Sloppy Joe's Int'l, Inc.

Trademark Trial and Appeal Board

Jun 18, 1997

EX (T.T.A.B. Jun. 18, 1997)

THIS DECISION IS CITABLE AS
PRECEDENT OF THE TTAB JUNE 12, 1997
Paper No. 18
PTH
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Sloppy Joe's International, Inc.
________
Serial No. 74/345,270
_______
John Cyril Malloy, III of Malloy & Malloy for Sloppy Joe's
International, Inc.
Brian Weber, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______
Before Sams, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Sloppy Joe's
International, Inc. to register the mark shown below,
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for restaurant and bar services.1

1Application Serial No. 74/345,270 filed January 4, 1993,
alleging a date of first use and date of first use in commerce
of November 30, 1961. The application contains the following
statements: "The mark consists in part of a portrait of Ernest
Hemingway" and "The stippling shown in the drawing is not
intended to indicate color, but rather is a feature of the
mark."
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Registration has been finally refused under Sections
2(a) and 2(d) of the Trademark Act. Applicant has appealed
the final refusals to register. Both applicant and the
Trademark Examining Attorney have filed briefs, but no oral
hearing was requested.
I. Section 2(a) refusal
The refusal to register under Section 2(a) of the Act,
15 U.S.C. §1052(a), is based on the contention that the mark
falsely suggests a connection with author Ernest Hemingway.2
A. "False Suggestion of a Connection" and
the Right of Publicity
Before turning to the test for determining the
propriety of a refusal to register under Section 2(a), we
will address two arguments made by applicant that relate to
the false suggestion of a connection portion of Section 2(a)
and the right of publicity.
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), our primary reviewing court said that the "false
suggestion of a connection" portion of Section 2(a) evolved
out of, and embraced, the concepts of the rights of privacy

2Section 2(a) prohibits, inter alia, the registration of a mark
which "consists of or comprises...matter which may...falsely
suggest a connection with persons, living or dead..."
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and publicity. Applicant argues that, because the right of
publicity terminates upon the death of the individual, the
Section 2(a) false suggestion of a connection ground may not
be asserted with respect to Ernest Hemingway, citing Factors
Etc., Inc. v. Pro Arts, Inc., 652 F.2d 278, 211 USPQ 1 (2d
Cir. 1981) [in which the Second Circuit applied Tennessee
law] and Lugosi v. Universal Pictures, 205 USPQ 1090 (Cal.
1979). Besides the fact that these decisions are no longer
controlling, as both Tennessee and California have enacted
statutes recognizing a post mortem right of publicity,3 the
Trademark Act prohibition under Section 2(a) extends to
"persons, living or dead." (emphasis added). We find,
therefore, that the Section 2(a) false suggestion of a
connection refusal is not improper here simply because it
has been asserted with respect to a deceased individual,
Ernest Hemingway.
Applicant, citing Pirone v. MacMillan Inc., 894 F.2d
579, 13 USPQ2d 1799 (2d Cir. 1990), argues that not every
picture or photograph of an individual is an invasion of the
right of publicity and a violation of Section 2(a), and that
the Hemingway portrait in applicant's mark is not the kind
of representation which infringes Hemingway's right of
publicity. In Pirone, the daughters of Babe Ruth, owners of
a registration for the word mark BABE RUTH for playing
cards, writing papers and envelopes, and their licensees,

3Tenn Code Ann §§47-25-1101 - 47-25-1108 and Cal Civil Code
§§990 (g) and (h).
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objected to the use of three photographs of Ruth in a
baseball calendar published by MacMillan. Plaintiffs
alleged federal and common law trademark infringement and
unfair competition, infringement of the common law right of
publicity, and violation of the New York Civil Rights Law.
On the claims of federal trademark infringement and
unfair competition, the Court of Appeals affirmed the
district court's entry of summary judgment in MacMillan's
favor, declining to hold that plaintiff's rights in the word
mark BABE RUTH extended to photographs of Ruth owned by
MacMillan. At page 1803, the Court stated:
While these pictures of Ruth are in a sense
symbols, they in no way indicate origin or
represent sponsorship.
Photographs of baseball, its players, and
assorted memorabilia, are the subject matter
of the calendar. The pictures of Ruth no
more indicate origin than does the back
cover's picture of Jackie Robinson stealing
home plate. Both covers are merely
descriptive of the calendar's subject
matter. In neither case would any consumer
reasonably believe that Ruth or Robinson
sponsored the calendar. Instead, the
photographs identify great ball-players
and by so doing indicate the contents of
the calendar, not its source. The source
of the publication is clearly indicated
by the numerous prominent references to
MacMillan. (citations omitted)
The essence of the court's ruling on these claims is
not that phototgraphs or pictures of persons, per se, are
not trademarks, but that the Ruth photographs, as used in
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this baseball calendar, did not serve a source-indicating
function.4 In the present case, applicant uses and seeks to
register the Hemingway portrait as part of its mark for bar
and restaurant services, thereby explicitly claiming the
portrait functions to indicate source. The use of the
Hemingway portrait is, therefore, not analogous to
McMillan's use of Ruth photographs in a baseball calendar.
B. The Test for Section 2(a)
The test for determining the propriety of a refusal to
register based on Section 2(a) has four elements. The mark
(or part of it) must be shown to be the same as or a close
approximation of the person's previously used name or
identity, and it must be established that the mark would be
recognized as such (i.e., the mark points uniquely to that
person). Further, it must be shown that the person in
question is not connected with the goods or services of the
applicant, and the person's name or identity must be of
sufficient fame that when it is used as part or all of the
mark on applicant's goods/services, a connection with that
person would be presumed by someone considering purchasing

