MC MC S.r.l.

Trademark Trial and Appeal Board

Sep 26, 2008

No. 79022561 (T.T.A.B. Sep. 26, 2008)

Oral Hearing: July 9, 2008
Mailed: September 26, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

In re MC MC S.r.l.

Application No. 79022561
_______

G. Franklin Rothwell and Anne M. Sterba (on brief and
appearing at oral hearing) of Rothwell, Figg, Ernst &
Manbeck, P.C. for MC MC S.r.l.

Attiya Malik, Examining Attorney, Law Office 112
(Angela Wilson, Managing Attorney).
_______

Before Kuhlke, Wellington, and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

On August 25, 2005, MC MC S.r.l., an Italian
corporation, filed an application to register the mark MARIA
CALLAS (in standard character format) on the Principal
Register for goods ultimately identified as “precious metals
and their alloys, namely, gold, silver, platinum; goods made
of or coated with gold, silver, platinum, namely, necklaces,
rings, bracelets, brooches; jewelry; precious stones;
horological and chronometric instruments” in International
THIS OPINION IS A
PRECEDENT OF
THE TTAB
Application No. 79022561
2
Class 14.1 The application contains a statement that the
mark does not identify a living individual.
The trademark examining attorney refused registration
under Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a),
on the ground that applicant’s mark falsely suggests a
connection with, as stated in her brief, “Maria Callas, the
famous, deceased opera singer, her heirs and/or her
estate.”2
Applicant appealed. Both applicant and the examining
attorney have filed briefs. An oral hearing was scheduled
and took place on July 9, 2008.
Trademark Act Section 2(a) states, 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 disparage or falsely suggest a connection with
persons living or dead, institutions, beliefs, or national
symbols, or bring them into contempt or disrepute.”
For over twenty years, and 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,

1 Application Serial No. 79022561, seeking extension of
protection of a foreign registration pursuant to Trademark Act §
66(a).

2 Maria Callas died on September 16, 1977.
Application No. 79022561
3
217 USPQ 505 (Fed. Cir. 1983), aff'g 213 USPQ 594 (TTAB
1982), the Board has utilized a four-part test to determine
whether a false suggestion of a connection under Trademark
Act Section 2(a) has been established. As applied in ex
parte proceedings, the test is articulated as follows:
1) that the marks are the same as, or a close
approximation of, the name or identity previously
used by the other person; 2) that the marks would
be recognized as such, in that they point uniquely
and unmistakably to that person; 3) that the
person named by the marks is not connected with
the activities performed by applicant under the
marks; and 4) that 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 marks are used on applicant’s
goods.

In re Wielinski, 49 USPQ2d 1754, 1757 (TTAB 1998). See also
In re White, 80 USPQ2d 1654 (TTAB 2006) and In re Sloppy
Joe's Int’l Inc., 43 USPQ2d 1350 (TTAB 1997).
The examining attorney argues that:
(1) the name in the proposed mark, MARIA CALLAS, is the
same as the name of the famous, deceased opera singer
Maria Callas, (2) the proposed mark would be recognized
as being the same as that of the singer Maria Callas,
(3) no one associated with the deceased singer Maria
Callas, her heirs and/or her estate is connected with
the goods sold by applicant, and (4) the fame and
reputation of the singer Maria Callas is such that
consumers of applicant’s goods will presume a
connection between her and the applicant’s goods.

