Mystery Ranch, Ltd. v. Terminal Moraine Inc. dba Moraine Sales

This Opinion Is a

Precedent of the TTAB

Hearing: July 26, 2022 Mailed: November 30, 2022

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

_____

Mystery Ranch, Ltd.

v.

Terminal Moraine Inc.

_____

Opposition No. 91250565

_____

William B. Kircher, of Erickson Kernell IP LLC, for Mystery Ranch, Ltd.

Scott W. Johnston, of Merchant & Gould P.C., for Terminal Moraine Inc.

_____

Before Wolfson, Lynch, and Lebow, Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

Terminal Moraine Inc. (“Applicant”) seeks registration on the Principal Register

of the mark depicted below (“DESIGN” disclaimed):1

1 Application Serial No. 88070495 was filed on August 8, 2018 on the basis of Applicant’s

allegation of a bona fide intent to use the mark in commerce under Trademark Act Section

1(b), 15 U.S.C. § 1051(b). The application record includes the following description of the

mark: “The mark consists of the words ‘DANA DESIGN’ in black with a character in red

wearing a backpack above the letter ‘N’.” The colors red and black are claimed as features of

the mark.

Opposition No. 91250565

for the following goods and services:

Backpacks and shoulder bags for use in camping, and

hiking, sold exclusively at sporting goods, outdoor, and

mountaineering stores and websites or through the

sporting goods departments of general retailers in

International Class 18; and

Tent flies, Tents; Tents for mountaineering or camping;

Tents made of textile materials; Bivouac sacks; Rain flies

for tents, all of the aforesaid goods being sold exclusively at

sporting goods, outdoor, and mountaineering stores and

web sites or through the sporting goods departments of

general purpose retailers in International Class 22.

Mystery Ranch, Ltd. (“Opposer” or “Mystery Ranch”) opposes registration of the

mark based on an alleged false suggestion of a connection with Opposer and Dana

Gleason, Opposer’s co-owner, under Section 2(a) of the Trademark Act, 15 U.S.C.

§ 1052(a). (Amended Notice of Opposition, 15 TTABVUE 4, 8).2 Opposer also opposes

registration under Trademark Act Section 2(c), 15 U.S.C. § 1052(c), based on an

allegation that “DANA” identifies Dana Gleason, whose written consent to

registration of Applicant’s mark has not been granted. Id. at 8.

2 Citations to the opposition proceeding record refer to TTABVUE, the Board’s online

docketing system. Before the TTABVUE designation is the docket entry number; and after

this designation are the page references, if applicable. Citations to the prosecution history of

the application are to pages from the Trademark Status & Document Retrieval (“TSDR”)

database of the United States Patent and Trademark Office (“USPTO”).

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Opposition No. 91250565

In its Answer, Applicant denies the salient allegations in the Notice of Opposition,

and asserts the affirmative defenses of estoppel and laches.3 (17 TTABVUE 7-8).

Applicant’s estoppel defense is based on Opposer’s alleged abandonment of its mark.

This affirmative defense was pursued at trial. Applicant’s laches defense is based on

Opposer’s asserted inaction prior to the date of publication of Applicant’s mark. This

factual basis is unavailable because Opposer could not file its Notice of Opposition

until publication of Applicant’s mark and the opposition was timely filed. “Logically,

laches begins to run from the time action could be taken against the acquisition by

another of a set of rights to which objection is later made. In an opposition or

cancellation proceeding the objection is to the rights which flow from registration of

the mark.” Nat’l Cable Television Ass’n Inc. v. Am. Cinema Editors Inc., 937 F.2d

1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991). Accordingly, we deny the laches

affirmative defense.

I. Evidentiary Objection

Opposer lodged an evidentiary objection to Applicant’s Exhibit M (Applicant’s

Notice of Reliance, 30 TTABVUE 124-334), which contains copies of 48 third-party

registrations “for DANA and DESIGN and/or DANA marks” (Applicant’s Brief, 36

TTABVUE 28). Opposer’s objection is based on Applicant’s alleged failure to disclose

3 Applicant also asserted that Opposer’s claim under Section 2(c) should be denied for reasons

that we construe as mere amplifications of its denial of the claim, namely that Dana Gleason

is insufficiently well-known and that Opposer lacks a proprietary interest in the DANA

DESIGN trademark.

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Opposition No. 91250565

the registrations when requested by Opposer during discovery (33 TTABVUE 53-56).

Opposer’s requests and Applicant’s responses include the following:

• Interrogatory No. 2: Identify any searches that were

conducted for third party uses or registrations of

trademarks similar to the DANA DESIGN Mark.

Response: Applicant objects to Interrogatory No. 2

to the extent it calls for information protected by the

attorney-client privilege and/or work product immunity.

Subject to the forgoing, Applicant responds as follows:

Around November 2016, Todd Fairbairn performed a brief

search on the internet on DANA DESIGN.

• Request for Production No. 3: All documents which

refer or relate to any investigation, inquiry, study,

evaluation or analysis of the availability of the DANA

DESIGN Mark for use or registration as a trademark.

Response: Applicant objects to Request No. 3 to the

extent it calls for information protected by the attorney-

client privilege and/or work product immunity. Applicant

will produce relevant, responsive documents. Applicant is

withholding documents on the basis of the attorney-client

privilege and/or the attorney work product immunity.

• Request for Production No. 10: All documents which

refer or relate to any investigation, inquiry, study,

evaluation or analysis of any likelihood of confusion with

respect to the DANA DESIGN Mark and any other

trademarks.

Response: Applicant objects to Request No. 10 to

the extent it calls for information protected by the

attorney-client privilege and/or work product immunity.

Applicant will produce relevant, responsive documents.

Applicant is withholding documents on the basis of the

attorney-client privilege and/or the attorney work product

immunity.

(32 TTABVUE 25, 27, 29-30). Opposer observes that “[s]ome of the responses included

objections and others included varying levels of responsiveness,” but “none of the

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Opposition No. 91250565

responses made any reference to the third-party registrations attached as Exhibit M

to Applicant’s Notice of Reliance.” (33 TTABVUE 54).

Applicant admits not disclosing the third-party registrations in Exhibit M during

discovery, but argues that Opposer’s objection should be overruled for two reasons.

First, Applicant argues that “[t]rademark registrations owned by non-parties to the

proceeding may be introduced by a Notice of Reliance as ‘official records.’ Therefore,

it is well-settled that the evidence of third party registrations contained in Exhibit M

is admissible and should not be stricken from the record.” (36 TTABVUE 27, citations

omitted). This argument is a non sequitur because Opposer did not challenge the

admissibility of the third-party registrations in Exhibit M based on their method of

introduction.

Second, Applicant argues that it “had no actual knowledge of any relevant third

party registrations because no formal investigation had yet been undertaken, and

Applicant was under no duty to perform such an investigation simply because

Opposer’s discovery requested such pre-existing information.” (Id. at 28). Applicant

explains that while “prior to applying to register Applicant’s mark, Applicant’s

principal, Todd Fairbairn, sought to identify additional records on the Federal

Register including the terms DANA and DESIGN or DANA alone, which revealed the

existence of a wide range of such records . . . it was not until trial preparation that

Applicant sought to conduct a full search and formally identify those records that Mr.

Fairbairn reviewed in passing when assessing whether or not to file for protection of

Applicant’s Mark.” Ibid.

