G&R Brands, LLC

Trademark Trial and Appeal Board

Nov 21, 2008

No. 77011920 (T.T.A.B. Nov. 21, 2008)

Mailed:
November 21, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re G&R Brands, LLC
________

Serial No. 77011920
_______

Dana B. Robinson of Dana Robinson & Associates for G&R
Brands, LLC.

Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Grendel, Taylor and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On October 2, 2006, applicant G&R Brands LLC filed an
application under Trademark Act Section 1(b), 15 U.S.C. §
1051(b), for registration of the mark MOJAVE in standard
character form on the Principal Register for goods
ultimately identified as “Absorbent paper for tobacco
pipes; Asian long tobacco pipe sheaths; Asian long tobacco
pipes (kiseru); Cigar bands; Cigar boxes not of precious
THIS OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.
Serial No. 77011920
2
metal; Cigar cutters; Cigar humidifiers; Cigar tubes;
Cigarette ash receptacles; Cigarette cases, not of precious
metal; Cigarette holders, not of precious metal; Cigarette
lighters not for land vehicles; Cigarette lighters not of
precious metal; Cigarette papers; Cigarette rolling
machines; Cigarette rolling papers; Cigarette tubes;
Cigarettes; Cigarettes containing tobacco substitutes not
for medical purposes; Cigars; Filter-tipped cigarettes;
Hand-rolling tobacco; Hookahs; Lighters for smokers;
Machines allowing smokers to make cigarettes by themselves;
Mentholated pipes; Non-electric cigar lighters not of
precious metal; Pipe pouches; Pipe tampers; Pipe tobacco;
Pocket apparatus for rolling cigarettes; Pocket apparatus
for self-rolling cigarettes; Pocket appliances for rolling
one's own cigarettes; Roll your own tobacco; Smokeless
tobacco; Smoking pipe cleaners; Smoking pipes; Smoking
tobacco; Tobacco; Tobacco filters; Tobacco grinders;
Tobacco pipe cleaners; Tobacco pipes; Tobacco pouches;
Tobacco substitutes; Hookah pipes; charcoal for use with
hookah pipes; and accessories related to tobacco and hookah
pipes, namely, replacement stems, hookah hoses, hookah
bases, tobacco bowls, charcoal tongs, plastic hose tips,
hookah foil, wind covers, charcoal screens, flip caps, hose
Serial No. 77011920
3
plugs, base protectors, grommet sets, charcoal holders;
Tobacco tins,” in International Class 34.
The examining attorney refused registration of
applicant's mark 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 falsely suggests a
connection with the Fort Mojave Indian Tribe of Arizona,
California & Nevada, a federally-recognized Indian tribe.
Applicant has appealed the final refusal of its
application. Both applicant and the examining attorney
have filed briefs. We affirm the refusal to register.
Trademark Act Section 2(a) states, in relevant part,
No trademark by which the goods of the applicant
may be distinguished from the goods of others
shall be refused registration on the principal
register on account of its nature unless it - (a)
consists of or comprises… matter which may
disparage or falsely suggest a connection with
persons living or dead, institutions, beliefs, or
national symbols, or bring them into contempt or
disrepute.

In 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 Court of Appeals for the Federal Circuit stated
that to succeed on a Section 2(a) false suggestion of a
connection ground, the plaintiff must demonstrate that the
name or equivalent thereof claimed to be appropriated by
another must be unmistakably associated with a particular
Serial No. 77011920
4
personality or “persona” and must point uniquely to the
plaintiff. The Board, in Buffett v. Chi-Chi's, Inc., 226
USPQ 428 (TTAB 1985), in accordance with the principles set
forth in Notre Dame, required that the following four
elements be satisfied in order to establish a false
suggestion of a connection under Trademark Act Section
2(a):
(i) that the defendant's mark is the same or a
close approximation of plaintiff's previously
used name or identity; (ii) that the mark would
be recognized as such; (iii) that the plaintiff
is not connected with the activities performed by
the defendant under the mark; and (iv) that the
plaintiff's name or identity is of sufficient
fame or reputation that when the defendant's mark
is used on the goods or services, a connection
with the plaintiff would be presumed.

Id. at 429.
In this ex parte proceeding, it is the Office which
must establish the elements relating to the “plaintiff's”
name, which is the name with which the examining attorney
asserts the applicant's mark falsely suggests a connection.
Accordingly, we examine the arguments and evidence
submitted by applicant and the examining attorney for each
of the four Buffett elements.
(i) The Office must prove that the defendant's
mark is the same or a close approximation
of plaintiff's previously used name or
identity.

Serial No. 77011920
5
Applicant argues that its mark, consisting solely
of the word “MOJAVE,” is not “the same or a close
approximation” of the much longer term Fort Mojave
Indian Tribe of Arizona, California & Nevada. The
examining attorney, however, argues that the tribe is
also known as “Mojave,” and that therefore applicant’s
mark is indeed the same or a close approximation of
the name of the tribe. To support its argument, the
examining attorney submitted dictionary definitions of
the word “Mojave” as follows:
“1. a) A Native American people inhabiting lands
along the lower Colorado River on the Arizona-
California border; b) a member of this people.
2. The Yuman language of the Mohave.” American
Heritage Dictionary of the English Language (3d
ed. 1992).

