North American Free Trade Association

THIS OPINION IS

CITABLE AS PRECEDENT OF THE TTAB June 10, 1997

Hearing: Paper No. 27

April 24, 1996 EJS

U.S. DEPARTMENT OF COMMERCE

PATENT AND TRADEMARK OFFICE

________

Trademark Trial and Appeal Board

________

In re North American Free Trade Association

________

Serial No. 74/179,335

_______

Robert T. Maguire and Joel Rogers of Ablondi, Foster, Sobin

& Davidow, P.C. for North American Free Trade Association

Vivian Micznik First, Trademark Examining Attorney, Law

Office 104 (Sidney Moskowitz, Managing Attorney)

_______

Before Simms, Seeherman and Hairston, Administrative

Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

North American Free Trade Association, a corporation of

the District of Columbia, applied to register the mark NAFTA

and design, as shown below, for services which were

subsequently amended to "promotion of trade and investment

among the United States, Canada, Mexico and other countries;

providing information and consultation to members regarding

Ser No. 74/179,335

the issues and effects of a free trade area on their

investments."1

A final refusal was ultimately issued pursuant to Section

2(a) of the Trademark Act, 15 U.S.C. 1052(a), on the ground

that applicant's mark consists of or comprises matter which

may falsely suggest a connection with the North American

Free Trade Agreement, which is known by the acronym NAFTA.

In addition, the Examining Attorney has made final a

requirement for a disclaimer of exclusive rights to "NAFTA"

pursuant to Section 6 of the Trademark Act, 15 U.S.C. 1056,

should the mark be determined to be otherwise registrable.

It is from this final refusal and final requirement

that applicant has appealed. The case was fully briefed,

and an oral hearing was held before the Board.

Section 2(a) prohibits, inter alia, the registration of

a mark if it "consists of or comprises...matter which

1 Application Serial No. 74/179,335, filed June 24, 1991, and

asserting first use on March 28, 1991 and first use in

interstate commerce on May 1, 1991.

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may...falsely suggest a connection with persons, living or

dead, institutions, beliefs, or national symbols...." As

the Court explained in The University of Notre Dame du Lac

v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217

USPQ 505, 508 (Fed. Cir. 1983), Section 2(a) was designed to

protect "the name of an individual or institution which was

not a technical 'trademark' or 'trade name' upon which an

objection could be made under Section 2(d)." Further, the

court stated that Section 2(a) embraces the concepts of the

right to privacy and the related right of publicity. 217

USPQ at 509.

This Board, in In re Cotter & Co., 228 USPQ 202, 204

(TTAB 1985), delineated what was required of the Office to

support a refusal under the "falsely suggests a connection"

clause of Section 2(a):

...it is the Examining Attorney's burden

to show that the mark sought to be

registered is unmistakably associated

with a particular "persona." In order

to do this, an Examining Attorney must

show that the mark sought to be

registered is the same or a close

approximation of the name or identity of

a person, living or dead, or of an

institution and that it would be

recognized as such. It must also be

clear that the person or institution

identified by the mark is not connected

with the goods or services performed by

applicant under the mark. Finally, it

must be shown that the fame or

reputation of the named person or

institution is of such a nature that a

connection with such person or

institution would be presumed when the

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applicant's mark is used on its goods or

services.

See also, In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB

1990.)

Moreover, in In re Nuclear Research Corp., supra, the

Board stated that the phrase "falsely suggest a connection

with" requires, by implication, that the person or

institution with whom a connection is suggested must be the

prior user.

There is no question that NAFTA is an acronym for a

treaty called the "North American Free Trade Agreement."

See Acronyms, Initialisms & Abbreviations Dictionary (1993)

made of record by the Examining Attorney. The term NAFTA

has also received widespread publicity, as is shown by the

excerpts from various articles made of record by the

Examining Attorney, some of which we quote below:

One day after Democratic presidential

candidate Bill Clinton endorsed the

North American Free Trade Agreement with

reservations, an administration official

said Oct. 5 that it would be "very

difficult" to have a viable NAFTA under

a Democratic administration.