4To be clear on this point, the court, in Pirone, cited to
Estate of Presley v. Russen, 513 F. Supp. 1339 (D.N.J. 1981)
wherein the District Court for New Jersey noted that a
particular image of Elvis Presley, i.e., Presley wearing a
jumpsuit and striking a characteristic singing stance, could be
a valid mark since it had been used consistently in promotional
and advertising materials and thus had retained a "single and
continuing commercial impression."
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the goods/services. Buffett v. Chi-Chi's, Inc., 226 USPQ
428 (TTAB 1985).
Applicant maintains that there is a real connection
between Ernest Hemingway and applicant's bar, and therefore
there is no "false suggestion" of a connection between
Hemingway and applicant's services. Further, applicant
argues that Hemingway is an historical figure, known for his
writing, an activity unrelated to bar and restaurant
services, and prospective purchasers of applicant's services
would not presume a connection between Hemingway and such
services. Lastly, applicant argues that Hemingway family
members have impliedly consented to applicant's registration
of the involved mark for bar and restaurant services.
Turning to applicant's first argument, applicant
maintains that Hemingway is connected with applicant's bar
and restaurant by virtue of his close association with the
bar and its original owner. In support of its position,
applicant has submitted the declaration of its president,
Michael Halpern; a booklet entitled Sloppy Joe's Bar The
First Fifty Years by Sharon Wells, a Key West, Florida
historian; and copies of excerpts from books, brochures, and
newspapers which chronicle Hemingway's years in Key West.
According to these materials, Hemingway and Joe Russell, the
original owner of Sloppy Joe's bar, were close friends. It
is said that Hemingway modeled the main character in his
novel To Have and To Have Not after Russell. Hemingway was
a frequent patron of Sloppy Joe's, did a great deal of his
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writing in the back room of the bar; and after his death,
original manuscripts and sections of several of his most
famous works were discovered there. In the Wells' booklet
and another of the excerpted materials, Hemingway is quoted
as saying: "I used to be co-owner of Sloppy Joe's, silent
partner they call it. We had gambling in the back and
that's where the real money is." Applicant argues that the
refusal to register under Section 2(a) is improper because
the "connection between Hemingway and Sloppy Joe's is not
falsely suggested." (November 24, 1993 response to Office
action, p. 2).
The Examining Attorney acknowledges that "[F]ew cases,
if any, have dealt with the issue of how much of a
connection is required to overcome a Section 2(a) refusal."
It is the Examining Attorney's position, however, that a
financial or ownership interest in the goods and/or services
is required. The Examining Attorney argues that,
.....spending a great deal of time in one's
favorite bar is not a legally sufficient
"connection" to allow an establishment to secure
trademark rights in its famous patron's likeness.
Hemingway may have had his own barstool and even
maintained an office for writing in the back room,
but there is no evidence that he had any actual
proprietary or financial interest in the bar.
The claims of co-ownership listed by the applicant
seem to refer more to folklore based on the amount
of time Hemingway spent in the bar than to any
actual ownership interest.
Brief, pp. 3-4.
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The question here is whether applicant has established
a "connection" with Hemingway which entitles it to register
the involved mark. Although the legislative history of
Section 2(a) offers no specific guidance on this issue, we
are inclined to agree with the Examining Attorney that
Hemingway's friendship with the original owner of Sloppy
Joe's bar, his frequenting the bar and his use of the back
room as an office is not the kind of "connection"
contemplated by Section 2(a). Rather, a commercial
connection, such as an ownership interest or commercial
endorsement or sponsorship of applicant's services, would be
necessary to entitle applicant to register the involved
mark. As to Hemingway's purported claim of co-ownership of
the bar, we agree with the Examining Attorney that this
appears to be mere folklore. Applicant has offered no
documentary evidence, e.g., a deed or contract, to support
its contention that Hemingway was indeed the co-owner of the
bar. Thus, applicant has not established a connection with
Hemingway which entitles it to register the involved mark.
We turn next to applicant's argument that prospective
customers of its bar and restaurant services would not
presume a connection between Hemingway and such services
