Hsieh

Trademark Trial and Appeal Board

Oct 29, 2008

No. 78367205 (T.T.A.B. Oct. 29, 2008)

Mailed:
October 29, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hsieh
________

Serial No. 78367205
_______

Joseph H. Taddeo, Esq. for Ming-Shan Hsieh.

Anthony M. Rinker, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Quinn, Taylor and Bergsman, Administrative Trademark
Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Ming-Shan Hsieh (“applicant”) filed an intent-to-use
registration for the mark P. Mauriat and design, shown
below, for “musical instruments,” in Class 15.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78367205
2
The Trademark Examining Attorney refused registration
under Section 2(a) of the Trademark Act of 1946, 15 U.S.C.
§1052(a), on the ground that the mark falsely suggests a
connection with Paul Mauriat, “a widely known composer and
musician from the 1960’s.”1 The Examining Attorney
submitted the following evidence to support the refusal:
1. The Paul Mauriat entries in the Space Age
Musicmaker (spaceagepop.com) and Wikipedia websites
identifying Paul Mauriat as “the last big star of the space
age pop era, given his success with ‘Love is Blue’ and its
accompanying album, Blooming Hits and his essentially
traditional easy listening approach to 1960’s pop hits.”
In addition, his 1961 melody “Chariot” was given English
lyrics, renamed “I Will Follow Him,” and became a hit for
Little Peggy March.
2. Evidence that recordings by Paul Mauriat are
still available. See the Paul Mauriat discography at
yahoo.com, the Paul Mauriat instrumental collection on the
JD Hay’s Crooners website at angelfire.com, and Paul
Mauriat Music at http://fa.la/music-paul-mauriat.asp.
3. Excerpts from applicant’s website featuring
photographs of Paul Mauriat and outlining applicant’s plan

1 Paul Mauriat died November 6, 2006.
Serial No. 78367205
3
to sell a line of musical instruments based on Paul
Mauriat’s lifestyle. (www.pmauriatmusic.com).2
4. The Wikipedia entry for P.Mauriat (not Paul
Mauriat) identifying P.Mauriat as “a saxophone
manufacturing company based in Taiwan.”
According to the “brand concept” page on
the company’s website, the company was
named after French conductor/composer
Paul Mauriat in order to associate the
company with Mauriat’s music and
lifestyle. Its products bear the
inscription “P.Mauriat PARIS.”3

Section 2(a) of the Trademark Act of 1946, 15 U.S.C.
§1052(a), provides, in relevant part, that “[n]o 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 . . .
falsely suggest a connection with persons living or dead.”
Following our principal reviewing court’s decision in
University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.

2 On December 26, 2007, applicant submitted a declaration from
Alex Hsieh, the owner of P.Mauriat, a saxophone manufacturing
company located in Taiwan, and owner of the pmauriatmusic.com
website authorizing applicant to use and register the mark at
issue. For purposes of our analysis, we will consider P.Mauriat
and applicant to be related companies.
3 We have quoted this excerpt from Wikipedia to show how the
authors of the Wikipedia entry perceived applicant’s website.
Serial No. 78367205
4
1983), aff’g 213 USPQ 594 (TTAB 1982), the Board utilizes
the following four-part test to determine whether a false
suggestion of a connection has been established:
1. The mark is the same as, or a close approximation
of, the name of or identity previously used by another
person;
2. The mark would be recognized as such because it
points uniquely and unmistakably to that person;
3. The person named by the mark is not connected
with the activities performed by the applicant under the
mark; and,
4. The prior user’s name or identity is of
sufficient fame or reputation that a connection with such
person would be presumed when applicant’s mark is used on
applicant’s goods.
In re MC MC S.r.l., ___ USPQ2d ___ (Serial No. 79022561,
TTAB September 26, 2008); In re White, 80 USPQ2d 1654, 1658
(TTAB 2006); In re Wielinski, 49 USPQ2d 1754, 1757 (TTAB
1998); In re Sloppy Joe’s Int’l Inc., 43 USPQ2d 1350, 1353
(TTAB 1997).4