Brief, (unnumbered) p. 4.
The examining attorney attached evidence to her Office
Actions to support these assertions.
Application No. 79022561
4
Applicant, on the other hand, argues that its mark does
not falsely suggest a connection with the singer Maria
Callas because there is no estate vested with rights to
control use of her name or persona. Brief, p. 3.
Specifically, applicant so contends “because the cumulative
evidence of record establishes that the rights of privacy
and publicity in the name ‘Maria Callas’ have extinguished
with the death of the opera singer in 1977 and her legal
heirs thereafter.” Id., p. 4. That being so, applicant
argues that the test for false suggestion of a connection
“has limited applicability in an ex parte proceeding where
the existence of a cognizable right of privacy and publicity
in the name ‘Maria Callas’ is in question.” Brief, p. 9.
Applicant further argues that it is affiliated with the
International Maria Callas Cultural Association (IMCCA),
which is “now widely recognized as the legitimate source of
memorabilia and information on Maria Callas.” Id. at p. 10.
According to applicant, it “works closely” with IMCCA and
“has been licensed by [IMCCA] to register and use the
trademark MARIA CALLAS on goods in International Class 14.”
Id. at p. 11. Applicant thus concludes that if use of its
mark “could be said to falsely suggest a connection with the
[IMCCA], that possibility has also been negated.”
Application No. 79022561
5
Applicant submitted evidence in support of these
arguments, including the declaration of IMCCA’s president.3
In response to applicant’s arguments that there is no
successor-in-interest to the rights once held by Ms. Callas
in her name and/ or persona, the examining attorney argues
that the evidence she has submitted indicates there is an
estate of Maria Callas “which appears to authorize releases
and re-releases of Maria Callas’ intellectual property,
including her music.” Brief, (unnumbered) p. 9. She also
argues that “there is evidence of a Greek law firm that
claims to represent clients in the entertainment industry,
including the estate of Maria Callas.” Id., (unnumbered) p.
10. The examining attorney points out that “the
requirements for establishing a Section 2(a) claim do not
mandate that the Office prove beyond any doubt that there
currently exists heirs and/or an estate of Maria Callas to
protect her rights.” Id., (unnumbered) p. 15. She also
discounts applicant’s reliance on its relationship with
IMCCA because “there is nothing in the record to show that
[IMCCA] has been granted the authority...to adopt, register
and license the name ‘Maria Callas’,” and the name of the

3 Applicant attached previously unsubmitted materials to its
brief. The examining attorney’s objection to these materials is
well-taken and the untimely materials have not been considered.
Rule 2.142(d).

Application No. 79022561
6
grantee or licensee in the agreement differs, albeit
slightly, from applicant’s. Id., (unnumbered) p. 17.
Applicant’s argument that there is currently no one
with rights in the name or persona of Maria Callas, and the
examining attorney’s argument in response thereto, presents
an issue that has been addressed, in part, by the Board in
the context of a corporate entity. In In re Wielinski, the
examining attorney responsible handling that case argued
that applicant’s marks falsely suggested a connection with
the defunct Diamond T Truck Company despite applicant’s
argument and evidence suggesting that there was no
successor-in-interest or holder of rights in the name
Diamond T Truck Company. In reversing the refusal, the
Board stated:
A natural person’s right to the use of a
designation which points uniquely to his or her
persona may not be protected under Section 2(a)
after his or her death unless heirs or other
successors are entitled to assert that right.
[citations omitted]. The person with whom the
marks are said to falsely suggest a connection
must have rights in its name or identity which are
prior to those of the applicant [citation
omitted]. In order to possess rights, such
person, or someone to whom those rights have been
transferred, must exist.

In re Wielinski, 49 USPQ2d at 1758
Thus, in that case there was evidence in the record that the
entity no longer existed and no evidence to suggest that
“anyone else is entitled to assert the right of that defunct
business.” Id. The Board further stated that “in the
Application No. 79022561
7
absence of evidence that some person or ongoing business is
the successor-in-interest to the Diamond T Motor Truck
Company, whatever rights it had under Section 2(a) were
extinguished when Diamond T Motor Truck Company ceased to
exist.” Id.
In this case, the fact that the entity was a person
does not present a different issue. Therefore, we must
determine as a threshold matter in element one whether the
“other person” exists.4 Specifically, we must find whether
or not there is someone (this may be a natural person,
estate, or juristic entity) with rights in the name “Maria
Callas.”5 Similar to In re Wielinski, we find that

