Elisabeth Stecki DBA Whineware

Trademark Trial and Appeal Board

Jan 24, 2019

EX (T.T.A.B. Jan. 24, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 24, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Elisabeth Stecki DBA Whineware
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Serial No. 87215481
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Lori Boatright and Patrick B. Law of Loza & Loza, LLP for
Elisabeth Stecki DBA Whineware.

Ellen J. G. Perkins, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
_____

Before Cataldo, Wellington, and Shaw,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Elisabeth Stecki DBA Whineware (“Applicant”) seeks registration on the Principal
Register of the standard character mark TSA-KIT for “Bottles, sold empty” in
International Class 21.1

1 Application Serial No. 87215481, filed on October 25, 2016, based on Applicant’s allegation
of a first use anywhere and in commerce on October 9, 2016, under Trademark Act Section
1(a),15 U.S.C. § 1051(a). The application, as filed, showed the mark “TSA Kit TSA-Kit”; a
substitute drawing for the mark TSA-KIT was filed by Applicant on November 1, 2016, and
the application was amended accordingly.
Serial No. 87215481
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The Trademark Examining Attorney has refused registration of Applicant’s mark
on the ground that it may falsely suggest a connection with the U.S. Department of
Homeland Security Transportation Security Administration (“TSA”), under Section
2(a) of the Trademark Act, 15 U.S.C. § 1052(a).
When the refusal was made final, Applicant requested reconsideration and filed
an appeal. The Examining Attorney denied the request for reconsideration and the
appeal has been briefed.2 For the following reasons, we affirm the refusal.
I. False Suggestion of a Connection
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). As applied to this case, the Examining
Attorney must show that: (1) Applicant’s mark is the same as, or a close
approximation of, the name or identity previously used by another person or
institution, in this case TSA; (2) Applicant’s mark would be recognized as such, in
that it points uniquely and unmistakably to TSA; (3) TSA is not connected with the
goods offered by Applicant under the mark; and (4) the fame or reputation of TSA is
such that, when Applicant’s mark is used with Applicant’s goods, a connection with
TSA would be presumed. In re Pedersen, 109 USPQ 2d 1185, 1188-89 (TTAB 2013);
In re Jackson Int’l Trading Co., 103 USPQ2d 1417, 1419 (TTAB 2012); see also Univ.

2 In her appeal brief (10 TTABVUE 3-4), Applicant notes that the Examining Attorney
referenced “issues regarding descriptiveness” in the Office Action (issued May 8, 2018)
denying the request for reconsideration. However, as the Examining Attorney explained in
her brief (12 TTABVUE 4), this was an inadvertency and the sole issue on appeal is the false
suggestion of a connection ground for refusal.
Serial No. 87215481
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of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217
USPQ 505, 508-10 (Fed. Cir. 1983) (providing the foundational principles for the
current four-part test used to determine the existence of a false suggestion of
connection).
It is well established that government agencies fall within the scope of such
protectable “persons,” for purposes of Section 2(a)’s prohibition of marks that may
falsely suggestion a connection. See, e.g., In re Peter S. Herrick, P.A., 91 USPQ2d 1505
(TTAB 2009); NASA v. Record Chem. Co. Inc., 185 USPQ 563 (TTAB 1975). Indeed,
the Trademark Manual of Examining Procedure (TMEP) instructs examining
attorneys that “[r]egistration of matter that may falsely suggest a connection with a
United States government agency or instrumentality is prohibited under § 2(a).”
TMEP § 1203.02(c)(ii) (October 2018).
In our determination whether Applicant’s mark may falsely suggest a connection
with TSA, it is important to keep in mind that the rationale behind this Section 2(a)
ground differs significantly from the Section 2(d) ground of likelihood of confusion. As
Professor McCarthy points out, albeit in an inter partes context, “[t]he issue in a
§ 2(a) case is not whether consumers would believe that the defendant’s goods
emanate from the plaintiff [but] whether consumers would falsely assume the goods
had some connection with plaintiff.” 3 McCarthy on Trademarks and Unfair
Competition § 19:76 (5th ed. 2017). While the likelihood of confusion ground is
designed to protect the public from confusion as to the source of goods or services, the
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Federal Circuit has noted that the interests being protected by way of the Section 2(a)
false suggestion of a connection ground are different:
[T]he rights protected under the § 2(a) false suggestion provision are not
designed primarily to protect the public, but to protect persons and
institutions from exploitation of their persona.

