Use of ‘Lakota' for Herbal Supplements, Remedies Makes False Tribal Association

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By Anandashankar Mazumdar  

Jan. 2 --A Canadian producer of herbal supplement's use of the term “Lakota” creates a false association between his goods and the Native American groups that identify themselves as the Lakota people, the Trademark Trial and Appeal Board ruled Dec. 30 (In re Kent Pedersen, T.T.A.B., No. 85328868, 12/30/13).

Affirming refusal to register, the board rejected the applicant's arguments and evidence suggesting that “Lakota” did not “uniquely and unmistakably” identify the Lakota people.

Canadian Applicant Seeks Registration

The Lakota people comprise a Native American ethnic group that speaks a Siouan language and has largely lived in what are now the northern plains of the United States since the late 16th century and today has about 70,000 registered members.

In May 2011, Kent Pederson of Dawson Creek, British Columbia, filed an application with the Patent and Trademark Office to register the term “Lakota” as a trademark with respect to herbal remedies and supplements aimed at improving nutrition and treating various conditions such as muscle and joint pain and arthritis.

A trademark examiner refused registration pursuant to Section 2(a) of the Lanham Act, 15 U.S.C. §1052(a), on the basis that such use might “falsely suggest a connection with the Native American Lakota people.” Pederson appealed the refusal to the TTAB.

Administrative Trademark Judge Linda A. Kuczma first set forth the standard for refusal under Section 2(a) from decisions such as In re Jackson Int'l Trading Co., 103 U.S.P.Q.2d 1417 (T.T.A.B. 2012) (141 PTD, 7/24/12):

Section 2(a) prohibits the registration of a mark that consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols. To establish that a proposed mark falsely suggests a connection with a person or an institution, it is the examining attorney's burden to show:  

 

(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.

'Unique' and 'Unmistakable' Connection

Applying this standard, the board first referred to dictionary definitions and Wikipedia used by the trademark examiner to determine that the term “Lakota” identified “Native American peoples who are part of the Native Americans collectively recognized by the United States government as the Sioux Indian tribe.”

The board rejected Pederson's argument that “Lakota” could not “uniquely and unmistakably” identified the Lakota people because it had other meanings, such as the name of the language spoken by those people.

“The fact that the term LAKOTA identifies both a particular group of people and the language spoken by some of the members of the group, is not evidence that LAKOTA fails to identify the Lakota people,” the board said.

The board then rejected the argument that the term “Lakota” does not identify this group, because the federal government's list of recognized Indian Entities uses “Sioux” and other terms rather than “Lakota” to identify the group.

“Omission from the list of federally recognized Indian Entities does not dictate that a name fails to identify persons or institutions,” the board said, referring to dictionaries and use of the term “Lakota” in the Internet.

Furthermore, the board said, “LAKOTA need not be the legal name of the party falsely associated with applicant's mark to preclude registration by applicant.” A nickname could also serve such a purpose.

No Legal Entity Required

Pederson then argued that he should be permitted to register “Lakota” because there was no specific entity that was using the term “Lakota” and held senior rights to the term.

Even so, the board said, “A false suggestion of a connection may be found when one's right to control the use of its identity is violated, even if the name claimed to be appropriated was never commercially exploited as a trademark or in a manner analogous to trademark use.”

Thus, the non-existence of such an entity was irrelevant, the board said. Even lacking such evidence, the board found ample evidence that “Lakota” was used to identify the Lakota people, both by themselves and by others.

For example, individuals purporting to represent the “Lakota Nation” brought claims against self-help author James Arthur Ray for misuse of their tribal customs after several people died in 2009 as a result of participating in a sweat lodge ceremony conducted by Ray.

The board cited to several other instances of public acts taken by members of the Lakota people under the name “Lakota.” The board thus concluded that “Lakota” indeed identified persons or institutions.

Next, the board rejected the argument that “Lakota” did not uniquely identify that ethnic group based on the existence of other trademarks using that term. The number of such uses--14--was “relatively small,” the board said. Furthermore, many of those uses were indeed references to the Lakota people.

Furthermore, the board said, “Even assuming all of the third-party uses submitted by applicant have no connection with and do not point to the Lakota people, this is still not determinative.” The fact that unrelated third party uses might exist did not weigh against a finding that Pederson's use did uniquely identify the Lakota people.

Similarly, evidence that there were five trademark registrations using “Lakota” was also insufficient, the board said.

“Even if we presume that each of the third-party registrations should have been refused registration under §2(a), such presumptive errors do not bind the USPTO and dictate that registration of applicant's mark now be granted,” the board said.

Similarly, Pederson's predecessor's--Edward J. Stewart of Vancouver--ownership of four trademark registrations in Canada incorporating “Lakota” were not relevant, the board said. The same was true of a cancelled U.S. trademark registration once granted to Stewart. The cancelled registration was “only evidence that the registration issued and does not afford applicant any legal presumptions,” the board said.

Moreover, the board pointed out, when that registration was issued in 2000, Stewart had specified that the “goods are sold by Lakota Sioux Indians.”

Thus, the board concluded that none of this proffered evidence overturned the finding that “Lakota” uniquely and unmistakably identified the Lakota people.

No Connection Through Licensee

Next the board found that Pederson had no connection to the Lakota people. In reaching that conclusion, the board rejected evidence that a licensee of Pederson, HPI Health Products Inc., which operates the Lakota Herbs website, had connections to organizations geared at preserving the Lakota language.

This chain of connections did not show a commercial connection between Pederson and the Lakota people, the board said. Furthermore, the fact that more than one tribal group identified themselves as members of the Lakota ethnic group did not reduce Pederson's burden. The term applied to all the tribes. The board said:

The charitable donations to the Lakota language preservation organizations made by applicant's licensee do not evidence that either organization authorized the use of the LAKOTA name by applicant or his licensee; nor is there evidence that either of these organizations has the legal capacity to do so. Moreover, even if the donations made by applicant's licensee did constitute a commercial connection, there is no evidence establishing any type of connection between the language preservation organizations and the Lakota tribes. Therefore, applicant has not shown a commercial connection between himself and those organizations, much less the necessary connection with the Lakota people.  

 

Finally, the board found sufficient evidence to establish that the Lakota people are known by the public and that they have a reputation for “healing and herbal remedies” such that Pederson's use of the term “Lakota” would falsely suggest a connection between his herbal products and the Lakota people.

Furthermore, the board found evidence that HPI's packing, advertising, and website reinforced such a false connection by making references to “traditional Native American medicine.” The board thus concluded that Pederson, through HPI, had “intentionally or otherwise, drawn a false association between his goods and members of the Lakota tribes” and affirmed the examiner's refusal to register.

The board's opinion was joined by Administrative Trademark Judges Thomas Shaw and Karen Kuhlke.

Kent Pedersen was represented by Mark J. Masterson of Fay Sharpe LLP, Cleveland. The PTO was represented by Kathleen M. Vanston, trademark examining attorney, Alexandria, Va.

 


Text is available at http://pub.bna.com/ptcj/85328868TTABDec30.pdf.

 

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com