“1. A member of a North American Indian tribe
belonging to the Yuman linguistic family,
formerly located in the Colorado River Valley of
Arizona and California. 2. Of or pertaining to
the Mohave tribe.” Dictionary.com.

“1. Member of Native N. American People: A member
of the Native North American people who lived
along the Colorado River Valley on the border
between California and Arizona. 2. Native N.
American Language: The language of the Mohave
people. It belongs to the Yuman branch of the
Hokan-Siouan languages.” Encarta Dictionaries
(Encarta.msn.com/dictionaries).

To establish a 2(a) refusal, the examining
attorney need not show that applicant’s mark is the
actual, legal name of the tribe. See Buffett v. Chi-
Serial No. 77011920
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Chi’s, 226 USPQ at 429 (holding MARGARITAVILLE for
restaurant services to be the persona of singer Jimmy
Buffett). The Board has held that “an applicant
cannot take a significant element of the name of
another and avoid a refusal by leaving one or more
elements behind, provided that that which has been
taken still would be unmistakably associated with the
other person.” In re White, 80 USPQ2d 1654, 1658
(TTAB 2006), internal cites omitted (holding that
MOHAWK for cigarettes falsely suggested an association
with the St. Regis Band of Mohawk Indians of New
York). Dictionary evidence may be sufficient to
establish the connection. In re Cotter & Co., 228
USPQ 202, 204 (TTAB 1985) (holding that WESTPOINT for
various firearms created a false association with the
Westpoint military academy, based on dictionary
definitions). The examining attorney here has also
provided corroborating encyclopedic evidence from
“Tiller’s Guide to Indian Country: Economic Profiles
of American Indian Reservations” (BowArrow Pub. 2005)
and the Intertribal Council of Arizona
(itcaonline.com/tribes_mojave.html), both referring to
the tribe interchangeably by its full legal name, and
simply as “Mojave.” We find this evidence establishes
Serial No. 77011920
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that “MOJAVE” is the same or a close approximation of
the Fort Mojave Indian Tribe of Arizona, California &
Nevada.

(ii) The Office must prove that the mark would
be recognized as such.

As suggested by its legal name, the federally-
designated reservation of the Fort Mojave Indian Tribe
of Arizona, California, and Nevada encompasses
portions of each of those three states. (Tiller at
412). Accordingly, it is not surprising that areas
within and adjacent to the reservation in the three
states bear the name “Mojave.” Among these, as
applicant points out, are the Mojave Desert; the
Mojave Valley; the Mojave River; Mojave County,
Arizona; and Mojave, California. However, this does
not lead us to the conclusion, as applicant suggests
it should, that the term “MOJAVE” therefore would not
be recognized as referring to the Mojave tribe. See
University of Notre Dame, du Lac v. J.C. Gourmet Food
Imports Co., 217 USPQ at 509 (finding that NOTRE DAME
for cheese did not unmistakably point to the
University of Notre Dame where other famous uses of
the term co-existed).
Serial No. 77011920
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Rather, the examining attorney has submitted
Wikipedia and other Internet evidence to show that
these various geographical locations and places derive
their names from the Mojave tribe. This is analogous
to the situation in In re White, wherein the Board
found that the various uses of the word “Mohawk” to
identify a haircut, a ski resort, a college, two state
forests, a hiking trail, and a military aircraft did
not detract from the public’s recognition of the term
as referring to the Mohawk tribe, since all of these
seemingly unrelated uses were either “named after” or
at least “do not detract from the association” of the
word “Mohawk” with the tribe. 80 USPQ2d at 1659.
Accordingly, we find that applicant’s “MOJAVE” mark
would be recognized as referring to the Fort Mojave
Indians of Arizona, California, and Nevada, also known
as the Mojave tribe.

(iii) The Office must prove that the plaintiff
is not connected with the activities
performed by the defendant under the mark.

Applicant has admitted to having no connection
with the Fort Mojave Indian Tribe of Arizona,
California, and Nevada. Applicant’s Response to OA,
6/6/07.
Serial No. 77011920
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(iv) The Office must prove that the plaintiff's
name or identity is of sufficient fame or
reputation that when the defendant's mark
is used on the goods or services, a
connection with the plaintiff would be
presumed.