Speaking at a Border Trade Alliance on

NAFTA....

"Daily Report for Executives," Oct. 6,

1992

***

NAFTA ERODES U.S. POWER OF SELF-RULE

(headline)

...but under NAFTA local power will be

drastically reduced even further....

"The Phoenix Gazette," Nov. 5, 1993

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***

NAFTA expectations and reservations

(headline)

They could expect Carol Browner's

Environmental Protection Agency to have

something to say about it, and NAFTA

will provide the excuse.

"The Washington Times," Oct. 26, 1993

***

How Green Is NAFTA? Two

environmentalists--one pro, one con--

take on the treaty (headline)

...negotiated for NAFTA are very strong.

There's a five-step process.

"The San Francisco Chronicle," Oct. 24,

1993

...NAFTA, the trade treaty that has

become a major test of his presidency,

was coming up for a vote in Congress on

Nov. 17.... ...and the unions were

clobbering NAFTA with TV ads. How,

Clinton and Gore wondered, do they sell

NAFTA?

"Newsweek," Nov. 15, 1993

***

The "Newsweek" article points out that NAFTA was a

major issue for President Clinton during the 1994

Congressional election campaign; as a result, most Americans

would be aware of this term. The fact that many of the

articles refer to "NAFTA" in their headlines, and the

"Newsweek" article refers only to "NAFTA," without any

mention of the entire phrase "North American Free Trade

Agreement," supports the view that the term NAFTA is

recognized by the public at large. Moreover, applicant has

acknowledged that the press and the U.S. government use the

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acronym NAFTA to identify and discuss the trade agreement.

Brief, p. 7.

While applicant's mark also includes the design of a

globe, this does not avoid the commercial impression that

the mark is the same as or a close approximation of the

NAFTA treaty. One cannot overcome a refusal based on a

false suggestion of a connection merely by adding a design

element to an entity or institution's identity; in this

case, moreover, the design which applicant has adopted

reinforces that the mark will be identified with the NAFTA

treaty because it depicts the three countries which are the

parties to the agreement.

Thus, with respect to the requirement that the Office

show the mark sought to be registered is the same or a close

approximation of the name or identity of a person or of an

institution and that it would be recognized as such, we have

no doubt that applicant's mark would be recognized by both

the general public and the specialized business audience

which are the asserted consumers of applicant's services as

the name or identity of the North American Free Trade

Agreement.

Applicant has pointed out that the Trademark Act refers

to a false suggestion of a connection with a person or

institution, and argues that Section 2(a) cannot apply in

this case because NAFTA is a treaty. While applicant

recognizes that the term "institution" as used in Section

2(a) has been found to encompass universities, fraternal

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organizations and professional organizations, brief, p.5,

applicant argues that a trade agreement or treaty should not

be considered an institution, and to do so would result in

an institution being created whenever persons or

institutions enter into a contract.

NAFTA is not merely a contract or agreement. Rather, it

is an original treaty, with three supplemental agreements,

between the United States, Canada and Mexico, which sets up

a series of relationships between these countries on a

number of issues ranging from trade to environmental

concerns. Moreover, NAFTA provides for the establishment of

a Free Trade Commission,2 a Secretariat,3 committees and

working groups,4 binational panels,5 as well as the

establishment of permanent offices in each country. The

treaty further provides that the commissions, etc. are to

support the work of committees and groups established under

NAFTA and resolve disputes between the parties to the

agreement.

The totality of NAFTA, thus, is not merely a contract,

but it is the treaty, the supplemental agreements, and the

various commissions, committees, offices, etc. which are

established by those documents. When viewed as this

totality, we find that NAFTA qualifies as an "institution"

2 See Chapter Twenty, Article 2001(1).

3 See, for example, Chapter Twenty, Article 2002.

4 See, generally, Annex 2001.2.

5 See, generally, Chapter 19.

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within the meaning of Section 2(a) of the Trademark Act.6

In stating this, we are mindful of the legislative history

which indicates that the reference to an "institution" in

Section 2(a) was designed to have an expansive scope. See

Hearings on H.R. 4744 Before the Subcomm. on Trademarks of

the House Comm. on Patents, 76th Cong., 1st Sess., (1939),

included as an appendix to University of Notre Dame v. J.C.