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Opposition No. 91250565

Applicant’s contention that it had “no actual knowledge” of the third-party

registrations in Exhibit M until it prepared for trial and “sought to conduct a full

search and formally identify those records” differs from Fairbairn’s testimony,

wherein he declares that as his “plans for offering for sale the DANA DESIGN Goods

under the DANA DESIGN mark became more concrete,” (31 TTABVUE 3), he “ran a

trademark search online and on the United States Trademark Office website,” which

identified not only two cancelled registrations formerly owned by Dana Gleason’s

previous company, Dana Designs, Ltd., but also “other DANA marks” including

“many” of the same 48 marks provided with Exhibit M (Id. at 4). After listing those

registrations by mark, registration number, goods/services, status, and ownership

information in his declaration, he explains that:

[b]ased on the foregoing search results, I concluded that any rights to

the DANA DESIGN mark had been abandoned more than a decade

before I applied for it and that given the wide range of DANA-formative

registrations existing in the marketplace and on the Federal Register

the applied-for DANA DESIGN mark was available for use and

registration in the United States.

Id. at 20.

Under the estoppel sanction, Fed. R. Civ. P. 37(c)(1), made applicable to Board

proceedings under Trademark Rule 2.116, 37 C.F.R. § 2.116:

If a party fails to provide information or identify a witness

as required by [Federal] Rule 26(a) or (e), the party is not

allowed to use that information or witness to supply

evidence on a motion, at a hearing, or at a trial, unless the

failure was substantially justified or is harmless.

See, e.g., Flame & Wax, Inc. v. Laguna Candles, LLC, 2022 USPQ2d 714, at *14 n.27

(TTAB 2022) (party that fails to provide information during discovery may, upon

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Opposition No. 91250565

motion or objection by its adversary, be precluded from using that information or

witness at trial). However, a party need not investigate third-party use or

registrations to respond to discovery requests. See Sheetz of Delaware, Inc. v. Doctor’s

Associates Inc., 108 USPQ2d 1341, 1348 (TTAB 2013); Rocket Trademarks Pty. Ltd.

v. Phard S.p.A., 98 USPQ2d 1066, 1071-72 (TTAB 2011) (a party has no duty to

conduct an investigation of third-party uses in response to discovery requests).

Here, the record is inconclusive as to whether documentary evidence of the third-

party registrations in Exhibit M was in Applicant’s possession at the time of the

relevant discovery requests. Thus, we cannot conclude that any such documents were

improperly withheld. Accordingly, Opposer’s objection is overruled and we consider

Exhibit M for whatever probative value it may have, which is minimal in any event

because most of the third-party registrations cover vastly disparate goods or services,

none of which include backpacks, hiking equipment, or tents. For the very few

registrations that cover arguably related goods, such as clothing or duffel bags, we

lack evidence that they are in the relevant industry, and we lack proof of marketplace

use. Thus, they do not impact our decision under Sections 2(a) or 2(c) of the

Trademark Act.

II. The Record

The pleadings, and pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b),

the file of the opposed application, are automatically of record.

Opposer submitted the following testimony declarations (29 TTABVUE):

• Dana Gleason, its co-owner;

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Opposition No. 91250565

• Rob Curtis, principal of Trixar Media & Consulting;

• Eric Graves, editor-in-chief of “The Soldier Systems Daily” online

publication; and

• Rick Saez, host of “The Outdoor Biz Podcast.”

Opposer also submitted the following evidence under Notices of Reliance (28

TTABVUE and 32 TTABVUE):

• Copies of its now canceled trademark registrations;

• Copies of various third-party Internet websites purporting to show

Opposer’s and Dana Gleason’s “unmistakable and public connection to the

DANA DESIGN mark,” (28 TTABVUE 3);

• Applicant’s responses and supplemental responses to Opposer’s discovery

requests;4 and

• An email produced by Applicant in connection with its responses to

Interrogatory Nos. 3 and 5, (28 TTABVUE 59).

Applicant submitted the declaration of its principal, Todd Fairbairn,

(31 TTABVUE), accompanied by assignment documents relating to Opposer’s

canceled registrations.

Applicant also submitted, under Notice of Reliance (30 TTABVUE):

4 Opposer also submitted its supplemental responses to Applicant’s interrogatories, which

have not been considered. See Trademark Rule 2.120(k)(5), 37 C.F.R. § 2.120(k)(5) (Answers

to interrogatories “may be submitted and made part of the record only by the receiving or

inquiring party” except where a party offers its own answers to interrogatories so as to, in

fairness, “make not misleading what was offered by the receiving or inquiring party,” and

supports the submission by a written statement explaining why the party needs to rely upon

its own answers to interrogatories. Opposer does not contend that Applicant offered

misleading answers so as to enable Opposer to rely upon its own answers).

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Opposition No. 91250565

• Opposer’s responses to Applicant’s discovery requests;

• Official documents regarding Opposer’s corporate status as well as that of

Dana Design, Ltd.;

• Copies of Opposer’s canceled registrations and third-party registrations;

• An official record from the Social Security Administration regarding the

name “Dana;” and

• Wikipedia and dictionary entries for “Dana” and “design.”

III. Factual Background

A. Dana Gleason and Mystery Ranch, Ltd.

In 1985, Dana Gleason founded Dana Design, Ltd., “a backpack company that,”

according to Mr. Gleason, “would come to be recognized as the industry standard in

load carriage technology.” (Gleason Decl., ¶ 2, 29 TTABVUE 4). “The Dana Design

company sold high quality backpacks and camping gear,” id. at ¶ 4, generating

approximately $58,000,000 in gross revenue, and spending approximately $2,460,000

in advertising the DANA DESIGN brand. Id. at ¶ 8.

In 1992, Dana Design Ltd. registered the typeset mark DANA DESIGN5 for

“sporting goods sold exclusively in sporting goods, outdoor and mountaineering shops;

namely, backpacks, frames for backpacks, fanny packs and hip sacks.”6 (Opposer’s

5 Prior to November 2, 2003, “standard character” drawings were known as “typed” or “type-

set” drawings. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir.

2012). A typed or typeset mark is the legal equivalent of a standard character mark.

TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 807.03(i) (2022).

6 Reg. No. 1691557; issued June 9, 1992; canceled February 5, 2016.

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Opposition No. 91250565

Notice of Reliance Exhibit A, 28 TTABVUE 6-13). In 1997, Dana Design Ltd.

registered the design depicted below for “all-purpose sport bags, backpacks, internal

frame backpacks, and rucksacks.” Id. at 14-18. 7

In 2000, Dana Design Ltd. assigned both marks to K-2 Corporation.8 In 2005, K-

2 Corporation assigned the marks to Marmot Mountain LLC.9 The word mark

registration was canceled in 2016 and the design mark registration was canceled in

2018. However, the evidence made of record shows that DANA DESIGN-branded

goods are currently being offered for sale on the secondary resale market. (Plaintiff’s

Notice of Reliance Exhibit B, 28 TTABVUE 50-52; Plaintiff’s Rebuttal Notice of

Reliance Exhibit B, 32 TTABVUE 12-22).

