Kent Pedersen

Trademark Trial and Appeal Board

Dec 30, 2013

No. 85328868 (T.T.A.B. Dec. 30, 2013)

THIS OPINION IS A
PRECEDENT OF THE TTAB

Mailed: December 30, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Kent Pedersen
_____

Serial No. 85328868
_____

Mark J. Masterson and Sandra M. Koenig for Kent Pedersen.

Kathleen M. Vanston, Trademark Examining Attorney, Law Office 107 (J. Leslie
Bishop, Managing Attorney).
_____

Before Kuhlke, Shaw and Kuczma, Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Kent Pedersen (“applicant”), appeals from the final refusal to register the
following mark in standard character format:

for the following goods:
Medicinal herbal remedies, namely echinacea; amino acid
supplements for nutritional purposes; medicinal herbal
preparations for the treatment of hair, skin and nails;
medicinal herbal preparations for the treatment of pain;
medicinal herbal preparations for the treatment of muscle
and joint pain; medicinal herbal preparations for the
treatment of arthritis; medicinal herbal preparations for
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the treatment of joint cartilage degeneration; medicinal
herbal preparations for the treatment of prostate
malfunction; medicinal herbal preparations for the
treatment of colds; medicinal herbal preparations for the
lubrication of joints; medicinal herbal preparations for the
prevention of flu; medicinal herbal preparations for the
treatment of pain in animals; liniments; vitamin
supplements; medicinal herbal preparations for the
treatment of diabetic related pain; medicinal herbal
preparations for the treatment of neuropathic related
pain; topical analgesics; mineral supplements in Class 5.1
The examining attorney issued a final refusal to register the mark pursuant
to Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), because the applied-for
mark consists of or includes matter which may falsely suggest a connection with the
Native American Lakota people.
After the refusal was made final, applicant appealed and filed a request for
reconsideration which was denied. Applicant and the examining attorney have filed
briefs. For the reasons set forth below, the refusal to register is affirmed.
Evidentiary Issues
Applicant submitted Exhibits Y and Z with its appeal brief. These Exhibits,
which were not previously submitted, consist of copies of the court docket sheet for
the lawsuit entitled Oglala Lakota Delegation of the Black Hills Sioux Nation
Treaty Council et al. v. United States of America et al., Civil Action No. CV-09-8196-
PCT-FJM, filed in the District Court for the District of Arizona, and the March 24,
2010 Order entered in that case. Generally, materials not previously made of
record during prosecution of an application are untimely if submitted for the first

1 Application Serial No. 85328868 filed May 24, 2011, by Kent Pedersen, a Canadian
citizen, under Sections 1(b) and 44(e) of the Trademark Act, 15 U.S.C. §§ 1051(b) and
1126(e), based on Canadian Trademark Registration No. TMA643,850 issued July 7, 2005.
Serial No. 85328868

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time at briefing and will not ordinarily be considered by the Board. See Trademark
Rule 2.142(d), 37 C.F.R. § 2.142(d), and TBMP § 1203.02(e) (3d ed. rev.2 2013).
Nor does this untimely evidence fall under an exception by which we would
treat the evidence as being of record, e.g., if the examining attorney (1) did not
object to the new evidence, and (2) discussed it or otherwise affirmatively treated it
as being of record. See TBMP § 1207.03. Although the examining attorney did not
object to the late-filed evidence, she did not discuss it or otherwise treat it as being
of record. Additionally, inasmuch as the examining attorney submitted evidence
pertaining to the lawsuit with the June 11, 2012 final Office Action, applicant had
the opportunity to submit such evidence with its Request for Reconsideration.
Accordingly, Exhibits Y and Z attached to applicant’s Appeal Brief are untimely and
have not been considered in arriving at our decision.
False Suggestion of a Connection
The issue presented in this appeal is whether applicant’s LAKOTA mark for
medicinal herbal remedies falsely suggests a connection with a particular group of
Native American people within the meaning of § 2(a) of the Trademark Act, 15
U.S.C. § 1052(a).
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;
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(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.
In re Jackson Int’l Trading Co., 103 USPQ2d 1417, 1419 (TTAB 2012); Buffett v.
Chi-Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985); In re Cotter & Co., 228 USPQ 202,
204 (TTAB 1985); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 509 (Fed. Cir. 1983) (providing
foundational principles for the current four-part test used by the Board to
determine the existence of a false connection).
A. Whether LAKOTA is the same as or a close approximation of the name or
identity previously used by another person or institution
Turning to the first factor, we look to the meaning of the term LAKOTA and
then determine whether, according to that meaning, the term LAKOTA identifies a
person or institution.
(1) The meaning of LAKOTA
The examining attorney contends that LAKOTA identifies Native American
peoples who are part of the Native Americans collectively recognized by the United
States government as the Sioux Indian tribe. In support of this meaning, the
examining attorney submitted dictionary definitions reflecting that LAKOTA
identifies the members of a certain group of Native Americans:
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● n. a member of the large western branch of Sioux people which was
made up of several groups that lived on the plains.
http://www.vocabulary.com/definition/Lakota2