Food Imports, supra at 217 USPQ 510, 512.7

6 We also take judicial notice of the Black's Law Dictionary

(5th ed. © 1979) definition of "institution" quoted by the

Examining Attorney in her brief:

Political law. A law, rite, or ceremony enjoined by

authority as a permanent rule of conduct or of

government. An organized society, established either

by law or the authority of individuals, for promoting

any object public or social.

A system or body of usages, laws, or regulations, of

extensive and recurring operation, containing within

itself an organism by which it effects its own

independent action, continuance, and generally its

own further development. Its object is to generate,

effect, regulate, or sanction a succession of acts,

transactions, or productions of a peculiar kind or

class. We are likewise in the habit of calling

single laws or usages "institutions," if their

operation is of vital importance and vast scope, and

if their continuance is in a high degree independent

of any interfering power.

(The Board may take judicial notice of dictionary

definitions. Marcal Paper Mills, Inc. v. American Can Co., 212

USPQ 852 (TTAB 1981).

The NAFTA treaty not only provides for the establishment of a

Secretariat, regional offices, committees, working groups and

the like, but it engendered further implementing legislation

passed by Congress, and Executive Orders issued by the

President.

7 We note applicant's position that the legislative history

"shows that the term 'institution' was included strictly for the

purpose of protecting 'fraternal societies and organizations.'"

Reply brief, p. 4. However, although a treaty such as NAFTA was

not specifically mentioned during this discussion, it is our

view that the term "institution" was included so that Section

2(a) would have an expansive scope.

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Applicant argues that its NAFTA and design mark is not

unmistakenly associated with another institution because it

does not point uniquely to an institution. That is,

applicant argues that NAFTA does not only identify a

particular NAFTA commission nor does it only identify one of

the signatories to the agreement. We are not persuaded by

this argument. NAFTA, as we have previously stated, refers

to the totality of the agreement, including the various

commissions and offices established by it. It is this

institution to which the term NAFTA points uniquely. NAFTA

is an institution, in the same way that the United Nations

is an institution. The United Nations was created by treaty

to which different sovereign entities are signatories, and

has various governing bodies such as a Secretariat and

General Assembly, agencies which carry out specific tasks,

and even armed forces.

We would also point out that, unlike Notre Dame, where

Notre Dame was associated not only with the University, but

identified a famous and sacred religious figure and was used

in the names of churches dedicated to Notre Dame, such as

the Cathedral in Paris, in this case NAFTA does not have a

variety of well-known meanings.

This brings us to the requirement that the institution

identified by the mark is not connected with the goods or

services performed by applicant under the mark. Clearly the

Office has met its burden with respect to this requirement.

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Applicant does not claim that it is part of, or established

by, the NAFTA treaty.

The next requirement is that a connection with the

NAFTA institution would be presumed when applicant's mark is

used with its services. Applicant's services are "promotion

of trade and investment among the United States, Canada,

Mexico and other countries; providing information and

consultation to members regarding the issues and effects of

a free trade area on their investments." These services are

closely related to the activities performed under the NAFTA

agreement, the preamble of which states that the United

States, Canada and Mexico are resolved to, inter alia:

create an expanded and secure market for

the goods and services produced in their

territories;

establish clear and mutually

advantageous rules governing their

trade;

ensure a predictable commercial

framework for business planning and

investment; and

enhance the competitiveness of their

firms in global markets.

In addition, the NAFTA treaty establishes, inter alia,

a Secretariat to facilitate the operation of the agreement

(Article 2002); committees such as the Committee on Trade in

Goods, which addresses issues related to movement of goods

through the three countries' ports of entry (Article 316);

and working groups such as the Working Group on Trade and

Competition, which makes recommendations on issues

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concerning the relationship between competition laws and

policies and trade in the free trade area. (Article 1504).

