Spanky's Inc.

Trademark Trial and Appeal Board

Jul 30, 2003

No. 75492749 (T.T.A.B. Jul. 30, 2003)

Oral Hearing:
March 4, 2003
Mailed: July 30, 2003
Paper No. 25
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
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In re Spanky’s Inc.
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Serial No. 75/492,749
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Penrose Lucas Albright of Mason, Mason & Albright for
Spanky’s Inc.
Nicholas K.D. Altree, Trademark Examining Attorney, Law
Office 109 (Ronald R. Sussman, Managing Attorney).
____________
Before Seeherman, Walters and Holtzman, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Spanky’s Inc. has filed an application to register on
the Principal Register the mark SPANKY’S for “clothing,
namely, t-shirts, sweat pants, sweat shirts, shirts,
jackets, headwear, undergarments, gloves and scarves.”1

1 Serial No. 75/492,749, in International Class 25, filed May 29, 1998,
based on use of the mark in commerce, alleging first use and use in
commerce as of September 12, 1974. The application includes the
statement “Applicant is the owner of Trademark Registration No.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 75/492,749
2
The Trademark Examining Attorney has issued a final
refusal to register, under Section 2(a) of the Trademark
Act, 15 U.S.C. 1052(a), on the ground that applicant’s mark
creates a false suggestion of a connection with George
“Spanky” McFarland, who played the character “Spanky” on
“The Little Rascals” series.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs and an oral hearing was
held. We reverse the refusal to register.
The Examining Attorney contends that applicant’s mark,
SPANKY’S, is the nickname and identity of George McFarland,
who, as a child, played the role of Spanky in the “Our
Gang,” also known as “Little Rascals,” comedies that have
appeared in movie theaters and on television; that Mr.
McFarland’s nickname and character name, Spanky, and his
likeness as a child are famous in the United States in
connection with the “Our Gang” comedies; that applicant uses
the mark SPANKY’S in connection with Mr. McFarland’s
childhood likeness on applicant’s identified clothing items
and in connection with applicant’s restaurant services; that
applicant’s restaurant has an “Our Gang” comedies theme;
and, thus, that Mr. McFarland is clearly identified by
applicant’s mark SPANKY’S.

1,238,845 of May 17, 1983.” The claimed registration is a concurrent
use registration for the mark SPANKY’S for “delicatessen restaurant
business.”
Serial No. 75/492,749
3
The Examining Attorney contends, further, that Mr.
McFarland is not associated with the goods sold under
applicant’s mark; and that Mr. McFarland, as the “Our Gang”
character, Spanky, is sufficiently famous that a connection
will be presumed between Mr. McFarland and the mark SPANKY’S
as used on applicant’s identified clothing.
In support of his position, the Examining Attorney
submitted excerpts from various Internet websites. Some of
the websites discuss, or contain biographies of,
celebrities, including George McFarland as Spanky in the
“Our Gang” comedies, while others sell “Our Gang” branded
products.
Applicant admits, essentially, that its restaurant has
an “our Gang” comedies theme and that the picture shown with
the mark SPANKY’S on the specimens submitted with its
application is the likeness of George McFarland in his role
as Spanky in the “Our Gang” comedies (applicant’s April 17,
2001 response, pp. 2-3).
Applicant submitted the declaration of Roland Harry
Macher, applicant’s president, who stated that applicant
entered into an agreement with King World Productions, in
approximately 1975, permitting “applicant’s restaurant to
operate under the name SPANKY’S, to use the name ‘Our Gang’
and to utilize the names of ‘Our Gang’ actors as well as
their pictures in its restaurant business … [and allowing
Serial No. 75/492,749
4
applicant] to sell articles and clothing having thereon
various logos, caricatures and slogans, all referencing
SPANKY’S or ‘Our Gang’” (applicant’s brief p. 5); and that
applicant no longer has a copy of this agreement, but
applicant paid $500 in royalties for these rights.2
Mr. Macher stated, further, that in 1986 applicant
received what was essentially a cease and desist letter from
George McFarland’s attorney that alternatively sought
compensation for applicant’s use of SPANKY’S and the
childhood likeness of Mr. McFarland; that applicant’s then-
president had a telephone conversation with Mr. McFarland’s
attorney; that no compensation was paid to Mr. McFarland nor
were any changes made to applicant’s business; and that
applicant did not hear from Mr. McFarland or his attorney
again.
Applicant concludes, therefore, that applicant’s use of
its mark is permitted, or at least not objected to, by those
who may have the right to license the “Our Gang” names and
characters.
In University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed.