● noun. 1: a member of a western division of the Dakota peoples;
2: a dialect of Dakota
http://www.merriam-webster.com/dictionary/lakota3

● noun. 1. pl. Lakotas, Lakota a member of the westernmost branch of
the Dakotas; 2. The group of dialects of Dakota spoken by the Lakotas
http://www.yourdictionary.com/lakota4

Applicant’s evidence such as Wikipedia’s “List of Languages by Name,” also
recognizes LAKOTA as a language.5 Applicant contends that his evidence, as well
as that submitted by the examining attorney, shows LAKOTA is subject to multiple
interpretations that primarily identify a language.6 Applicant thus argues because
LAKOTA is primarily a dialect or language, the term on its face cannot point
uniquely and unmistakably to a person or institution. Moreover, even if the other

2 See Attachment No. 1 to November 21, 2011 Office Action.
3 See Attachment No. 1 to June 11, 2012 Final Office Action.
4 See Attachment No. 4 to June 11, 2012 Final Office Action.
5 See page 8 of 18 of the partial “List of languages by Name” from
http://en.wikipedia.org/wiki/List_of_languages_by_name attached as Exhibit A to May
21, 2012 Response to Office Action. Applicant represents that the Exhibit A attached to its
brief “was previously made of record as Exhibit A to the Response to Office Action dated
May 21, 2011 [sic].” Appeal Brief p. 6. However, the copy of Exhibit A attached to
applicant’s Appeal Brief bears a more recent print date than the Exhibit A submitted with
the May 21, 2012 Response to Office Action. The Board discourages attaching previously
filed exhibits to an appeal brief because it is duplicative and requires review to determine
whether it is the same as the previously filed exhibit. In this instance, the document is not
the same, as it bears a different print date, indicating that it is, at a minimum, an updated
version of Exhibit A submitted during prosecution. In view thereof, the document attached
to the brief was not previously of record and is untimely. Because the examining attorney
did not rely on or address this particular document we have not considered it. We have, of
course, considered the Exhibit A attached to applicant’s Response.
6 Applicant Appeal Brief pp. 6-7.
Serial No. 85328868

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definitions7 are taken into account, according to applicant, it is not appropriate to
pick which definition should be followed as the term cannot possibly point “uniquely
and unmistakably” to a person or institution when the evidence clearly shows that
the term is subject to multiple definitions, which we construe to mean the term has
multiple meanings, some of which do not identify a person or institution but
something else, such as a language.8
Inasmuch as dictionary definitions can be enough to demonstrate that an
applied-for mark identifies a particular person or institution, the examining
attorney has more than carried the initial burden of showing that LAKOTA is the
same as or a close approximation of the name or identity previously used by
another. In re White, 80 USPQ2d 1654, 1658 (TTAB 2006) (hereafter “White II”);
Cotter, 228 USPQ at 204-05 (relying on dictionary definitions to find that despite
having more than one meaning, the term WEST POINT has “come to be closely
associated with and points uniquely to the United States Military Academy”). 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. See White II, 80 USPQ2d at 1659
(MOHAWK found to point uniquely and unmistakably to the Mohawk tribe even
though the term identifies both the people and the language spoken by the tribe).

7 The other definitions referenced by applicant during prosecution appear to be connected to
the Lakota people or language.
8 Applicant Appeal Brief pp. 6-7, 15.
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Based on the foregoing, we reject applicant’s argument that because the term
LAKOTA identifies a language, it does not approximate the name or identity of a
people or institution.
Additional evidence submitted by the examining attorney providing a
historical overview of the transitions of the Lakota people from the early 1800’s to
the present establishes their identity as “Lakota.” In 1825, the United States
adopted the name “Sioux” to officially recognize a confederacy of tribes having
similar languages, including the Lakota people. A subgroup of the people identified
by the United States as the Sioux Nation, specifically, the western Sioux, referred to
themselves then and now as Lakota.9
The Lakota people are part of the confederation of tribes that speak three
different dialects: Lakota, Dakota and Nakota. The Lakota are the largest and
most western of the three groups, occupying lands in both North and South
Dakota.10 Around the middle of the eighteenth century, the Lakotas migrated west
in pursuit of buffalo when European fur traders began to decimate the eastern