Meanwhile, at least since January 11, 1999, Opposer Mystery Ranch, Ltd., of

which Gleason is a co-owner, has been in “active-good standing” status. (Applicant’s

Notice of Reliance, Exhibit E, Montana Secretary of State records at biz.sosmt.gov,

7 Reg. No. 2122036; issued December 16, 1997; canceled July 20, 2018.

8 28 TTABVUE 8-9 and 16-17. A second registration issued for the mark DANA DESIGN for

“tents sold exclusively in sporting goods, outdoor and mountaineering shops.” 28 TTABVUE

19-25. Reg. No. 2534350 issued on January 29, 2002 and was assigned, as a pending

application, to K-2 Corporation in 2000; assignment recorded at Reel/Frame No. 2182/0591.

28 TTABVUE 21-22. The mark was further assigned to Marmot Mountain LLC on May 26,

2005; recorded at Reel/Frame No. 3093/0991. Id. The registration was canceled in 2012 for

failure to renew. 28 TTABVUE 19.

9 Assignments recorded at Reel/Frame Nos. 2095/0029 and 3093/0991. 28 TTABVUE 8 and

16-17.

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Opposition No. 91250565

30 TTABVUE 68, and Opposer’s Rebuttal Notice of Reliance, Montana Secretary of

State Principal Report, 32 TTABVUE 10). Gleason testified that Mystery Ranch has

been making and selling backpacks and load carriage systems since 2000, but his

testimony is silent on whether sales were made under the DANA DESIGN mark. (29

TTABVUE 5).

B. Terminal Moraine Inc.

Applicant Terminal Moraine Inc. was incorporated in September 2015, for the

specific purpose of offering backpacks and tents “under the DANA DESIGN mark [a

word mark].” (Fairbairn Decl. ¶ 1-2, 31 TTABVUE 2-3). In response to Opposer’s

Interrogatory No. 3, Applicant explains:

Mr. Fairbairn sought the assistance of a friend, Ellia

Kassoff, who Mr. Fairbairn was aware had prior experience

in acquiring old brands that have been dormant for

longstanding periods of nonuse. In 2016, Mr. Fairbairn

contacted Mr. Kassoff to inquire about the trademark

application process [for DANA DESIGN] and Mr. Kassoff

instructed Mr. Fairbairn as to how to file an application to

register a trademark on the website offered by the United

States Patent and Trademark Office.

(28 TTABVUE 57; 32 TTABVUE 30).

Continuing, Applicant states: “On or around November of 2016, Todd Fairbairn

acting as principal operator of Applicant decided to file U.S. App. No. 87252922 for

the mark DANA DESIGN (standard characters) to distinguish its goods from others

in the marketplace.” Id. That application ultimately was abandoned.

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Opposition No. 91250565

Applicant filed the subject application for the mark in 2018, on the

basis of Applicant’s bona fide intent to use the mark in commerce. Applicant did not

submit at trial any evidence of use of its mark.

IV. Entitlement to a Statutory Cause of Action

Entitlement to a statutory cause of action “is an element of the plaintiff’s case in

every inter partes proceeding.” Corcamore, LLC v. SFM, LLC, 978 F.3d 1298,

2020 USPQ2d 11277, at *6-7 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671 (2021);

Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020

USPQ2d 10837, at *3 (Fed. Cir. 2020), (citing Lexmark Int’l, Inc. v. Static Control

Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)), cert. denied, 142

S. Ct. 82 (2021).

To establish entitlement to a statutory cause of action, a plaintiff must

demonstrate: (i) an interest falling within the zone of interests protected by the

statute, and (ii) a reasonable belief in damage proximately caused by the registration

or continued registration of the mark. Corcamore, 2020 USPQ2d 11277, at *4; see also

Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,

1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed.

Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185,

189 (CCPA 1982).

Stated another way, a plaintiff is entitled to bring a statutory cause of action by

demonstrating a real interest in the proceeding and a reasonable belief of damage.

Australian Therapeutic Supplies, 2020 USPQ2d 10837, at *3; Empresa Cubana,

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Opposition No. 91250565

111 USPQ2d at 1062. There is “no meaningful, substantive difference between the

analytical frameworks expressed in Lexmark and Empresa Cubana.” Corcamore,

2020 USPQ2d 11277, at *4. Under Trademark Act Section 13, 15 U.S.C. § 1063,

“[a]ny person who believes that he would be damaged … by the registration of a mark

upon the principal register” may file an opposition. Thus, “a party that demonstrates

a real interest in [preventing registration of] a trademark under § 106[3] has

demonstrated an interest falling within the zone of interests protected by § 106[3]. …

Similarly, a party that demonstrates a reasonable belief of damage by the registration

of a trademark demonstrates proximate causation within the context of § 106[3].”

Corcamore, 2020 USPQ2d 11277, at *7.

In the context of a Section 2(a) claim, entitlement “does not rise or fall on the basis

of a plaintiff’s proprietary rights in a term; rather, a Section 2(a) plaintiff

has standing by virtue of who the plaintiff is, that is, the plaintiff’s personality or

‘persona.’” Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1385 (TTAB 1991), cited in

Bos. Ath. Ass’n v. Velocity, LLC, 117 USPQ2d 1492, 1494 (TTAB 2015) (establishing

standing based on use of unregistered mark); see also Univ. of Notre Dame du Lac v.

J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 217 USPQ 505, 509 (Fed. Cir. 1983),

aff’g 213 USPQ 594 (TTAB 1982) (“There may be no likelihood of such confusion as

to the source of goods even under a theory of ‘sponsorship’ or ‘endorsement,’ and,

nevertheless, one’s right of privacy, or the related right of publicity, may be

violated.”). Thus, Opposer need not demonstrate a proprietary interest in Applicant’s

mark. Opposer need only demonstrate a real interest in the proceeding and a

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Opposition No. 91250565

reasonable belief that it will incur some direct injury to its own established trade

identity (“persona”) if Applicant’s mark is registered.

There is no categorical legal bar precluding a corporate or institutional plaintiff

from claiming, in a Board proceeding, a false suggestion of a connection with its trade

name. Even a nickname or an informal reference “can qualify as an entity’s ‘identity,’

thereby giving rise to a protectable interest.” Bos. Ath. Ass’n, 117 USPQ2d at

1496; Board of Trustees v. BAMA-Werke Curt Baumann, 231 USPQ 408, 411 (TTAB

1986) (BAMA well-known as University’s nickname such that “use by respondent of

the identical term appropriates petitioner’s identity”). We also have held that

corporate or institutional plaintiffs may assert a real interest even where such

interest in the outcome of a proceeding is based on the asserted rights of its members.

See, e.g., Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d

2021, 2024 (Fed. Cir. 1987) (“These allegations [under Sections 2(a) and 2(d)]

demonstrate a real interest in the outcome of the proceeding based on a likelihood of

confusion with the DeBeers’ trade name.”); In re Pedersen, 109 USPQ2d 1185 (TTAB

2013) (application for LAKOTA falsely suggested a connection with a historic people

who speak the Lakota language and share a common culture); Am. Speech-Language-

Hearing Ass’n v. Nat’l Hearing Aid Society, 224 USPQ 798, 801 (TTAB 1984) (national

association consisting of members who meet certain requirements in speech

pathology or audiology had standing to assert false suggestion of a connection claim

under Section 2(a) on behalf of its members).

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Opposition No. 91250565

Opposer has asserted its entitlement on the basis of its own persona having been

misappropriated together with its co-owner’s interest, on the theory that both

entities’ interests coincide. Opposer argues that it is “widely known that Mystery

Ranch is owned and operated by Dana Gleason,” (Plaintiff’s Brief, 33 TTABVUE 8),

and that it “has made a substantial investment in advertising and promoting Mr.

Gleason as its Owner and backpack designer.” Id. at 29. Gleason testified that he is

“the company spokesman for [Opposer’s] goods and services.” (Gleason Decl. ¶ 19,

29 TTABVUE 6). The extract generated on August 27, 2020 from the Montana

Secretary of State lists Dana Gleason as President of Mystery Ranch, Ltd. and as a

co-Director, together with one other individual. (Opposer’s Rebuttal Notice of

Reliance, 32 TTABVUE 10). Although Opposer argues to the contrary, its interest is

not coincident with Dana Gleason’s but rather is in protecting Dana Gleason’s

persona in order to preserve Opposer’s right, as a direct competitor of Applicant, to

use the DANA name in promoting backpacks, tents, and related goods.

We find that Opposer has demonstrated its personal stake in preventing the

registration of a mark in the backpack field that allegedly appropriates the persona

of one of its owners promoted in connection with the business, and a reasonable belief

in resultant damage. As the corporate body owned in part by Dana Gleason, Opposer

has an interest beyond that of the general public in protecting Mr. Gleason’s

reputation as the purportedly famous “Dana” named in the designation DANA

DESIGN. See Piano Factory Grp., Inc. v. Schiedmayer Celesta GmbH, 11 F.4th 1363,

2021 USPQ2d 913, at *10 (Fed. Cir. 2021) (plaintiff corporation was entitled to bring

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Opposition No. 91250565

Section 2(a) claim that the applicant’s use of the family businesses name

“Schiedmayer” injured the reputation of the brand; “this is not a case in which other

Schiedmayer companies or individuals appear to have interests that conflict with the

interests of Schiedmayer Celesta”); U.S. Olympic Comm. v. Tempting Brands

Netherlands B.V., 2021 USPQ2d 164 (TTAB 2021) (finding entitlement to a statutory

2(a) opposition based in part on Opposer’s sale of competing goods under other marks,

and Opposer’s commemoration of the historical role of the named individual at its

events); Jewelers Vigilance, 2 USPQ2d at 2024 (finding associational standing even

in the absence of injury to the association; “There is no question that a trade

association, having a real interest in the outcome of the proceedings, may maintain

an opposition without proprietary rights in a mark or without asserting that it has a

right or has an interest in using the alleged mark sought to be registered by an

applicant. This is true irrespective of the grounds upon which the opposer relies in

asserting the nonregistrability of applicant’s mark.” (internal citation omitted)); In re

Urbano, 51 USPQ2d 1776, 1779 (TTAB 1999) (finding that “the entire organization

which comprises the Olympic Games, as a whole, qualifies as an ‘institution’ within

the meaning of Section 2(a) of the Trademark Act”); Buffett v. Chi-Chi’s, Inc.,

226 USPQ 428, 429 (TTAB 1985) (“[A]n opposer in a proceeding of this character may

prevail even if the name claimed to be appropriated has never been commercially

exploited by the opposer in a trademark or trademark analogous manner.”).

We therefore find that Opposer’s interest falls within the zone of interests

protected by the statute and that Opposer holds a reasonable belief that damage

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Opposition No. 91250565

would be proximately caused by the registration of Applicant’s mark. And, while

unnecessary to its Section 2(a) claim, Opposer has also shown its advertised status

as a potential competitor to Applicant. For example, the online article entitled

“Relaunch Of An Icon: Dana Designs To Mystery Ranch,” states that “Mystery Ranch,

based in Bozeman, Mont., has a full consumer pack line relaunch debut in the

summer and for sale starting in 2016” (28 TTABVUE 54), and that “Mystery Ranch

already has three outdoors/backpacking oriented packs available, the Glacier, Big

Mountain and Terraplane (a name that should stir reminiscence for some readers).

And they look very Dana Designs-esque.” Id.10 See Books on Tape, Inc. v. Booktape

Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987) (finding competitor has

standing because it has an interest in the outcome beyond that of the general public);

Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *6 (TTAB 2020) (entitlement

to a statutory cause of action found where petitioner and respondent are competitors).

Having demonstrated entitlement under Trademark Act Section 2(a), Opposer

may rely on any available statutory grounds for opposition set forth in the Trademark

Act. Jeweler’s Vigilance Comm., 2 USPQ2d at 2023 (“Once standing is established,

the opposer is entitled to rely on any of the grounds set forth in Section 2 of the

Lanham Act which negate applicant’s right to its subject registration.”); A&H

Sportswear Co. v. Yedor, 2019 USPQ2d 111513, at *3 (TTAB 2019). Accordingly,

Opposer’s showing establishes its entitlement to a statutory cause of action under

10We do not consider this article as proof of Opposer’s entry into the backpack market.

However, on its face, it shows that the public has been exposed to assertions that Mystery

Ranch is in business as a backpack supplier.

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Opposition No. 91250565

both Trademark Act Sections 2(a) and (c), 15 U.S.C. §§ 1052(a) and (c). See also M/S

R.M. Dhariwal Huf 100% EOU v. Zarda King Ltd., 2019 USPQ2d 149090, at *4

(TTAB 2019) (“Standing to assert a § 2(c) claim may be established by facts that

Opposer is a competitor of Applicant that has a present or prospective right to use

the name MANIKCHAND [Opposer’s founder’s middle name]”).

V. False Suggestion of a Connection

Trademark Act Section 2(a), in relevant part, prohibits registration of “matter

which may . . . falsely suggest a connection with persons, living or dead, institutions,

beliefs or national symbols . . . .” 15 U.S.C. § 1052(a). The legislative history of Section

2(a) and prior precedent make clear that “[t]he statutory false suggestion of a

connection refusal emerged from the right to privacy and right of publicity.” In re

Nieves & Nieves LLC, 113 USPQ2d 1639, 1643 (TTAB 2015) (PRINCESS KATE

falsely suggests a connection with Catherine, Duchess of Cambridge, also known as

“Kate Middleton”); see also Bridgestone/Firestone Rsch., Inc. v. Auto. Club de l’Ouest

de la Fr., 245 F.3d 1359, 58 USPQ2d 1460, 1464 (Fed. Cir. 2001) (“This protection of

rights of personal privacy and publicity distinguishes the § 2(a) false suggestion of

connection provision from the § 2(d) likelihood of confusion provision.”), cited in In re

Elster, 26 F.4th 1328, 2022 USPQ2d 195, at *8 (Fed. Cir. 2022); Univ. of Notre Dame,

217 USPQ at 509. If “Dana Design” is not Opposer’s name or identity, or close to it,

Opposer has no claim to any associated right of privacy and right of publicity, and

has no meritorious Section 2(a) false suggestion claim.

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Opposition No. 91250565

A false suggestion of a connection has been established when four elements are

proved:

1. Applicant’s mark is the same or a close

approximation of Opposer’s name or identity;

2. The mark would be recognized as such, in that it points

uniquely and unmistakably to Opposer;

3. Opposer is not connected with the goods sold by

Applicant; and

4. Opposer is of sufficient fame or reputation that, when

Applicant’s mark is used in connection with its goods, a

connection with Opposer would be presumed.

See Pierce-Arrow Soc’y v. Spintek Filtration, Inc., 2019 USPQ2d 471774, at *4 (TTAB

2019) (citing cases); In re White, 73 USPQ2d 1713, 1718 (TTAB 2004); see also Piano

Factory Grp., 2021 USPQ2d 913, at *11 .

