refusal to register Archives

False Connection: Post-Application Date Evidence Can Be Considered

by Ashley K. Justice | May 15, 2025 | Trademarks

The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s refusal to register a mark on the grounds of false connection, explaining that the false connection inquiry can include evidence that arises during the examination after filing. In re Thomas D. Foster, APC, Case No. 23-1527 (Fed. Cir. May 7, 2025) (Moore, Prost, Stoll, JJ.)

Under § 2(a) of the Lanham Act (15 U.S.C. § 1052(a)), a trademark can be refused registration if it “falsely suggests a connection with persons, living or dead, institutions, beliefs, or national symbols.” To determine if a mark falsely suggests a connection, the Board can use a non-exhaustive four-part test that inquires whether:

The mark is the same, or a close approximation of, the name previously used by another person or institution.
The mark points uniquely or unmistakably to that person or institution.
That person or institution is not connected with the activities performed by the applicant under the mark.
The fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed.

Here, Thomas D. Foster filed a trademark application for the mark US SPACE FORCE on March 19, 2018, six days after President Trump proposed forming a “Space Force.” Registration was refused on the grounds of a false suggestion of a connection with the US government. The Board affirmed and denied reconsideration. Foster appealed.

Foster argued that the Board improperly considered evidence that post-dated the application’s filing date and that substantial evidence did not support the Board’s findings under the first two elements of the four-part false connections test.

Regarding Foster’s first argument, the Federal Circuit found it permissible to use facts that arise after an application’s filing date and during the examination process to assess a false connection. The Court reasoned that this was consistent with other § 2 inquiries that consider evidence that arises through the date the Board issues its decision, such as likelihood of confusion (§ 2(d)) and distinctiveness (§ 2(f)). Therefore, the Court found that the Board did not err in its consideration of evidence that arose during the examination process.

The Federal Circuit disagreed with Foster’s second argument, finding that substantial evidence supported the Board’s findings under the false connection test. Under the first part of the test, the Board found that US SPACE FORCE was the same as, or a close approximation of, a name or identity of the United States. The Court concluded that this was supported by substantial evidence, specifically pre-application evidence (President Trump’s announcement and national news articles discussing the formation of the US Space Force) and post-application evidence (the official establishment of the US Space Force and national news articles). Under the second part of the test, the Board had found that US SPACE FORCE pointed uniquely and unmistakably to the United States. The Board again relied on news coverage and the fact that [...]

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Recipe for Rejection: Trademark Application Burnt by Specimen Flaws

by Amol Parikh | Aug 22, 2024 | Trademarks

The Trademark Trial & Appeal Board issued a precedential decision affirming a refusal to register a mark because there was no direct association between the specimen and the applied-for services. In re Gail Weiss, Serial No. 88621608 (July 31, 2024, TTAB) (Cataldo, Goodman, Pologeorgis, ATJ)

Gail Weiss applied to register the mark GABBY’S TABLE on the Principal Register for “computerized online retail store services in the field of food, cooking utensils, cookware, culinary arts cookbooks, magazines, and videos, and lifestyle books, magazines, and videos.” Weiss submitted a specimen of use that consisted of “website marketing and advertising.” The Examining Attorney refused registration on the grounds that the specimen failed to show the mark in use in commerce in connection with the identified services. The Examining Attorney argued that the specimen only showed a list of items recommended for purchase, but the website did not offer the consumer retail store services to purchase the goods. Instead, the website included a “buy now” button that redirected customers to third-party websites that offered to retain store services to consumers. Weiss appealed.

The issue before the Board was whether the specimen demonstrated a direct association between the GABBY’S TABLE mark and the online retail store services identified in the application. The Board found that the specimen did not meet this requirement as it only provided referrals to third-party websites where the products could be purchased. The Board also noted that the specimen lacked the essential elements of online retail store services, such as a virtual shopping cart, pricing, shipping information or any other indicia of online retail store services. The Board also found that the third-party stores provided commissions to affiliate websites like those in the specimen but did not constitute providing online retail store services. The Board therefore affirmed the refusal to register.

Practice Note: This decision highlights the necessity for applicants to provide specimens that demonstrate the use of the mark in connection with the identified services.

Artificial Inspiration? Style Execution by AI Obviates Human Authorship

by Anisa Noorassa | Dec 21, 2023 | Copyrights

The US Copyright Office Review Board rejected a request to register artwork made using an artificial intelligence (AI) painting application, finding that the applicant “exerted insufficient creative control” over the application’s creation of the work. Second Request for Reconsideration for Refusal to Register SURYAST (Copyright Review Board, Dec. 11, 2023) (Wilson, Gen. Counsel; Strong, Associate Reg. of Copyrights; Gray, Asst. Gen. Counsel).

Ankit Sahni filed an application to register a claim for a two-dimensional artwork titled “SURYAST.” The work was generated by inputting a photograph Sahni had taken into an AI painting app called “RAGHAV.” Sahni describes RAGHAV as an “AI-powered tool” that uses machine learning to “generate an image with the same content as a base image, but with the style of a chosen picture.” In this case, Sahni took a photograph of a sunset and applied the style of Vincent van Gogh’s The Starry Night to generate the image at issue:

In the application, Sahni listed himself as the author of “photograph, 2-D artwork” and RAGHAV as the author of “2-D artwork.” Because the application identified an AI app as an author, the Copyright Office registration specialist assigned to the application requested additional information about Sahni’s use of RAGHAV in the creation of the work. After considering the additional information, the Copyright Office refused to register the work because it “lack[ed] the human authorship necessary to support a copyright claim.”

Sahni requested that the Copyright Office reconsider its initial refusal to register the work, arguing that “the human authorship requirement does not and cannot mean a work must be created entirely by a human author.” Sahni noted that in this case, the AI required several human inputs such as selecting and creating the base image, selecting the style image and selecting a variable value that determined the strength of the style transfer. He argued that the decisions he made in generating SURYAST were sufficient to make him the author of the work, which meant that the work was the product of human authorship and therefore eligible for copyright protection. Sahni minimized the role of RAGHAV, calling it an “assistive tool” that merely “mechanically” applies “colors, shapes and styles, as directed.”

The Board disagreed, finding that Sahni’s input to RAGHAV was insufficient to make SURYAST a product of human authorship. The Board reasoned that while Sahni did provide the original image and selected the style and a “variable value determining the amount of style transfer,” Sahni was not actually responsible for “determining how to interpolate the base and style images in accordance with the style transfer value.” Furthermore, Sahni did not control where the stylistic elements would be placed, what elements of the input image would appear in the output or what colors would be applied. The Board [...]

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