I can’t do it my way

The owner of hot dog business was unable to convince the United States Trademark Office that his trademark for “Franks Anatra” would not cause confusion with the famous singer with a similar sounding name. Frank Sinatra LLC opposed the trademark application, alleging that it falsely suggested a connection with Ol’ Blue Eyes.

To establish that a mark falsely suggest a connection with a person, the following elements must be satisfied: (1) the mark is the same as, or a close approximation of, the name or identity of a person; (2) the mark would be recognized as such, in that it points uniquely and unmistakably to that person; (3) the person named by the mark is not connected with the activities performed by applicant under the mark; and (4) the fame or reputation of the person is such that, when the mark is used with the applicant’s goods or services, a connection with the person would be presumed.

In this case, Bill Loizon, the trademark applicant, claimed his trademark had nothing to do with Frank Sinatra. Rather, he contended that Franks refers to “frankfurters, hot dogs, and other similar food items,” while Anatra means “duck” or “drake” in Italian. Given that hot dogs are generally not associated with ducks or Italians, Loizon offered another explanation for the name. He said Anatra refers to the People’s Republic of Anatra, which he maintains is an island country that is “all about the hot dogs.”

As detailed by the Hollywood Reporter, the Trademark Office was not convinced. “There is nothing inherent in applicant’s mark or in his marketing to lead consumers to translate the word ‘Anatra’ to duck. Furthermore, we do not understand how applicant’s mark engenders the commercial impression relating to anything other than a play on the Frank Sinatra name,” the ruling states.

The Trademark Office also concluded that Frank Sinatra, although diseased, still maintains a level of fame sufficient to cause customer confusion. “Frank Sinatra is an iconic American cultural figure whose fame and reputation easily satisfy this element of the test for a false suggestion of a connection,” the appeals board confirms.

As you can see, the rules for registering a trademark containing the name of living and/or famous individuals are fairly strict. While the association may help attract customers, the legal ramifications generally outweigh any benefits.

How Can I Help?

If you need help with branding your new business, or know someone that can use my help, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney. As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +