US space force: a trade mark or the sixth military branch?

On 7 May last, the United States Court of Appeals for the Federal Circuit (Court), refused registration of “US SPACE FORCE” for numerous goods and services by affirming the decision of the Trademark Trial and Appeal Board of the US Patent and Trademark Office (Board). The reason for the Board and the Court to refuse registering the sign was the fact that it falsely suggested a connection with the US, which is a ground for refusal under s. 2(a) of the Lanham Act.

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U.S. Space Force!

Background

On 19 March 2018, six days after President Donld Trump’s proposal of introducing a sixth military branch for space operations – “U.S. Space Force” – Thomas D. Foster, APC (appellant) attempted to register the sign “US SPACE FORCE” as a US trade mark for several goods and services. In June 2018, President Trump issued a directive to create the U.S. Space Force and in December 2019 Congress passed the necessary legislation formally establishing it. Against this background, on 12 December 2022, the Board refused registration of the said sign under s. 2(a) of the Lanham Act, as it falsely suggested a connection with the United States.

Appellant, however, challenged this finding arguing that the Board (i) should not have considered facts emerged after the date of application and (ii) did not support two parts of the four-part test that needs to be applied as part of s. 2(a) of the Lanham Act with substantial evidence.

Court decision

The Court addressed the two points appealed by Foster in turn and found that the Board did not err in either of them, thereby affirming the decision.

Appropriate timing for assessing false suggestion of a connection

The Board considered facts post-dating the application’s filing date (e.g., the passage of the legislation establishing the U.S. Space Force) and based its conclusion primarily on such facts. The appellant, however, argued that only facts existing prior to the filing date should have been taken into account to determine whether the sign falsely suggested a connection with US institutions or national symbols.

Although the Court had previously ruled that the correct date for assessing false suggestion of a connection is the date of registration, it struggled to provide a definitive answer in the present case, as the sign had not yet been registered. Upon reviewing its case law, however, the Court concluded that it is possible and appropriate to consider facts that emerge during the examination process. This conclusion was supported by the Court’s prior findings that assessments of descriptiveness and distinctiveness in cases involving unregistered signs may rely on facts arising up until the Board’s analysis is completed. Since the examination of whether the sign created a false connection was not concluded until 12 December 2022, the Board did not err in considering facts post-dating the filing date.

Four-part test for assessing false connection

In assessing whether a sign falsely suggests a connection with a person, institution, or a national symbol, the following four-part test needs to be applied:

(1) the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution; (2) the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution; (3) the person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and (4) 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.

Although the Board found that all four factors were satisfied in the relevant case, Foster argued against the first two by claiming that the Board did not have substantial evidence supporting them.

Before assessing the appellant’s claim, the Court emphasised that, although providing a “helpful framework” the list is not an exhaustive one in deciding whether there is a false suggestion of a connection. In other words, other factors, such as likelihood of confusion or an intention to create a false association between one’s mark and another party, could also play a role in determining whether a sign is ineligible for registration as a US trade mark under s. 2(a) of the Lanham Act.

Regarding factor (1), the Court stated that the Board’s finding – that the “US SPACE FORCE” was “the same as” or a highly “close approximation of” a name or identity of the United States – was accurate and supported by substantial evidence. The Court first emphasised that, even if the U.S. Space Force had not yet been established, the appellant’s sign would still have falsely suggested a connection with the US. The fact that the US had, in fact, established the Space Force by December 2019 further reinforced the finding of a false connection with the US, the government, or its institutions. However, the Court made clear that this reasoning would not mean that any use of “US” or “Unites States” in a mark necessarily suggests a connection. Rather, each case requires a fact-specific analysis.

Moreover, the Court found that the Board did rely on substantial evidence in reaching this conclusion: President Trump’s March 2018 announcement of the plan to establish a sixth military branch, national news coverage of this initiative, some articles pre-dating Foster’s application, as well as some post-date facts, including a speech delivered by President Trump in June 2018 urging the Congress to establish a Space Force, the official establishment of the Force in December 2019, and continuing news reports on its creation.

Regarding factor (2), the Court again sided with the Board, affirming its finding that the “US SPACE FORCE” sign “uniquely and unmistakeably” pointed to the United States. In addition to reiterating that the evidence relied upon for factor (1) was equally relevant to factor (2), the Court underlined that the identity between Foster’s sign and the name ‘U.S. Space Force’ was, in and of itself, sufficient to constitute substantial evidence supporting a finding that the sign uniquely and unmistakably pointed to the US.

Comment

Upon encountering a phrase such as “US SPACE FORCE”, this Kat – and arguably the average consumer – would immediately link the relevant goods and services to the United States and/or its specific institutions or entities. By refusing to allow a private undertaking to register those words as its trade mark, both the Court and the Board not only protected the US government and institutions from being associated with products or services they do not provide, but also prevented potential consumer confusion regarding the source of origin of those goods and services.

It was also notable that the appellant sought to register President Trump’s initiative as a word mark just days after he publicly announced his intentions. While one might argue that the appellant was unaware of the President’s desire to establish a sixth military branch as of 13 March 2018, the pace of the Congress in establishing the U.S. Space Force, widespread media coverage and the general popularity of the topic would all likely undermine any such defence – if one existed at all. In any case, unlike copyright law, trade mark law does not operate on an assumption of independent or incidental creation. Moreover, US trade mark law explicitly prohibits registration of signs that falsely suggest a connection with the United States. Therefore, even if the appellant had demonstrated that it acted in good faith, it would still not have been possible for it to register “US SPACE FORCE” as its trade mark.

Image credit: Gemini