Given these similarities in the activities performed under

NAFTA, and applicant's own activities, we find that a

connection between applicant's activities and the

institution of NAFTA would be presumed when applicant uses

the mark NAFTA and design in connection with its services.

Applicant argues that it performs its services for its

members, who are sophisticated international business

persons. While applicant acknowledges that these people

know that NAFTA is used by the press and the government to

identify the trade agreement, it asserts that they would

know that NAFTA and design, as applied to the services

obtained from applicant, indicates the services of

applicant. Applicant further explains that these

sophisticated consumers would realize that the NAFTA treaty

does not provide information services regarding the effects

of a free trade area on investments, and that they, as well

as the general public, would realize that only the three

government signatories to the NAFTA treaty have standing to

negotiate changes to the agreement.

We do not find applicant's arguments to be persuasive.

The question is not whether its members, after learning who

applicant is and what it does, realize that applicant is not

connected with the NAFTA institution, but whether, upon

seeing the trademark used in connection with applicant's

services, the potential consumers of such services are

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likely to believe that there is a connection. Because of

the number of committees, working groups and the like which

are established by the treaty, even sophisticated business

people may believe, when viewing the mark NAFTA and design

in connection with the identified services, that applicant

has been established pursuant to the treaty to facilitate

trading and investment in the free trade area created by the

treaty. Or they may believe that applicant's services are

sponsored or approved by one of the NAFTA Commissions,

committees, working groups, etc. Thus, even if they later

learn that applicant is not connected with the NAFTA treaty,

they may become members of applicant because of the false

suggestion of a connection conveyed by applicant's mark.

Moreover, applicant's identified services include

"promotion of trade and investment among the United States,

Canada, Mexico and other countries," without any limitation

as to its customers. Such services could be rendered to the

public at large, e.g., ordinary investors and small

businesses which do not have the asserted sophistication of

applicant's members.

Applicant recognizes that "the Notre Dame case, supra,

states that even if there is no presumed connection between

the free trade agreement and the Association's services,

§ 2(a) can be violated if the evidence shows that the

applicant intended such a violation." Brief, p. 8. See

Notre Dame, supra at 217 USPQ at 509, "Evidence of such

intent would be highly persuasive that the public will make

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the intended false association." Although applicant asserts

that there is no evidence to indicate such an intent by

applicant, we note that applicant's very name, North

American Free Trade Association, is almost identical to the

North American Free Trade Agreement, and that at the time

applicant filed its reservation of name, and adopted its

mark, applicant was well aware that NAFTA referred to the

North American Free Trade Agreement. In fact, applicant

proudly states that its executives played a role "in the

creation of a North American free trade agreement," and that

its president testified before Congress in support of such

an agreement. Brief, p. 4. Applicant's knowledge of the

proposed treaty provides the evidence of applicant's intent

in adopting its mark to identify the NAFTA treaty.

Finally, we turn to the "implicit" requirement that the

person or institution with whom a connection is suggested

must be the prior user of the term. Applicant asserts that

its use of its mark predates the NAFTA agreements, and

predates the use of the globe design on the Supplemental

NAFTA agreements.8 Applicant claims that it has used its

mark since at least May 1, 1991.9 However, the United

8 As previously discussed, our conclusion that applicant's mark

is the same or a close approximation of the institution of NAFTA

was based on the inclusion in applicant's mark of the term

NAFTA; thus, even if applicant can prove prior user of the globe

design, this would not affect our decision herein.

9 Applicant has submitted with its brief a letter dated May 1,

1991 showing use of its mark on its stationery. While applicant

claims that this exhibit had been submitted with its original

application "dated May 29, 1991," the original application

papers were signed on June 24, 1991, and the application was

filed on that date. Moreover, this letter was not submitted

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States government was using the term NAFTA to refer to a

proposed North American Free Trade Agreement prior to that

date. On March 1, 1991 President Bush submitted a report to

Congress requesting the extension of fast track procedures

to facilitate passage of certain foreign trade legislation.