9 Page 934, Tiller’s Guide to INDIAN COUNTRY, Economic Profiles of American Indian
Reservations edited and compiled by Veronica E. Velarde Tiller, BowArrow Publishing
Company, Albuquerque, NM; © 2005 by Veronica E. Velarde Tiller (hereafter “Tiller’s
Guide”), Attachment No. 7 to November 21, 2011 Office Action. The people of the Sioux
Nation refer to themselves as Lakota, Nakota or Dakota; the word Sioux is not actually part
of the Lakota vocabulary. Id.
10See http://crystalinks.com/sioux.html and http://www.lifeinitiativesinc.org/lakota.html,
Attachment Nos. 5 and 41-42, respectively, to June 11, 2012 Final Office Action. The seven
subtribes of the Lakota are the Oglala, Sicangu or Brule, Hunkpapa, Miniconjou, Sihasapa
or Blackfeet, Itazipacola (a/k/a Sans Arc) and Ouhenopa. Id.
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buffalo herds. The Lakotas began to actively resist immigration when settlers
began arriving in large numbers, sometime during the mid-1800’s.11
Red Cloud, a Lakota leader, was so successful in his military campaigns
against the United States that they led to the Treaty of Fort Laramie between the
United States and the Lakota Nation in 1868, guaranteeing the Lakota specific
sections of land in and adjacent to the Dakotas.12
In 1876, at the Battle of the Little Bighorn, the Lakota, led by Chief and
Medicine Man Sitting Bull and by Crazy Horse, a warrior committed to preserving
the Lakota way of life, joined with the Arapaho and Cheyenne nations to defeat
General George Armstrong Custer and the Seventh U.S. Calvary who had been
protecting the miners in the Black Hills of South Dakota. Because General Custer
and nearly all of his troops perished there, this battle is known as “Custer’s Last
Stand.” This legendary event led to a resumption of the Plains Wars and the
dispersal of many Lakotas to Canada. In 1889, the Pine Ridge Reservation and
Rosebud Reservation were established by an Act of Congress as a home for the
Oglala Lakota Sioux and the Sicangu Lakota Oyate, respectively.13 By the end of
1890, after the killing of Sitting Bull at Standing Rock and the Massacre at
Wounded Knee at Pine Ridge, the Sioux, as the federal government officially

11 Tiller’s Guide p. 937, Attachment No. 10 to November 21, 2011 Office Action.
12 See Tiller’s Guide pp. 931 and 937, Attachment Nos. 4 and 10 to November 21, 2011
Office Action and http://www.crystalinks.com/sioux.html, Attachment Nos. 8-10 to June
11, 2012 Final Office Action.
13 Tiller’s Guide pp. 931 and 934, Attachment Nos. 4 and 7 to November 21, 2011 Office
Action.
Serial No. 85328868

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referred to the various tribes, had been relocated to the reservations recognized by
the federal government today.14
The majority of Lakota Indians currently reside on one of five federally
recognized Indian reservations situated in the Dakotas, namely the Pine Ridge
Reservation, Rosebud Reservation, Standing Rock Reservation, Cheyenne River
Reservation and the Lower Brule Reservation.15
Reservation names determined by the United States government often
reflected the geography of the region where the reservation was located and not
necessarily the name of the tribe inhabiting those areas. See In Re White, 73
USPQ2d 1713, 1719 (TTAB 2004) (hereafter “White I”) (“the geographic terms in
many of the tribes’ names . . . may not be as integral to the identity or persona of
each tribe, when these terms may merely reflect locations the tribes were relocated
to by government action, rather than choice”). For example, the Pine Ridge
Reservation, established by an Act of Congress in 1889 as a home for the Oglala
Lakota, is so named because the reservation is transected with ridges dotted with
spotted pine. The Rosebud Reservation, home to the Sicangu Lakota Oyate, is so
named due to the abundance of wild rosebuds that grew in the vicinity. The
Standing Rock Reservation of the Hunkpapa and Blackfeet subtribes of the Lakota