because (1) Hemingway is known only for his writing and (2)
Hemingway is an historical figure.
As the Examining Attorney correctly observes, the names
and likenesses of well known persons frequently are licensed
for use on various goods and services. See, e.g.: In re
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Sauer, 27 USPQ2d 1973 (TTAB 1993) [Record included Bo
Jackson baseball and football cards and advertisements for
Bo Jackson figurines and toys.]; Buffett v. Chi-Chi's, supra
[Record included evidence of licensing agreements held by
Jimmy Buffett for the name "J. B.'s MARGARITAVILLE" for a
restaurant, and for the sale of clothing.]; and McFarland v.
Miller, 29 USPQ2d 1586 (3d Cir. 1994) [Court noted that
George McFarland ("Spanky" of the "Little Rascals") actively
protected the right to license his name.] Thus, the name
and/or likeness of a well known writer may well be
"extended" for use on goods and services unrelated to
writing. Additionally, as evidenced by the materials
submitted by applicant, Hemingway's frequenting Sloppy Joe's
bar and his "hard drinking" are well documented.
We are not persuaded by applicant's argument that,
because Hemingway is an historical figure, customers are not
likely to connect Hemingway with applicant's bar and
restaurant services. Applicant relies on Lucien Picard
Watch Corp. v. Since 1868 Crescent Corp., 314 F.Supp. 329,
165 USPQ 459, 461 (S.D.N.Y. 1970) [Use of the mark Da Vinci
on jewelry and leather giftware "is scarcely likely to
mislead" a significant number of purchasers into believing
that Leonardo da Vinci was in any way responsible for the
design or production of the goods; thus no false suggestion
of a connection with Leonardo da Vinci]. The facts here are
distinguishable. Hemingway, who died just under 40 years
ago, is a figure--and celebrity--of our own times; many
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people who knew him are undoubtedly still living. Hence, he
is not "historical" in the way Leonardo da Vinci is
"historical."
We have no doubt that prospective purchasers of
applicant's services will recognize the face in the mark as
a portrait of Hemingway. Such recognition is implicit in
applicant's description of its mark and the fact that
applicant is a sponsor of celebrations and festivals
honoring Hemingway's life and work. Applicant bills itself
as the "Home of the 'Papa' Hemingway Look-Alike Contest."
Also, Mr. Halpern, applicant's president, states in his
declaration that the picture in applicant's mark is a sketch
of Hemingway. All this evidences applicant's intent to
suggest a connection with Hemingway. "Evidence of such
intent would be highly persuasive that the public will make
the intended false association." Notre Dame, supra at 217
USPQ at 509.
We find, therefore, that, when the portrait of
Hemingway is used as part of the mark for applicant's bar
and restaurant services, prospective purchasers would
presume a connection between Hemingway and applicant's
services.
C. Implied Consent
The final argument pressed by applicant is that there
is no false suggestion of a connection here because members
of the Hemingway family have consented to applicant's use of
Hemingway's name and likeness in connection with applicant's
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bar and restaurant. Applicant implies this consent from the
attendance and participation of Hemingway family members at
celebrations and festivals sponsored by applicant which
honor Hemingway's life and work.
We agree with the Examining Attorney, however, that no
consent to register the involved mark can be implied by the
mere attendance and participation of some Hemingway family
members at these events. We have no basis on which to
conclude that such family members are authorized to consent
to the registration of Hemingway's likeness for the involved
services. In this regard, we note that apparently a
separate entity, Hemingway, Ltd., the owner of a
registration for the mark HEMINGWAY for services identified
as "licensing others the right to use and/or exploit the
name and likeness of Ernest Hemingway," has authority to
license the use of the name and likeness of Ernest
Hemingway.
Since all of the elements of the test for refusal under
Section 2(a) have been met, the refusal to register is
affirmed.
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II. Section 2(d) refusal
Registration has been refused under Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), on the ground that the
use of applicant's mark for its identified services is
likely to cause confusion with the registered marks below,
owned by the same entity, for the following goods and
services:
HEMINGWAY licensing others the right
to use and/or exploit the
name and likeness of Ernest
Hemingway5
HEMINGWAY'S bar and restaurant services6
HEMINGWAY'S bar and restaurant services7