Bridgestone/Firestone Research Inc. v. Auto. Club de l’Ouest de la France, 245 F.3d
1359, 58 USPQ2d 1460, 1463-64 (Fed. Cir. 2001), citing to University of Notre Dame,
217 USPQ at 508–09 (“[I]t appears that the drafters sought by § 2(a) to embrace
concepts of the right to privacy,” even in the absence of likelihood of confusion); see
also In re MC MC S.r.l., 88 USPQ2d 1378, 1380 (TTAB 2008).
We now apply the four-part test used to determine the existence of a false
suggestion of connection to the facts of this appeal.
1. TSA-KIT is the same as or a close approximation of TSA
The record shows that the Transportation Security Administration is formally and
informally abbreviated to “TSA,” and is a sub agency of the U.S. Department of
Homeland Security.3 TSA was created “in the wake of 9/11” and “vets 100 percent of
all passengers into, out of, and with the United States.”4

3 From the U.S. government website, www.dhs.gov, printouts attached to Office Action issued
on February 13, 2017, at TSDR p. 3-4. This frequent use of the abbreviation TSA is also
evidenced in the U.S. government website www.tsa.gov printouts attached to Applicant’s
response filed on August 3, 2017.
4 Id.
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We find the mark TSA-KIT is clearly a close approximation of TSA. The mark
contains the agency’s name followed by –KIT; the latter element merely describes the
manner in which the goods are being sold, i.e. as a kit.5
2. TSA-KIT will be recognized as pointing uniquely and unmistakably to TSA
Applicant seeks registration of TSA-KIT for “bottles, sold empty.” As the record
amply demonstrates, certain travel goods, including goods very similar to Applicant’s,
are sold by third parties and advertised as being compliant with TSA travel
regulations.6 For example:
7 8 9

5 Applicant’s own website describes her goods as a “kit” that includes bottles, funnel, towel,
etc. Printout attached to February 13, 2017 Office Action, TSDR p. 8.
6 Internet printouts from various retail websites depicting the goods are attached to Office
Actions issued on February 13, 2017 and May 8, 2018. Applicant also submitted similar
internet evidence with her response filed August 13, 2017 and the request for reconsideration
filed on March 14, 2018.
7 February 13, 2017 Office Action, TSDR p. 6.
8 Id.
9 Id. at p. 7.
Serial No. 87215481
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.10
Indeed, Applicant highlights one feature of her bottles is that they meet the TSA
“standard for contents allowable by law”:
.11
This evidence overwhelmingly supports the finding that Applicant’s mark will be
understood by consumers as pointing uniquely and unmistakably to the government
agency, the TSA. Consumers will immediately understand the significance of this
reference in Applicant’s mark.

10 May 8, 2018 Office Action, TSDR p. 10.
11 Id. at pp. 8-9.
Serial No. 87215481
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Applicant acknowledges the aforementioned evidence and that it shows “sellers of
personal products routinely needed while traveling sell products called ‘TSA Safe,’
‘TSA Friendly’ or ‘TSA Compliant’ to state that the size/nature meets with TSA rules,
be it amounts of liquids, transparency of cosmetic holders, or approved alcohol
allotments.” Applicant concludes “[t]hese are commonly understood meanings to
which the TSA does not object.” However, the third-party use of TSA to provide
information about its goods appears to be just that – for informational use in
connection with the goods. Applicant, on the other hand, seeks to adopt TSA as part
of her mark and, in doing so, the implication is that TSA has some affiliation with
Applicant. Consumers may falsely believe TSA has some connection with the goods;
for example, consumers may believe, incorrectly, that TSA has specifically approved
Applicant’s goods or has certified the goods as being compliant with its regulations.
Applicant also argues:
There is no question that Applicant’s mark is a “play” on the acronym TSA
– and that the purchasing public “knows” that TSA in the particular
context references “the TSA” even as it knows that the TSA neither sells
nor sponsors novelty products. Logic suggests that the TSA would be even
less inclined to sell Applicant’s product in that TSA-KIT is actively
marketed as, and the packaging states, that the bottles are for “Travel
Sufficient Alcohol.” Applicant would argue that “TSA” is more aptly
understood to reference the myriad of rules air travelers must abide by to
comply with “TSA” requirements, but ultimately Applicant concedes the
TSA reference for this purpose. Where the Applicant and “the Office”
disagree is on one salient and critical issue: Applicant’s mark does not
falsely suggest a connection to the TSA.