Opposer alleges in its complaint in general that:

4. Opposer is widely known throughout the backpack

industry in the USA, and other countries, as being at least

substantially owned and operated by Dana Gleason, an

individual, who has worked in the backpack industry for

over 30 years and has become famously associated

therewith. (15 TTABVUE 3).

5. In 1985, Dana Gleason founded the company “Dana

Design”, a backpack company that would come to be

recognized as the industry standard in load carriage

technology. Due to its state of the art backpack technology

and designs, the name “Dana Design” became a famous

brand name recognized by the industry and consumers. Id.

6. As part of the fame and success of the “Dana Design”

brand in the backpack industry, individuals in the industry

and consumers associated the term “Dana Design” with

Dana Gleason as an individual. Id.

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Opposition No. 91250565

Opposer specifically alleges in connection with its claim of false suggestion of a

connection that:

10. Due to the fame and notoriety of “Dana Design” within

the backpack community and industry, and Dana

Gleason’s long-standing association with the “Dana

Design” name for over 30 years, the public and the

backpack industry has come to associate packs and related

products bearing the “Dana Design” or, for that matter, any

use of the forename “Dana”, with Dana Gleason and the

Opposer. Id at 4.

11. By reason of Dana Gleason’s long and extensive

association with the “Dana Design” brand, Dana Gleason

has achieved widespread and favorable public recognition

in the backpack industry and has become an asset of great

value as a symbol of Opposer’s goods and goodwill. Id at 4.

12. “Dana Design” is unmistakably associated with Dana

Gleason and, due to Dana Gleason’s widely known

ownership of Mystery Ranch, Ltd, “Dana Design” is also

unmistakably associated with Opposer. Id at 4.

…

22. Consumers have come to recognize “Dana Designs” as

an “earlier incarnation” of the current Mystery Ranch

brand. See Exhibit A. Accordingly, Mystery Ranch has an

identity that is associated with Dana Design. Id at 6.

…

30. Registration of Application Serial No. 88/070,495 will

falsely suggest a connection with a living person and will

be in violation of 15 U.S.C. § 1052(a). Id at 8.11

11 Opposer’s pleading of false suggestion of a connection is insufficient because Opposer does

not assert that the public would recognize Applicant’s mark as pointing uniquely to Opposer

(or to Dana Gleason), or that Applicant’s mark is a close approximation of Opposer’s (or Dana

Gleason’s) identity or “persona.” See, e.g., Ritz Hotel Ltd. v. Ritz Closet Seat Corp., 17 USPQ2d

1466, 1471 (TTAB 1990) (finding pleading that applicant’s use of its mark points uniquely to

person or institution named or identified is necessary element of Section 2(a) false suggestion

claim). However, the matter has been addressed by express consent of the parties and we

thus consider the complaint amended to include the necessary allegations. See, e.g.,

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Opposition No. 91250565

Opposer argues that Gleason’s identity is “associated” with Opposer and that

Applicant’s use of the name DANA as part of its trademark creates a false suggestion

of a connection with Dana Gleason and Opposer:

Mystery Ranch has made a substantial investment in

advertising and promoting Mr. Gleason as its Owner and

backpack designer and he is the company spokesman for

its goods and services. Accordingly, consumers in the

backpack and outdoor gear industry will immediately

associate the DANA DESIGN Mark at issue with Opposer

Mystery Ranch. Due to the fame of the “Dana Design”

brand, the public has come to associate outdoor gear

bearing the mark “Dana Design,” or any version of the term

“Dana” for that matter, with Opposer Mystery Ranch due

to Dana Gleason’s ownership. (internal citations omitted).

(39 TTABVUE 17)12

While conceding that “[l]ong before Applicant applied to register the DANA

DESIGN Mark at issue in this Proceeding, one of Opposer’s principals, Dana Gleason,

founded a backpack company named Dana Design, Ltd, which was established using

Mr. Gleason’s first name,” (36 TTABVUE 9), Applicant argues that Opposer merely

seeks to “regain the rights a prior business retained in and to the DANA DESIGN

mark before that entity sold and thereby abandoned those rights.” (36 TTABVUE 7).

Applicant’s Brief, 36 TTABVUE 7 (“Opposer has failed to establish that Applicant’s Mark

points to Opposer”); 36 TTABVUE 14 (“[Applicant's mark] is not the same as or a close

approximation of [Opposer's] name or persona”). See Bd. of Regents, Univ. of Texas Sys. v. S.

Illinois Miners, LLC, 110 USPQ2d 1182, 1186 (TTAB 2014); Conolty v. Conolty O’Connor

NYC LLC, 111 USPQ2d 1302, 1306 (TTAB 2014).

12 Opposer also argues that by adopting its mark, Applicant intended to falsely suggest a

connection with Opposer and Dana Gleason. In particular, Opposer relies on Applicant’s

Response to Opposer’s Interrogatory No. 5 (Opposer’s Rebuttal Notice of Reliance Exhibit C),

32 TTABVUE 31, wherein Applicant admitted that it was aware of Dana Gleason and

Opposer Mystery Ranch at the time Applicant was formed, prior to filing the DANA DESIGN

Mark application. We find that the admission does not dictate a finding that Applicant

intended to suggest a connection to Opposer and not to Dana Gleason.

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Opposition No. 91250565

There is no doubt that well before Applicant applied to

register the DANA DESIGN Mark, one of Opposer’s

principals, Dana Gleason, co-founded a backpack company,

named Dana Design, Ltd, which was established using Mr.

Gleason’s first name. (29 TTABVUE (Opposer’s

Declarations ¶ 2-3)). It is also undisputed that Dana

Design, Ltd used the DANA DESIGN mark in relation to

the sales of certain goods, including backpacks, for a period

of time, and that Dana Design, Ltd garnered one

registration and one pending application for the mark

DANA DESIGN [that were subsequently canceled].

...

By virtue of the fact that no use of the DANA DESIGN

mark was made thereafter, by Dana Design, Ltd, K-2,

Marmot, Opposer, or any other person or entity, the DANA

DESIGN name and mark fell into the abys [sic] of

abandoned marks. (internal citation omitted).

Id. at 25.

Mystery Ranch is not a legal successor to Dana Design Ltd. or its successors in

interest. Nonetheless, as previously noted, Trademark Act Sections 2(a) and (c) are

not designed primarily to protect an entity’s proprietary interest in a trademark, but

rather are designed to “protect persons and institutions from exploitation of their

persona.” Pierce-Arrow, 2019 USPQ2d 471774, at *4; see also Univ. of Notre

Dame, 217 USPQ at 508 (“[c]learly the same standard cannot be adopted for §2(a) as

for §2(d)”). As the Board explained in Pierce Arrow, “overall Section 2(a) offers

protection different in kind than Section 2(d).” 2019 USPQ2d 471774, at *7. Citing In

re White, 73 USPQ2d 1713, 1718 (TTAB 2004), the Board in Pierce Arrow clarified:

[W]hile, decades ago, “the Court of Customs and Patent

Appeals considered a Section 2(a) false suggestion claim, at

least when brought by commercial plaintiffs, to be akin to

a Section 2(d) likelihood of confusion claim,” that

conception evolved into the current standard articulated

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Opposition No. 91250565

in Univ. of Notre Dame du Lac. In re White went on to

explain that “[a] Section 2(a) false suggestion case does not

involve anything like the analysis … as would be involved

if this were a Section 2(d) case involving a question of

likelihood of confusion.” Id. (citing In re Wielinski, 49

USPQ2d at 1757 (“Section 2(a) … is not about likelihood of

confusion with trademarks. That problem is covered

by Section 2(d) of the Act.”)).13

Id.