5Registration No. 1,681,383 issued March 31, 1992.
6Registration No. 1,765,090 issued February 2, 1992 under the
provisions of Section 2(f).
7Registration No. 1,220,452 issued December 14, 1982 on the
Supplemental Register. Section 8 affidavit filed.
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HEMINGWAY men's and women's outdoor
clothing, namely, underwear,
swimwear, pajamas, night-
gowns, robes, socks, shirts,
t-shirts, sweatshirts,
sweaters, pants, sweatpants,
dresses, skirts, shorts,
jumpsuits, jackets, rain-
coats, vests, hats, gloves,
ties and scarves8
A. The Marks
In this case, we find that applicant's mark is similar
to the cited marks HEMINGWAY and HEMINGWAY'S.
In a composite mark, it is generally the word portion
that is dominant. In re Appetito Provisions Co., 3 USPQ2d
1553 (TTAB 1987). We do not believe it appropriate,
however, to apply this rule to applicant's mark, given the
prominence of the design element, and the fact that it is a
recognizable portrait of a well known person, Ernest
Hemingway. The Hemingway portrait is not an ancillary or
subordinate design. As used on the specimens of record,
(the front of a menu is shown below in reduced size), the
Hemingway portrait is especially eye-catching.

8Registration No. 1,384,390 issued February 25, 1986; Section 8
affidavit filed.
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Prospective customers viewing applicant's mark would be
just as likely to remember the Hemingway portrait, and
consequently the name Hemingway, as the words SLOPPY JOE'S.
In this regard, it is established that a picture and its
literal equivalent are given the same significance in
determining likelihood of confusion. See Shunk
Manufacturing Co., 318 F.2d 328, 137 USPQ 881, 883 (CCPA
1963) [caricature representation of Scotchman, i.e., man in
kilts and Scottish garb, and word SCOTCHMAN for mechanical
equipment]; Izod Ltd. v. Zip Hosiery Co., Inc., 405 F.2d
575, 160 USPQ 202, 204 (CCPA 1969) [representation of head
of tiger-like animal and words TIGER HEAD for clothing]; and
In re Rolf Nilsson AB, 230 USPQ 141, 143 (TTAB 1986) [design
of a lion's head silhouette and the word LION]. Thus, when
we compare the marks in their entireties, with appropriate
weight given to the word and design elements in applicant's
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mark, we find that the marks are similar and that when used
on identical or related goods/services, confusion is likely
to occur. We have kept in mind that under actual marketing
conditions, consumers do not necessarily have the
opportunity to make a side-by-side comparison between marks.
B. The Goods/Services
Having found that the parties' marks are similar, we
have no difficulty concluding that applicant's use of its
mark in connection with bar and restaurant services is
likely to cause confusion with registrant's marks for
identical services. The more difficult question is whether
applicant's bar and restaurant services are sufficiently
related or connected to registrant's licensing services and
clothing such that when these goods/services are offered
under the parties' respective marks, confusion is likely to
occur.
Goods and/or services need not be identical or even
competitive in nature in order to support a finding of
likelihood of confusion. It is sufficient for the purpose
that the goods and/or services are related in some manner;
or that they are marketed under such conditions that they
would be encountered (bearing similar marks) by the same
persons in an environment conducive to likelihood of
confusion; or that the record shows that special conditions
or circumstances exist sufficient to support the inference
that purchasers encountering applicant's services bearing
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its mark would be likely to mistakenly assume that
applicant's services are in some way connected with the
registrant. Turner Entertainment Co. v. Nelson, 38 USPQ2d
1942 (TTAB 1996) and In re Phillips-Van Heusen Corp., 228
USPQ 949 (TTAB 1986) and cases cited therein. Special
circumstances exist here which support the inference that
purchasers encountering applicant's bar and restaurant
services bearing its mark would be likely to mistakenly
assume that these services are in some way connected with
registrant.
As previously noted, the licensing of the names and/
or likenesses of well known persons for use on various goods
and services is a common practice. Indeed, this is
reflected in registrant's registrations which cover the
licensing of Hemingway's name and/or likeness (with no
limitation as to the goods/services which may be licensed
thereunder), bar and restaurant services, and clothing. In
view thereof, and because the public is accustomed to seeing
the names and likenesses of well known individuals on
diverse items, it would be reasonable for consumers to
believe that bar and restaurant services and licensing
services for the name and/or likeness of a well known person
and clothing emanate from the same source. Under these
circumstances, we find that applicant's bar and restaurant
services and registrant's licensing services and clothing
are connected in such a way that when offered under similar
marks, confusion is likely to occur.
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In sum, customers familiar with registrant's HEMINGWAY
and HEMINGWAY'S marks as used in connection with licensing
services, bar and restaurant services, and clothing, upon
encountering applicant's mark consisting of SLOPPY JOE'S and
a prominent portrait of Ernest Hemingway, for bar and
restaurant services, would be likely to believe, mistakenly,
that the goods and services originate with or are sponsored
by the same source.
Decision: The refusals to register under Section 2(a)
and 2(d) of the Trademark Act are affirmed.
J. D. Sams
T. J. Quinn
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
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