2 Without evidence in support of his position, the Examining Attorney
challenges the existence of such an agreement. We find no basis for
questioning Mr. Macher’s statement that such an agreement existed and
the stated provisions thereof. We note, however, that the term of the
agreement has not been specified in this record, although applicant
appears to indicate that the agreement existed only for “several” years
(applicant’s April 14, 2001 response, p. 3).
Serial No. 75/492,749
5
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 (in this case, the
Examining Attorney) must demonstrate that the name or
equivalent thereof claimed to be appropriated by another (in
this case, applicant) must be unmistakably associated with a
particular 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 a plaintiff asserting
a claim of a false suggestion of a connection demonstrate 1)
that the defendant's mark is the same or a close
approximation of plaintiff's previously used name or
identity; 2) that the mark would be recognized as such; 3)
that the plaintiff is not connected with the activities
performed by the defendant under the mark; and 4) that the
plaintiff's name or identity is of sufficient fame or
reputation that when the defendant's mark is used on its
goods or services, a connection with the plaintiff would be
presumed.3

3 In its brief, applicant argues that the Examining Attorney’s position
rests principally on the right of either publicity or privacy; that such
rights exist under the Trademark Act only in Section 43(a), not Section
2(a); and that, therefore, the refusal under Section 2(a) is improper.
While the Section 2(a) refusal for a false suggestion of a connection
may be derived from the rights of privacy or publicity, it is clear that
“false suggestion of a connection” is an appropriate ground for refusal
in the ex parte context, and is determined according to the standards
set forth in this opinion.
Further, in support of their respective positions, both applicant and
the Examining Attorney refer to various court proceedings in different
Serial No. 75/492,749
6
The Examining Attorney has submitted evidence
establishing that the “Our Gang” comedies and the character,
Spanky, appearing in those comedies is likely to be well
known to the general public. This conclusion is supported
by applicant’s admission that it uses the name and likeness
of George McFarland as the child actor, Spanky, in its
restaurant and that its restaurant has an “Our Gang”
comedies theme. The channels of trade for applicant’s
identified clothing items are not limited and one normal
trade channel for applicant’s clothing is sales at or in
connection with applicant’s restaurant. At least in this
context, we can conclude that the name, Spanky, as used in
connection with applicant’s identified clothing, is likely
to be perceived as the name of the character in the “Our
Gang” comedies.
However, the Examining Attorney has not met the other
elements necessary to establish the Section 2(a) claim.
Furthermore, based on the facts presented by the Examining
Attorney and applicant, it would be difficult to establish
these elements in this ex parte context. In particular, the
record raises more questions than it answers about who or
what entity owns the rights associated with the “Our Gang”

jurisdictions involving Mr. McFarland. The referenced cases resulted in
different outcomes, pertained primarily to Mr. McFarland’s alleged
rights of publicity and privacy, and were based on state and common law
and Section 43(a) of the Trademark Act. As such, we find these cases
are of little if any relevance to this ex parte appeal.

Serial No. 75/492,749
7
comedies and the characters appearing in those comedies; and
whether applicant had or continues to have a valid license
to use any trademark associated with the “Our Gang”
comedies. In other words, the Examining Attorney has not
established that the party owning rights in “Spanky” is not
connected with applicant’s activities under the mark.
Decision: The refusal under Section 2(a) of the Act is
reversed.