Unlike in Pierce Arrow, where the opposer unsuccessfully tried to assert the rights

of a defunct corporation that had no surviving heir to its “persona,” here, despite the

transfer of goodwill in the trademark DANA DESIGN, Opposer has shown that public

awareness of Dana Gleason and his connection to the backpacking field continued to

the present. Accordingly, we find that Dana Gleason has not abandoned whatever

rights he may have in his “persona.”

A. Whether DANA DESIGN Is Opposer’s Name or Identity, or a

Close Approximation Thereof

There is no dispute that Applicant’s mark, which incorporates the given name

DANA along with the silhouette of a backpacker, does more than “simply bring [Dana

Gleason’s] name to mind.” Pierce-Arrow, 2019 USPQ2d 471774, at *15 (citations

omitted). Numerous examples provided by Opposer demonstrate that Dana Gleason

is known within the field of backpacks and hiking gear, and that the name “Dana” in

Applicant’s mark would be recognized as a nickname for Dana Gleason. For example,

13 The full citation to In re Wielinski is In re Wielinski, 49 USPQ2d 1754 (TTAB

1998), overruled in part on other grounds, In re WNBA Enters. LLC, 70 USPQ2d 1153 (TTAB

2003).

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Opposition No. 91250565

the results of Opposer’s November 2, 2021 Google search for “Dana design backpack”

show this:14

It is not enough, however, that the name DANA may qualify as Dana Gleason’s

“name or identity,” or a close approximation thereof. The crux of the dispute under

this prong focuses on whether DANA qualifies as Opposer’s name or identity, and

Dana Gleason is not the opposer here. “Opposer’s Section 2(a) claim requires proof …

that consumers view [DANA] so closely with Opposer that they recognize it as

Opposer’s name (or nickname), identity or persona.” U.S. Olympic Comm., 2021

USPQ2d 164, at *18 (citing Bos. Athletic Ass’n, 117 USPQ2d at 1497).

14 32 TTABVUE 12, 15, 17, Rob Curtis, Eric Graves, and Rick Saez each testified that they

“consider the terms ‘Dana Design’ or ‘Dana’ to be directly associated with Dana Gleason’s

persona.” 29 TTABVUE 9, 12, and 15.

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Opposition No. 91250565

The summary results from Opposer’s Google search suggest a relationship

between Dana Gleason and Mystery Ranch. For example:

(32 TTABVUE 12).

The evidence also includes advertising for Dana Design backpacks on the

secondary market, and that Opposer advertises itself as having been “built on the

bedrock of Dana design and other renowned outdoor brands”:

(32 TTABVUE 12).

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Opposition No. 91250565

Comments by consumers of Dana Design, Ltd.’s backpacks also support some

public exposure to the association of Mystery Ranch and Dana Gleason:

• At WhitePlains.net, an individual posts: “I have extensive experience with

both the Mystery Ranch brand and its earlier incarnation as Dana Designs

(designed and owned by the same guy, Dana Gleason).” (28 TTABVUE 27).

• A YouTube video entitled “Meet the Maker: Dana Gleason of Mystery

Ranch” describes Dana Gleason as the founder of both Dana Design Ltd.

and Mystery Ranch, and presents several posts from individuals such as:

• “I fell in love with Dana Design packs back in 1993.

I own 3 Dana Design packs, pre-Mystery Ranch, the

last Dana Design pack I purchased was in 1999 and

all three are still going strong despite years of hard

use to include 3 long distance thru hikes.”

• “Dana and the team at Mystery Ranch create the

finest backpacks available, bar none. Their first rate

quality, exceptional attention to detail, and solid

integrity as a company should be an example to all.

Great video! Thanks to Mystery Ranch for setting

the bar high for superior manufacturing in the U.S.”

(28 TTABVUE 31). This last post got two “likes.”

In the context of a Section 2(a) false association claim, the Board also considers

online articles as evidence of public perception, and has noted that “[w]hile not

considered for the truth of any matters asserted therein, the on-line articles are

competent to show that the public has been exposed to the term [at issue] and the

meaning the public is likely to associate with the term.” Bos. Athletic Ass’n, 117

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Opposition No. 91250565

USPQ2d at 1498 (citations omitted). Opposer has submitted copies of news articles

that associate Mystery Ranch and Dana Gleason:

• At www.fieldmag.com, an interview with Dana Gleason entitled “Behind

the Brand With Mystery Ranch Founder Dana Gleason,” includes a

photograph of Gleason “on the Mystery Ranch factory floor.” (28 TTABVUE

34).

• At www.outsideonline.com, a 2016 article touts Mystery Ranch backpacks

designed for women in an article entitled “The Company Building The

World’s Best Packs For Women, Mystery Ranch has a simple design

philosophy: design stuff that fits and works for as many different people as

possible,” which begins by describing Dana Gleason’s history as the founder

of Dana Designs and owner and designer at Mystery Ranch:

Taking into account the totality of the evidence, although Opposer has shown that

consumers associate Dana Gleason and Mystery Ranch, we find that they are not

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Opposition No. 91250565

perceived as each other’s alter ego. There is no merger of the two such that the “Dana”

in DANA DESIGN refers interchangeably to either entity. Opposer’s efforts in

publicizing Dana Gleason’s involvement with Mystery Ranch “does not rise to the

level of establishing [DANA] as the name or identity of [Mystery Ranch], or a close

approximation of it.” U.S. Olympic Comm., 2021 USPQ2d 164, at *22. We therefore

find Applicant’s mark not to be a close approximation of Opposer’s name or identity.

By itself, Opposer’s failure to prove this first element of the case requires judgment

in favor of Applicant.

B. Whether DANA DESIGN Points Uniquely and Unmistakably to

Opposer

While Opposer’s failure to prove the first element of its cause of action is fatal, we

nevertheless think it important to address another core element of this cause of

action. “Fundamental to a [claim] of false suggestion of a connection under

Trademark Act § 2(a) is the ‘initial and critical requirement’ that the identity being

appropriated is unmistakably associated with the person or institution

identified.” Nike, Inc. v. Palm Beach Crossfit, 116 USPQ2d 1025, 1031 (TTAB 2015)

(citing Springs Indus., Inc. v. Bumblebee Di Stefano Ottina & C.S.A.S., 222 USPQ

512, 514 (TTAB 1984) (quoting Univ. of Notre Dame, 217 USPQ at 509)); Buffett, 226

USPQ at 429 (a protectible interest in a name or its equivalent is acquired under

Section 2(a) where the name claimed to be appropriated points uniquely and

unmistakably to that party’s personality or “persona”).