Contrary to Applicant’s argument, there is no evidence to suggest that anyone
encountering Applicant’s mark, by itself, in connection with the identified goods
would understand TSA to mean “travel sufficient alcohol.” Although Applicant may
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in fact advertise the goods as being used for carrying alcohol or include that phrase
on its packaging, the phrase “travel sufficient alcohol” is not part of the applied-for
mark. We cannot assume that the phrase “travel sufficient alcohol,” will always
appear on the goods, or packaging or advertisements for the goods. Nor is there any
evidence to suggest that consumers are already familiar with TSA being an
abbreviation for “travel sufficient alcohol.” Consequently, Applicant’s argument that
her mark would be perceived as a “parody” is without support and is not persuasive.
Applicant’s contention that the “purchasing public” is aware “that the TSA neither
sells nor sponsors novelty products” also misses the point. As already stated, there is
no need that TSA make or sell related goods; rather, the issue is whether consumers
would assume the bottles have some connection with plaintiff. Because TSA is
uniquely involved in the regulation of what may be legally transported by travelers,
it is likely that the inclusion of TSA in Applicant’s mark on goods designed to comply
with TSA’s regulations will falsely suggest a connection with the governmental
agency. Even if consumers do not mistakenly believe that TSA is the actual source or
manufacturer of the goods, the inclusion of TSA in the applied-for mark may falsely
suggest an affiliation between TSA and Applicant, or that TSA has formally approved
or certified the goods as being compliant with TSA’s regulations.
The circumstances in this appeal are thus readily distinguishable from those in
FBI v. Societe: M. Bril & Co., 172 USPQ 310 (TTAB 1971), a decision cited by
Applicant in her brief. In FBI, although the Board found it would be “unreasonable”
for consumers to believe that Applicant’s clothing bearing the mark FBI
Serial No. 87215481
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FABRICATION BRIL INTERNATIONAL would be associated with the Federal
Bureau of Investigation (FBI), the Board observed that it was “most significant” that
consumers would encounter the entire mark and that the latter three elements of the
mark “serve[] to explain how the letters ‘FBI’ were conceived by applicant.” Id. at 315.
In the matter at hand, there are no additional elements in Applicant’s mark to offer
an alternative meaning of TSA and, for the reasons given above, it would not be
“unreasonable” for consumers to assume that TSA is associated with empty bottles
used for storing liquids when traveling.
3. TSA is not connected with the goods offered by Applicant and TSA’s fame is
such that a connection with TSA would be presumed.

As to the remaining two criteria for finding false suggestion of a connection, there
is no dispute that TSA is not connected with Applicant or the goods offered by
Applicant under the mark. Moreover, there is no dispute as to the fame or reputation
of TSA such that a connection would be presumed. Indeed, the evidence shows that
TSA is well-recognized abbreviation for the governmental agency, particularly in the
travel-related goods industry.
Because Applicant has no connection with TSA, her reliance on the Board’s
decision in In re Los Angeles Police Revolver and Athletic Club Inc., 69 USPQ2d
(TTAB 2003) is misplaced. In that decision, the Board did not find a false suggestion
of a connection when the applicant in that case sought to register TO PROTECT AND
SERVE, the official motto used of the Los Angeles Police Department’s (LAPD),
because “the evidence suggests that there is a substantial commercial connection
between applicant and the LAPD.” Id. at 1633. In other words, the Board did not
Serial No. 87215481
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make the necessary conclusion with respect to the criteria involving no actual
connection between the applicant and the LAPD. In this case, however, there is no
evidence to suggest that Applicant has an actual connection with TSA other than
selling goods that comply with TSA’s regulations.
In conclusion, Applicant’s mark points uniquely to TSA and would be so
recognized; TSA is not connected with Applicant or the goods being sold under the
mark; and the fame or reputation of TSA is such that when Applicant’s TSA-KIT
mark is used with her goods, such a connection would be presumed.
Decision: The refusal to register Applicant’s mark because it falsely suggests a
connection with TSA is affirmed.