That report includes the following statement:

North American FTA. We have a historic

opportunity to achieve a North American

Free Trade Agreement (NAFTA) with Canada

and Mexico. ... Building on those

reforms and on the existing FTA we have

with Canada, we can create a NAFTA that

encompasses some 360 million people with

almost $6 trillion in output. A

comprehensive NAFTA will create growth

and better jobs in all three countries,

and will make us more competitive in the

global marketplace.

We recognize that the NAFTA treaty was not entered into

until December 17, 1992, was not submitted to Congress until

November 3, 1993, and was not formally approved by Congress

until December 8, 1993. All of these dates were subsequent

to applicant's claimed date of first use and the filing of

its application. However, neither the date of execution of

a treaty, nor the date it becomes effective, should be

regarded as the date it acquires its identity. It is common

knowledge that, when it comes to governmental activities,

with the original application (a blank piece of letterhead was

filed). Because the May 1, 1991 letter was not made of record

during the prosecution of the application, it cannot be

considered at this point. In any event, whether we consider the

dates of commerce claimed in the application or the application

filing date as evidencing applicant's first use, it is clear, as

will be discussed above, that applicant's use of NAFTA does not

predate the use of the acronym NAFTA for the treaty.

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substantial time may elapse from the moment an action is

first proposed until it comes to fruition. During the

interim negotiation and discussion period, however, the name

that is used for, e.g., an Executive Department or Agency,

or a treaty, can receive substantial publicity and as a

result it achieves an identity, or persona. That is what

occurred with the NAFTA treaty. (Again, we point out that

the fact applicant chose the name North American Free Trade

Association, and used the mark NAFTA and design, months

after the President of the United States proposed a North

American Free Trade Agreement, indicates that the NAFTA

treaty had achieved such an identity, and that applicant

intended, by choosing its mark, that the public would make a

false association with the institution of NAFTA.)

This case differs from In re Nuclear Research Corp., 16

USPQ2d 1317 (TTAB 1990), in which the Board found that the

applicant in that case had used the letters NRC long before

the inception of the U.S. Nuclear Regulatory Commission. As

we have already noted, applicant was well aware of the

proposal for a North American Free Trade Agreement, which

was being identified by the acronym NAFTA, at the time it

first used its mark.

Accordingly, we find that the Patent and Trademark

Office has met its burden of proving that applicant's mark

NAFTA and design falsely suggests a connection with the

North American Free Trade Agreement, and we affirm the

refusal on this ground.

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In view of this finding, the requirement for a

disclaimer of NAFTA is moot, since that requirement was made

only if the mark was otherwise found registrable. However,

in order to render an opinion on all issues, we hereby

affirm this requirement. The term NAFTA in applicant's mark

is merely descriptive of applicant's services.

Specifically, the evidence shows that NAFTA is an acronym

for the North American Free Trade Agreement, and applicant's

identified services are the promotion of trade and

investment in the countries which are signatory to that

trade agreement, and the providing of advice regarding

investments with respect to the free trade area. Therefore,

NAFTA is merely descriptive of applicant's services, and

must be disclaimed pursuant to Section 6 of the Trademark

Act. Applicant's arguments that NAFTA might have any number

of meanings are, to say the least, not persuasive.

Applicant has previously acknowledged that the press and

government refer to the North American Free Trade Agreement

by the acronym NAFTA, and the evidence which is of record

shows that this term is well-known to the general public.

Applicant's suggestions that the term NAFTA in its mark

could refer to services involving North Atlantic free trade

or North American Feather Trading would require that the

mark be viewed in a vacuum. However, it is well established

that the question of whether a term in merely descriptive

must be viewed in the context of the identified services.

Moreover, applicant would have us consider the term NAFTA

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per se, without the context of the entire mark, which

includes the globe design featuring North America. The

meaning that consumers will ascribe to the term can be

affected by the other material, and in this case the design

reinforces that NAFTA is a reference to the treaty.

Decision: The refusal pursuant to Section 2(a) is

affirmed. Further, even if applicant's mark were otherwise

to be held registrable, the requirement for a disclaimer of

NAFTA is affirmed.

R. L. Simms

E. J. Seeherman

P. T. Hairston

Administrative Trademark Judges

Trademark Trial and Appeal Board

17