“[U]nder concepts of the protection of one’s ‘identity,’ ... [a] critical requirement is

that the name (or an equivalent thereof) claimed to be appropriated by another must

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Opposition No. 91250565

be unmistakably associated with” the institution in question. Univ. of Notre Dame,

217 USPQ at 509. “The protection afforded a name or its equivalent under Section

2(a) is acquired only when the name claimed to be appropriated points ‘uniquely and

unmistakably’ to the plaintiff’s ‘persona,’ that is the personal or trade identity of the

claimant.” Bos. Athletic Ass’n, 117 USPQ2d at 1497 (citing Buffett, 226 USPQ at 429);

see also Hornby v. TJX Cos., 87 USPQ2d 1411, 1424 (TTAB 2008) (“[T]he name

claimed to be appropriated by the defendant must point uniquely to the plaintiff.”);

Institut Nat’l Des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875,

1887 (TTAB 1998) (“[I]t is unclear to the Board how it is possible for applicant’s mark

to point uniquely and unmistakably to both of the opposers.”); NASA v. Bully Hill

Vineyards, Inc., 3 USPQ2d 1671, 1676 (TTAB 1987) (the term SPACE SHUTTLE did

not point uniquely and unmistakably to NASA); cf. Schiedmayer Celesta, 2019

USPQ2d 341894, at *19 (recognizing that there may be a false suggestion of a

connection with multiple persons or institutions where those are “other Schiedmayer

family-affiliated businesses”) (citing In re White, 73 USPQ2d 1713, 1717-18 (TTAB

2004) (APACHE as used for cigarettes falsely suggests a connection with the nine

federally recognized Apache tribes)), aff’d, 2021 USPQ2d 913; In re Pedersen, 109

USPQ2d at 1193 (“That the LAKOTA name identifies persons from more than one

tribe does not negate the uniqueness of the name. [I]n this case, the Lakota tribes are

related as they speak the Lakota language and share a common history”).

Even assuming, arguendo, that DANA DESIGN were Opposer’s name or identity,

the evidence does not demonstrate that Applicant’s mark points uniquely and

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Opposition No. 91250565

unmistakably to Opposer. In addition to itself, Opposer maintains that the name

refers to Dana Gleason and to the defunct Dana Design Company. The record also

reflects that the previously-registered DANA DESIGN marks were assigned to third-

parties Marmot and K-2. These multiple potential persons and entities to which

DANA DESIGN might point “is reason enough for us to find that Applicant’s mark

does not point uniquely and unmistakably to Opposer.” Pierce-Arrow, 2019 USPQ2d

471774, at *18.

C. Remaining Elements of Section 2(a) Claim

The parties do not dispute that Opposer is not connected with the goods intended

to be sold by Applicant. However, given our finding that the DANA DESIGNS mark

is not Opposer’s name or identity, and does not point uniquely and unmistakably to

Opposer, we need not reach the remaining elements of Opposer’s Section 2(a) claim.

See U.S. Olympic Comm., 2021 USPQ2d 164, at *45; (addressing only the first two

elements of Section 2(a) false suggestion to find no false suggestion of a connection);

In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1389 (TTAB 1993) (same).

VI. Conclusion as to Section 2(a)

Opposer has not demonstrated by a preponderance of the evidence that

Applicant’s mark falsely suggests a connection with Opposer. Specifically, Opposer

has not satisfied at least the first two elements of the Section 2(a) false suggestion of

a connection test and its Section 2(a) claim thus fails. Therefore, we dismiss Opposer’s

Section 2(a) claim.

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Opposition No. 91250565

VII. Consent to Register Name Identifying a Particular Living

Individual

Section 2(c) of the Trademark Act, 15 USC 1052(c), prohibits registration of a

mark that “consists of or comprises a name, portrait, or signature identifying a

particular living individual except by his written consent ….” The provisions of

Section 2(c) are applicable to attempts to register a person’s full name, a nickname,

a first name or a surname, so long as the name identifies a particular living person.

In re Elster, 2022 USPQ2d 195, at *2-3, rev’d on other grounds, 26 F.4th 1328, 2022

USPQ2d 195 (Fed. Cir. 2022)15; Krause v. Krause Publs., Inc., 76 USPQ2d 1904, 1909

(TTAB 2005) (citing In re Sauer, 27 USPQ2d 1073 (TTAB 1993), aff’d, 26 F.3d 140,

32 USPQ2d 1479 (Fed. Cir. 1994) (Section 2(c) applicable to “not only full names, but

also surnames, shortened names, nicknames, etc., so long as the name in question

does, in fact, ‘identify’ a particular living individual”).

We must first determine whether Opposer may invoke Section 2(c) on behalf of

Dana Gleason. In Nike, Inc. v. Palm Beach Crossfit, the Board set forth the standard

that determines who may invoke Section 2(c)’s provision against registering a mark

that identifies a particular living individual:

15 Although in Elster the Federal Circuit sustained a First Amendment “as-applied challenge”

to Section 2(c), it did not hold that Section 2(c) in facially unconstitutional, and the concerns

that drove the court’s decision are not present in this case. Unlike in Elster, this proposed

mark is not “critical of a public official,” because the mark contains no such message and

Dana Gleason is not a public official or public figure of any kind. See 2022 USPQ2d 195, at

*5-6. In addition, in this case, Dana Gleason has testified that he continues to make

commercial use of his name in connection with Opposer’s business and has alleged that the

mark at issue exploits his commercial interests. 29 TTABVUE 6. Thus, as applied to this

application, Section 2(c) presents no First Amendment problem.

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Opposition No. 91250565

Comparing Section 2(a) with Section 2(c), Section 2(a) can

be invoked by an entity, but Section 2(c) requires reference

to “a particular living individual.” See Ross v. Analytical

Tech., Inc., 51 USPQ2d 1269, 1276 n.13 (TTAB 1999)

(review of legislative history and final statutory language

shows that § 2(c) must be understood as referring to

“particular living individual”); 2 J. Thomas McCarthy,

MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION

§ 13:38 (4th ed. 2015) (comparing §§ 2(c) and 2(a)). In

contrast to our having had no previous occasion to decide

who may be a proper plaintiff under Section 2(a)’s false

association clause, we have, in the Ceccato decision

[Ceccato v. Manifattura Lane Gaetano Marzotto & Figli

S.p.A., 32 USPQ2d 1192, 1195 (TTAB 1994)], previously

held that an entity seeking to invoke Section 2(c) must

assert that it has a “cognizable or proprietary right” in the

name, image, likeness or signature, such as through a

“linkage or relationship” with that particular individual

sufficient to assert the third party’s rights.

Nike, Inc. v. Palm Beach Crossfit, 116 USPQ2d at 1033.

The Board in Nike referred to its earlier decision in Ceccato for the principle that

an entity must establish a privity relationship with the particular living individual

in order to demonstrate a cognizable right through its “linkage or relationship” with

that person. In Ceccato, the applicant, a corporation organized under the laws of Italy,

asserted the rights of an individual known as Duca D’Aosta in a counterclaim against

the opposer’s registration for the mark DUCA D’AOSTA and design (which the

opposer had asserted against applicant’s attempt to register a stylized version of

DUCA D’AOSTA). Before the Board took up the merits of the applicant’s

counterclaim, it noted that the applicant had “not asserted any relationship

whatsoever with the individual which it contends is the Duca D’Aosta,” and the

alleged name was in reality a title and did not name a particular living individual.

Thus, the applicant’s attempt to assert third-party rights was unavailing.

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Opposition No. 91250565

Unlike in Ceccato, Opposer here relies upon its relationship with Dana Gleason

as its founder and co-owner, who refers to Opposer in his declaration as “my

company.” (29 TTABVUE 6). Dana Gleason testified that Opposer “has made a

substantial investment in advertising and promoting me as its Owner and backpack

designer, and I am the company spokesman for its goods and services.” Id. Opposer

further relies upon the public’s awareness of that relationship to show the requisite

privity relationship and that Opposer has a cognizable right in the name DANA.