4 Applicant’s assertion, in his reply brief, that likelihood of
confusion is a condition precedent to finding a false suggestion
of a connection was rejected by the Federal Circuit in University
of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 217
USPQ at 509.
Serial No. 78367205
5
As a preliminary matter, applicant raises, for the
first time in his brief, the issue of whether a Section
2(a) refusal applies to a deceased individual when there is
no longer anyone entitled to assert a proprietary right.5
However, in his April 17, 2008 motion for an extension of
time to file a reply brief, applicant explained that he
needed additional time to complete negotiations with Mme.
Irene Mauriat, the widow and heir of Paul Mauriat, for her
consent to the use and registration of the mark sought to
be registered. Suffice it to say, there is no basis for
applicant to contend that a Section 2(a) false suggestion
of a connection refusal does not apply because Paul Mauriat
has no heirs.
A. Whether applicant’s mark is a close approximation of
the name Paul Mauriat?

As indicated above, applicant is seeking to register
the mark that the Examining Attorney asserts is
a close approximation of the name Paul Mauriat. Applicant
argues that because the dominant element of his mark is the
design of the treble clef followed by script lettering,
consumers would not perceive the mark as pointing to a
specific individual.6 However, an applicant cannot overcome

5 Applicant’s Brief, p. 5.
6 Applicant’s Brief, pp. 3-4.
Serial No. 78367205
6
a refusal based on a false suggestion of a connection
merely by adding a design element to a name or by omitting
one or more elements. In re White, 80 USPQ2d at 1658; In
re North American Free Trade Association, 43 USPQ2d 1282,
1285 (TTAB 1997). In this case, we are not persuaded by
applicant’s arguments because the treble clef design forms
the letter “P,” and the commercial impression engendered by
applicant’s mark is P. MAURIAT which is a close
approximation of the name Paul Mauriat.
B. Whether applicant’s mark points uniquely and
unmistakably to Paul Mauriat?

As to whether points uniquely and
unmistakably to Paul Mauriat, applicant contends that “[a]
reasonable consumer would not purchase a musical instrument
based on an assumed connection with Paul Mauriat, because
if that consumer is sufficiently informed to be aware of
Paul Mauriat, then the consumer would know that Paul
Mauriat does not sell musical instruments.”7 On the other
hand, applicant’s website features photographs of Paul
Mauriat and his stated branding concept to promote a line
of instruments based on Paul Mauriat’s lifestyle.
Applicant’s use of Paul Mauriat’s image and his intent to

7 Applicant’s Brief, p. 5.
Serial No. 78367205
7
sell a line of musical instruments based on Paul Mauriat’s
lifestyle is strong evidence that his mark points uniquely
and unmistakably to Paul Mauriat. Indeed, it is hard to
imagine any evidence more persuasive of that fact.
C. Whether Paul Mauriat is connected with applicant’s
musical instruments?

Paul Mauriat has no connection with applicant’s
business.8
D. Whether Paul Mauriat’s name or reputation is
sufficiently famous that a connection with Paul
Mauriat would be presume when applicant’s mark is used
on applicant’s goods?

The excerpts from the Space Age Music and Wikipedia
websites are sufficient to establish the fame or renown of
Paul Mauriat for purposes of proving that applicant’s mark
falsely suggests a connection with Paul Mauriat. Moreover,
based on applicant’s use of Paul Mauriat’s image in his
website and his plans to sell a line of musical instruments
based on Paul Mauriat’s lifestyle, we may draw an inference
that applicant intends to create a connection with Paul
Mauriat. Cf L.C. Licensing, Inc. v. Cary Berman, ___
USPQ2d ___ (Opposition No. 91162330, TTAB March 28, 2008)
(applicant adopted its mark with the intent to trade off of
opposer’s mark and such bad faith is evidence that

8 Applicant’s Brief, p. 4.
Serial No. 78367205
8
confusion is likely because an inference is drawn from
applicant’s expectation of confusion).
In view of the facts that applicant’s mark is a close
approximation of the name Paul Mauriat, that applicant’s
mark points uniquely and unmistakably to Paul Mauriat, that
Paul Mauriat has no connection with applicant’s business,
and Paul Mauriat is sufficiently famous that a connection
with Paul Mauriat would be presumed if applicant’s mark
were used in connection with musical instruments, we find
that applicant’s mark falsely suggests a connection with
Paul Mauriat.
Decision: The refusal to register is affirmed.