until December 17, 1992, was not submitted to Congress until
November 3, 1993, and was not formally approved by Congress
until December 8, 1993. All of these dates were subsequent
to applicant's claimed date of first use and the filing of
its application. However, neither the date of execution of
a treaty, nor the date it becomes effective, should be
regarded as the date it acquires its identity. It is common
knowledge that, when it comes to governmental activities,

with the original application (a blank piece of letterhead was
filed). Because the May 1, 1991 letter was not made of record
during the prosecution of the application, it cannot be
considered at this point. In any event, whether we consider the
dates of commerce claimed in the application or the application
filing date as evidencing applicant's first use, it is clear, as
will be discussed above, that applicant's use of NAFTA does not
predate the use of the acronym NAFTA for the treaty.
Ser No. 74/179,335
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substantial time may elapse from the moment an action is
first proposed until it comes to fruition. During the
interim negotiation and discussion period, however, the name
that is used for, e.g., an Executive Department or Agency,
or a treaty, can receive substantial publicity and as a
result it achieves an identity, or persona. That is what
occurred with the NAFTA treaty. (Again, we point out that
the fact applicant chose the name North American Free Trade
Association, and used the mark NAFTA and design, months
after the President of the United States proposed a North
American Free Trade Agreement, indicates that the NAFTA
treaty had achieved such an identity, and that applicant
intended, by choosing its mark, that the public would make a
false association with the institution of NAFTA.)
This case differs from In re Nuclear Research Corp., 16
USPQ2d 1317 (TTAB 1990), in which the Board found that the
applicant in that case had used the letters NRC long before
the inception of the U.S. Nuclear Regulatory Commission. As
we have already noted, applicant was well aware of the
proposal for a North American Free Trade Agreement, which
was being identified by the acronym NAFTA, at the time it
first used its mark.
Accordingly, we find that the Patent and Trademark
Office has met its burden of proving that applicant's mark
NAFTA and design falsely suggests a connection with the
North American Free Trade Agreement, and we affirm the
refusal on this ground.
Ser No. 74/179,335
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In view of this finding, the requirement for a
disclaimer of NAFTA is moot, since that requirement was made
only if the mark was otherwise found registrable. However,
in order to render an opinion on all issues, we hereby
affirm this requirement. The term NAFTA in applicant's mark
is merely descriptive of applicant's services.
Specifically, the evidence shows that NAFTA is an acronym
for the North American Free Trade Agreement, and applicant's
identified services are the promotion of trade and
investment in the countries which are signatory to that
trade agreement, and the providing of advice regarding
investments with respect to the free trade area. Therefore,
NAFTA is merely descriptive of applicant's services, and
must be disclaimed pursuant to Section 6 of the Trademark
Act. Applicant's arguments that NAFTA might have any number
of meanings are, to say the least, not persuasive.
Applicant has previously acknowledged that the press and
government refer to the North American Free Trade Agreement
by the acronym NAFTA, and the evidence which is of record
shows that this term is well-known to the general public.
Applicant's suggestions that the term NAFTA in its mark
could refer to services involving North Atlantic free trade
or North American Feather Trading would require that the
mark be viewed in a vacuum. However, it is well established
that the question of whether a term in merely descriptive
must be viewed in the context of the identified services.
Moreover, applicant would have us consider the term NAFTA
Ser No. 74/179,335
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per se, without the context of the entire mark, which
includes the globe design featuring North America. The
meaning that consumers will ascribe to the term can be
affected by the other material, and in this case the design
reinforces that NAFTA is a reference to the treaty.
Decision: The refusal pursuant to Section 2(a) is
affirmed. Further, even if applicant's mark were otherwise
to be held registrable, the requirement for a disclaimer of
NAFTA is affirmed.
R. L. Simms
E. J. Seeherman
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board