Indeed, the Board in M/S R. M. Dhariwal (HUF) held that the opposer, a corporation

organized under the laws of India, had privity with its founder, who was known by

the name MANIKCHAND. 2019 USPQ2d 149090, at *4. Quoting Ceccato, the Board

found that any party “in privity with an individual can bring a § 2(c) claim.”

Apart from [entitlement], “an element of the § 2(c) ground

is that the party asserting that ground must have a

cognizable or proprietary right in the name.” Ceccato v.

Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32

USPQ2d 1192, 1194 (TTAB 1994) (“applicant's failure in

this case is not in connection with proving its standing to

assert this ground, but in proving that it has any linkage

or relationship with an individual known as the Duca

D’Aosta upon which it could assert this third party’s

rights.”). A party in privity with an individual can bring

a § 2(c) claim. Id.

Id.

Applicant argues that Mystery Ranch cannot possess a cognizable or proprietary

right in the name or mark DANA DESIGN because “Opposer’s now-principal, Dana

Gleason, made a decision more than two decades ago to sell his company’s interest in

the DANA DESIGN name and mark.” (36 TTABVUE 26). According to Applicant,

after the DANA DESIGN registrations were canceled, “[b]y virtue of the fact that no

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Opposition No. 91250565

use of the DANA DESIGN mark was made thereafter, by Dana Design, Ltd, K-2,

Marmot, Opposer, or any other person or entity, the DANA DESIGN name and mark

fell into the abys [sic] of abandoned marks.” Id.

It is one thing to permit another to use one’s name as a mark, quite another to

“relinquish all ownership rights in one’s name and agree to allow another to register

one’s name.” In re D.B. Kaplan Delicatessen, 225 USPQ 342, 344 (TTAB 1985)

(finding consent to registration because the defendant, Donald Kaplan, “ha[d]

indicated in writing that the trade name and service mark ‘D.B. Kaplan Delicatessen’

and any name or mark confusingly similar thereto is the property of D.B.

Delicatessen, Inc., the applicant therein, and that Donald Kaplan cannot use it in any

subsequent business”). In Kaplan, applicant corporation was named after one of the

original shareholders, Donald Kaplan. Kaplan sold his entire interest to his partner,

and in their “buyout” agreement gave up his right to use the tradename and service

mark DB Kaplan delicatessen. The provisions of the agreement were deemed

sufficient to show that Donald Kaplan consented to the use and registration of his

name by the applicant. Accordingly, applicant corporation was permitted to register

the mark.

In contrast, Dana Gleason assigned his rights to three trademark registrations,

two for the word mark DANA DESIGN and one for the figure of a hiking man. Copies

of the assignments were not made of record. Copies of any related agreements

between Dana Gleason, K-2, or Marmot are not in the record. Although the three

original DANA DESIGN registrations had all expired by 2018, the actions of Dana

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Opposition No. 91250565

Gleason in setting up Mystery Ranch in 1999; honoring Dana Design Ltd.’s

warranties on DANA DESIGN backpacks; and continuing to interface with the public

as the designer of the backpacks bearing the DANA DESIGN marks as well as

Opposer’s promotion of Dana Gleason as its owner and backpack designer, show Dana

Gleason’s intent was to keep using his name. Thus, he, and Opposer as his privy,

have a protectable interest against registration of the trademark. Opposer has thus

demonstrated that it has a “cognizable right” through a sufficient “linkage or

relationship” with Dana Gleason, thus enabling it to assert Dana Gleason’s rights

under Section 2(c).

Turning next to whether DANA DESIGNS identifies Dana Gleason, the Board has

set forth two ways to show that a “name” identifies a particular living individual for

purposes of Section 2(c): 1) if the person is so well known that the public would

reasonably assume the connection, or 2) if the person is publicly connected with the

business in which the mark is being used. M/S R.M. Dhariwal, 2019 USPQ2d

149090, at *5; Nike, Inc. v. Palm Beach Crossfit, 116 USPQ2d at 1032-33 (“To

sufficiently allege a Section 2(c) claim, a plaintiff must allege that the mark ‘consists

of or comprises’ the name, image, likeness or signature of a particular living

individual, and that he or she is so well known that the public would reasonably

assume a connection between the mark and the individual, or that, because the

individual is publicly connected with the business or field of the identified goods or

services, such connection would be assumed.”) (citing Martin v. Carter Hawley Hale

Stores, Inc., 206 USPQ 931, 933 (TTAB 1979)); see also Krause v. Krause Publs., 76

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Opposition No. 91250565

USPQ2d at 1909-10 (quoting Martin, 206 UPSQ at 933); Ross v. Analytical Tech, 51

USPQ2d at 1275 (finding a substantial number of purchasers or users of ROSS

electrodes would recognize the mark identifies opposer Dr. Ross as the inventor of

these electrodes).

Although Applicant’s mark includes only Dana Gleason’s first

name, it falls within the provisions of Section 2(c) if Opposer establishes that DANA,

as used on or in connection with the goods set forth in the involved application,

identifies Dana Gleason, “a particular living individual.” In the present case, the

record establishes that Dana Gleason is known by the relevant consuming public to

be associated with backpacks and hiking gear, and he remains publicly connected

with the relevant marketplace by his ongoing affiliation with Opposer’s business.

Thus, use of the name DANA in connection with equipment in the field would lead to

the assumption that Dana Gleason was in some way associated with the goods being

offered under the name. The name DANA as used in Applicant’s mark

identifies Dana Gleason, Opposer’s co-owner, President, and co-Director.

Applicant’s evidence that “Dana” is a unisex given name, (30 TTABVUE 338), that

“is not in the top 1000 names for any year of birth beginning with 2000,” id. at 336,

does not detract from our finding that Dana Gleason is sufficiently connected with

the identified goods that consumers would recognize Applicant’s mark as identifying

Gleason. Additionally, it is significant that Applicant produced no witnesses or other

evidence to show that the name “Dana” refers to someone other than Dana Gleason.

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Opposition No. 91250565

See Reed v. Bakers Eng’g & Equip. Co., 100 USPQ 196, 199-200 (Exam’r in Chief

1954) (pointing to the defendant’s failure to produce witnesses “to show that the name

Reed appearing in Reed Reel Ovens’ does not refer to and identify petitioner in the

particular trade” as significant).16

VIII. Conclusion as to Section 2(c)

The record shows that Dana Gleason was in privity with Dana Design Ltd. and is

currently in privity with Opposer, who because of this relationship has a cognizable

right to assert Gleason’s rights under Section 2(c) to prevent the use of his first name

DANA without his written consent. Applicant started its business under a mark that

prominently includes the name DANA. Gleason is publicly connected with the

business in which Applicant’s mark is intended for use; consumers would make an

association between Gleason and Applicant’s mark. Because Gleason’s consent to

Applicant’s registration of its mark has not been provided, registration of Applicant’s

mark is prohibited under Section 2(c). Therefore, we sustain the opposition under

Section 2(c) of the Trademark Act.

Decision: Opposer’s claim under Trademark Act Section 2(a) is dismissed.

The opposition is sustained under Trademark Act Section 2(c) and registration of

Applicant’s mark is refused.

16 In 1954, cases involving oppositions to trademark applications were adjudicated by the

Patent Office Examiner in Chief, “the predecessor to the Trademark Trial and Appeal Board.”

Flowers Indus. v. Interstate Brands Corp., 5 USPQ2d 1580, 1583 (TTAB 1987).

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