The examining attorney has submitted three types
of evidence to show the fame of the Mojave tribe.
First, as discussed above, the examining attorney
submitted dictionary definitions from major
dictionaries in general circulation, showing “Mojave”
defined as the members of the Mojave tribe. Second,
the examining attorney submitted evidence to show the
continuing existence and physical presence of members
of the Fort Mojave Indian Tribe of Arizona,
California, and Nevada in the three states mentioned.
See for example Tiller at 412-413. Finally, the
examining attorney submitted evidence, as discussed
below, to show the commercial impact of the Mojave
tribe. Id.
Applicant disputes the fame of the Mojave tribe,
arguing that the tribe is small and relatively
unknown, not even being one of the 30 largest Indian
tribes of North America. However, the evidence of
record shows that the Mojave tribe employs 3,000
people and contributes approximately $250 million in
Serial No. 77011920
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economic output along with over $140 million in income
in the area. See Tiller at 413. Altogether, we find
the evidence of record more than adequate to show that
the Mojave tribe is well known among residents of the
region and visitors to the area. In re White, 80 USPQ
at 1661 (finding sufficient fame from evidence of
dictionary definitions, physical presence, and
commercial enterprises).
The examining attorney has also submitted three
types of evidence to show that the relevant public
perceives a connection between Indian tribes and
tobacco-related products such as those identified in
applicant’s recital of goods. First, the examining
attorney submitted articles and information from the
Internet discussing tobacco-related products produced
by Indian tribes. A sampling of this evidence
includes the following excerpts:
“We are your source for authentic Native
American-made cigarettes . . . . Located on the
Winnebago Reservation in northeast Nebraska, HCI
Distribution serves clients from California to
New York.” www.hcidistribution.com.
“We only sell the finest Native American made
cigarettes and Native made tobacco products . . .
. Our cigarettes contain only the purest Native
made tobacco.” www.blackhawktobacco.com.
“All cigarettes offered by California Cigarettes
are sold from the Aqua Caliente Indian
Reservation . . . . All Native made tobacco
products offered by California Cigarettes are
Serial No. 77011920
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sold by Native Americans to Native Americans and
Non-Native Americans from the Sovereign Territory
of the Aqua Caliente.”
www.californiacigarette.com.

Second, the examining attorney produced articles
and information from the Internet discussing the
benefits of buying tax-free tobacco and other products
on Indian reservations. A sampling of this evidence
includes the following excerpts:
“The State of Arizona does not tax Indian lands
and Indian-owned property on reservations. . . .
Indian people are also exempt from state and
local sales taxes on consumer products purchased
on the reservation unless such taxes are imposed
by the tribal government.” Fort Mojave
Reservation Profile, prepared by the Arizona
Dept. of Commerce.

“On the basis of tribal membership, each tribe
has been allocated a maximum number of tax-exempt
cigarettes that can be sold annually on a
reservation to enrolled members of the tribe by
an Indian tribe, an Indian retailer, or a
federally-licensed Indian trader.” The
University of Dayton School of Law.

“The tobacco deal, which is awaiting legislative
approval, is designed to end the cat-and-mouse
game between the Puyallup smoke shops and the
state over the smuggling of untaxed cigarettes.
Tribal smoke shops can make big money by selling
black market cigarettes at cheaper prices than
non-Indian retailers if they evade the $14.25 per
carton excise tax.” Seattle Post.

Finally, the examining attorney submitted
evidence specifically showing a connection between the
Mojave tribe and tobacco-related products. In
Serial No. 77011920
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particular, the Mojave tribe operates a smoke shop.
See Fort Mojave Reservation Profile, prepared by the
Arizona Dept. of Commerce. Accordingly, we find that
purchasers of applicant’s identified goods would be
aware of Native American manufacturing and marketing
of Native American brand cigarettes, and, given the
fame of its name, would think uniquely of the Mojave
tribe when they see MOJAVE as a mark used on or in
connection with those identified goods. See In re
White, 80 USPQ at 1662.
Applicant submitted with its response to the
first office action lists of live and dead third-party
registrations containing the word “MOJAVE,”
“CHEROKEE,” and other Indian tribe names, apparently
to show how the names of Indian tribes have been
registered for various goods, including tobacco-
related products. The examining attorney objected to
the lists in the final office action as an improper
submission of third-party registrations. In order to
make a third-party registration of record, a copy of
the registration, either a copy of the paper USPTO
record, or a copy taken from the electronic records of
the Office should be submitted. In re Volvo Cars of
North America Inc., 46 USPQ2d 1455, 1456 n. 2 (TTAB
Serial No. 77011920
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1998); and In re Duofold Inc., 184 USPQ 638, 640 (TTAB
1974). Merely listing such registrations, as
applicant has done here, is insufficient to make them
of record. In re Dos Padres Inc., 49 USPQ2d 1860,
1861 n. 2 (TTAB 1998). Accordingly, we sustain the
objection.
In sum, we find that the examining attorney has
satisfied her burden in establishing the four factors
relevant to the 2(a) refusal for false suggestion of a
connection. First, applicant’s mark, MOJAVE, is the
same or a close approximation of the name of the
Mojave tribe. Second, the mark would be recognized as
such. Third, applicant is not connected with the
activities performed by the Mojave tribe under the
mark. Finally, the Mojave tribe is of sufficient fame
or reputation that when applicant’s mark is used on
the identified goods, a connection with the Mojave
tribe would be presumed.
DECISION: The refusal to register the mark under
Section 2(a) of the Trademark Act is affirmed.