14 Tiller’s Guide p. 937, Attachment No. 10 to November 21, 2011 Office Action and
http://cyrstalinks.com/sioux.html, Attachment Nos. 5-7 to June 11, 2012 Final Office
Action.
15 See http://www.indians.org/articles/lakota-indians.html, Attachment No. 1 to the
December 13, 2012 Request for Reconsideration Denied and Tiller pp. 931-940, Attachment
Nos. 4-13 to the November 21, 2011 Office Action.
Serial No. 85328868

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incorporates badlands which typically feature rock formations.16 Lakota, therefore,
refers to a Native American people living primarily on five federally recognized
tribal sites, notwithstanding the decision of the United States government to call
them Sioux and identify their federally recognized tribal entities using geographic
indicators.17
According to the Tiller’s Guide research publication, and the Internet
passages and dictionary references submitted by the examining attorney, members
of the Lakota tribe speak the Lakota language, which is a dialect of the Sioux tribal
group.18 Thus, the term LAKOTA “identifies” both the language and the people also
known as the western Sioux.
(2) Does LAKOTA identify a person or institution contemplated by § 2(a)?
Section 45 of the Trademark Act, 15 U.S.C. §1127, broadly defines the terms
“person” and “juristic person.” Accordingly, § 2(a) has been held to apply to
commercial juristic persons, as well as natural persons.19 Notre Dame, 703 F.2d at

16 Tiller’s Guide pp. 931, 934, 937, Attachment Nos. 4, 7, 10 to November 21, 2011 Office
Action.
17 The following are listed as federally recognized Indian Tribal Entities: Lower Brule Sioux
Tribe of the Lower Brule Reservation, South Dakota; Cheyenne River Sioux Tribe of the
Cheyenne River Reservation, South Dakota; Oglala Sioux Tribe of the Pine Ridge
Reservation, South Dakota; Rosebud Sioux Tribe of the Rosebud Indian Reservation, South
Dakota; and Standing Rock Sioux Tribe of North & South Dakota. See list of Recognized
Indian Entities published in Federal Register Vol. 75 No. 190 pp. 60810-60814 and as
supplemented at Vol. 75 No. 207 p. 66124, attached as Exhibit B to the May 21, 2012
Response to Office Action. The majority of the members of the seven Lakota subtribes are
located on the foregoing five reservations. See note 15 supra.
18See http://www.indians.org/articles/lakota-indians.html, Attachment No. 1 to the
December 13, 2012 Request for Reconsideration Denied.
19 As the three grounds for refusal of registration under § 2(a) of the Trademark Act, i.e.,
matter which disparages, matter which falsely suggests a connection and matter which
brings one into contempt or disrepute, all derive from the same subsection and all require a
Serial No. 85328868

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1375, 217 USPQ at 508. The term “institutions” has also been broadly construed.
See In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1219 (Fed. Cir.
2009) (“[T]he ordinary meaning of ‘institution’ suggests the term is broad enough to
include a self-governing Indian nation,” quoting Black’s Law Dictionary . . . defining
“institution” as “[a]n established organization,” and “organization” as a “body of
persons ... formed for a common purpose”); White I, 73 USPQ2d at 1718, (“each
federally recognized Apache tribe is necessarily either a juristic person or an
institution”); In re Urbano, 51 USPQ2d 1776, 1779 (TTAB 1999) (entire
organization comprising the Olympic Games, as a whole, qualifies as an
“institution” within the meaning of § 2(a)); In re North American Free Trade
Association, 43 USPQ2d 1282, 1285 (TTAB 1997) (NAFTA treaty is an institution in
the same way the United Nations is an institution; legislative history of § 2(a)
indicates the reference to “institution” therein “was designed to have an expansive
scope”). See also, Order Sons of Italy in America v. Memphis Mafia Inc., 52
USPQ2d 1364, 1369 (TTAB 1999) (where fraternal association brought cancellation
alleging disparagement, Board considered whether involved mark was disparaging
“either to members of the Order or Italian-Americans in general”); In re In Over Our
Heads Inc., 16 USPQ2d 1653, 1654 (TTAB 1990) (reversing refusal of registration of
MOONIES and design on the ground that mark was disparaging of members of The
Unification Church).