4 To be clear, the question is not whether Section 2(a) protects
rights in the name or persona of a deceased individual as the
statutory language expressly states that such rights may be
protected. See also, In re Sloppy Joe’s International Inc., 43
USPQ2d 1350 (TTAB 1997). The question presented herein is also
different from whether applicant’s mark points uniquely to the
name or persona being protected. The Federal Circuit has made it
clear that such a nexus must exist. University of Notre Dame du
Lac, 703 F.2d at 1377 [“the initial and critical requirement is
that the name (or an equivalent thereof) claimed to be
appropriated by another must be unmistakably associated with a
particular personality or ‘persona,’” (finding that NOTRE DAME is
a name not solely associated with the University, but identifies
a famous religious figure and is used in the names of churches
dedicated to that religious figure).]
5 Again, for sake of clarity, the “rights” to which the Board
references in this decision are those contemplated by Section
2(a). Our primary reviewing court and the Board have determined
that Section 2(a) emanates from a desire to protect “one’s right
of privacy, or the related right of publicity.” University of
Notre Dame du Lac, 703 F.2d 1372, 217 USPQ at 509; see also,
Buffett v. Chi-Chi's, Inc., 226 USPQ 428, 429 (TTAB 1985) (“that
portion of Section 2(a) respecting the ‘false suggestion of a
connection’ evolved out of, and embraced, the then nascent
concepts of the rights of privacy and publicity,” referencing the
findings of the Federal Circuit in University of Notre Dame du
Lac). Moreover, there is no overriding public interest to
protect. “The rights protected under the § 2(a) false suggestion
Application No. 79022561
8
applicant has rebutted the examining attorney’s prima facie
case under Section 2(a) by presenting evidence that no such
entity exists. Unlike In re Wielinski, as noted above, the
examining attorney has responded with evidence to support
her position that “heirs or successors” with rights in the
name and/or person actually do exist.
Based on the evidence of record, we have doubt as to
whether there is any successor in interest entitled to
assert rights, as contemplated under Section 2(a), to the
Maria Callas name or persona. In other words, it is unclear
whether the rights that Ms. Callas once possessed in her
name or persona devolved to anyone. The record is replete
with contradictory information on this point. Without
reiterating in detail all of the materials submitted, we
note that the examining attorney’s evidence essentially
references an entity that, in her words, “appears to
authorize releases and re-leases” of Ms. Callas’ recordings.
She also submitted evidence concerning a Greek law firm that
purportedly represents an estate of Maria Callas.
Applicant, on the other hand, has submitted evidence
indicating that there is no such person or entity in
existence asserting enforceable rights in the name MARIA

provision are not designed primarily to protect the public, but
to protect persons and institutions from exploitation of their
persona.” Bridgestone/Firestone Research, Inc. v. Automobile
Club De L'Quest De La France, 245 F.3d 1359 (Fed. Cir. 2001).

Application No. 79022561
9
CALLAS that would prevent applicant from registering its
mark under Section 2(a). This evidence includes a sworn
affidavit from a Greek investigator who avers that he has
“repeatedly conducted investigations” and ultimately
concludes that “there is no ‘heir’ of Maria [C]allas who is
in the position to enforce the legal rights concerning a
potential offence of Maria [C]allas personality.”6
Applicant also submitted the declaration of Mr. Bruno Tosi,
the President of IMCCA, who affirms that “there don’t appear
to be any living heirs of Maria Callas or any persons that
may claim rights in the name ‘Maria Callas’.”7 Applicant
has also submitted evidence to support its position that, to
the extent there are enforceable rights in the MARIA CALLAS
name, one possible owner of these rights would be IMCCA,
with which applicant has some affiliation. Ultimately,
after evaluating all of the evidence, significant doubt
remains as to whether there is a successor in interest to
Maria Callas’ rights in her name or persona.
The burden is on the examining attorney (representing
the Trademark Office) to establish that applicant’s mark
falsely suggests a connection with the name or persona. See
In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629 (Fed.

6 Pages 2-3 of Sworn declaration of Konstantinos Dimitrios
(attached as Exhibit A to applicant’s January 31, 2007 response).
7 Declaration attached to applicant’s request for reconsideration
(filed on October 10, 2007).

Application No. 79022561
10
Cir. 2003), and cases cited therein; and In re Budge Mfg.
Co. Inc., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988).
Where contradictions in the evidence raise significant doubt
as to whether the examining attorney has established the
elements of false suggestion of a connection, such doubt
should be resolved in applicant's favor. In re White, 73
USPQ2d 1713, 1722 (TTAB 2004); see also, In re In Over Our
Heads Inc., 16 USPQ2d 1653, 1655 (TTAB 1990). Resolving in
applicant's favor significant doubts about whether there
exists a successor to the rights in a name or
persona removes the possibility that we might be denying
registration to an applicant based on non-existent rights.
As the Board noted in Wielinski, while “[t]here could be
someone who stands in the shoes of the former [holder of
rights in the name or persona], “it is not up to the
examining attorney to assert whatever rights such an unknown
entity might possess. This is one of the purposes of the
opposition [or cancellation] procedure.” Wielinski at 1758.
In this regard, we further note that a Section 2(a) claim is
not time barred under Section 14 of the Trademark Act; thus,
any person or entity alleging rights in the name or persona
will have recourse.
In view of the significant doubt remaining as to
whether anyone currently possesses rights in the name “Maria
Callas,” and resolving such doubt in applicant’s favor, we
Application No. 79022561
11
find that the examining attorney has not met her burden in
establishing the false suggestion of a connection refusal
under Section 2(a).
Decision: The refusal to register under Trademark Act
§ 2(a) is reversed.