connection of the matter refused registration with “persons, institutions, beliefs or national
symbols,” we may look to prior cases involving any one of these refusals to determine the
threshold question in this case, i.e., whether LAKOTA falsely suggests a connection with
“persons” or “institutions.” White I, 73 USPQ2d at 1717.
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Finally, in another case involving various claims under § 2(a), and in the
context of discussing the disparagement claim, the Board explained:
Who comprises the targeted, or relevant, group must be
determined on the basis of the facts in each case. For
example, if the alleged disparagement is of a religious
group or its iconography, the relevant group may be the
members and clergy of that religion; if the alleged
disparagement is of an academic institution, the relevant
group may be the students, faculty, administration, and
alumni; if the alleged disparagement is of a national
symbol, the relevant group may be citizens of that
country.
Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1739 (TTAB 1999), reversed on other
grounds, Pro-Football Inc. v. Harjo, 284 F.Supp.2d 96, 68 USPQ2d 1225 (D. D.C.
2003). Thus, persons and institutions as contemplated in § 2(a) may include groups
of persons and individual members of a group such as the members of an Indian
tribe having a common heritage and/or speaking a common language.
According to applicant, because LAKOTA is not identified on the federally
recognized list of “Indian Entities Recognized and Eligible To Receive Services From
the United States Bureau of Indian Affairs,” LAKOTA does not identify a Native
American tribe and, therefore, does not identify a person or institution within the
meaning of § 2(a).20 Applicant notes the Board’s past reliance on inclusion on the
government’s list and points to the omission of the Lakota tribes on the list to
support his position.21

20 Applicant Appeal Brief p. 7.
21 See list of Indian Entities Recognized and Eligible To Receive Services From the United
States Bureau of Indian Affairs published in the Federal Register Vol. 75 No. 190 pp.
60810-60814 and as supplemented at Vol. 75 No. 207 p. 66124, attached as Exhibit B to the
May 21, 2012 Response to Office Action.
Serial No. 85328868

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Previously, the Board has deemed the listing of a name as a federally
recognized Indian Entity as evidence that the name identifies a Native American
person or institution.22 See White II, 80 USPQ2d at 1658, (MOHAWK for cigarettes
falsely suggests a connection with the federally recognized tribe the “St. Regis Band
of Mohawk Indians of New York”); White I, 73 USPQ2d at 1718, (APACHE for
cigarettes falsely suggests a connection with the nine federally recognized Apache
tribes).
While inclusion on this list may satisfy the first and second prongs of the
false connection test, the converse is not necessarily true. That is, omission from
the list of federally recognized Indian Entities does not dictate that a name fails to
identify persons or institutions. See White II, 80 USPQ2d at 1658, (Board not
persuaded by argument that MOHAWK does not point uniquely and unmistakably
to the Mohawk tribe because there is no federally recognized Mohawk tribe and the
only federally recognized tribe is the St. Regis Band of Mohawk Indians of New
York). Although in White II, the Mohawk name appeared as part of a name on the
federally recognized list of Indian Entities and in this case Lakota does not so
appear, we see no reason that this fact per se requires us to conclude that the name
fails to identify a person(s) or institution(s). Numerous dictionaries, as well as the
Tiller’s Guide treatise relied on by the Board in prior cases, recognize LAKOTA as a
particular group of Native American people. Additionally, a host of websites,

22 We also note that a “federally recognized Indian tribe, organized under the laws of the
United States, is an acceptable designation of an applicant’s entity” in connection with
procuring a U.S. trademark registration. See TMEP § 803.03(j) (April 2013).
Serial No. 85328868

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including sites concerning the culture and news pertaining to Native Americans,
and/or offering products for sale, utilize LAKOTA to identify and refer to the people
from the Lakota Nation of Native Americans.23 Thus, the fact that LAKOTA is not
listed as a federally recognized Indian Entity cannot alone establish that LAKOTA
fails to identify the Native American Lakota people. To the contrary, in view of the
evidence, we find the term LAKOTA identifies a particular group of Native
American persons or institutions despite the fact that the LAKOTA name is not
listed as a federally recognized Indian Entity.24
The term LAKOTA need not be the legal name of the party falsely associated
with applicant’s mark to preclude registration by applicant. See, e.g., Hornby v. TJX
Companies Inc., 87 USPQ2d 1411, (TTAB 2008) (respondent’s “Twiggy” mark
falsely suggested connection with petitioner who was given the nickname of
“Twiggy” when a teenager, and was known by that name both personally and as a
professional model); Urbano, 51 USPQ2d at 1780, (SYDNEY 2000 falsely suggested
connection with Olympic Games to be held in Sydney, Australia); In re Sauer, 27
USPQ2d 1073, 1074 (TTAB 1993) (“Bo” widely recognized and used as Bo Jackson’s
nickname such that when “Bo Ball” and design mark is used on applicant’s goods,

23 See section A(3) infra.
24 That the LAKOTA name identifies persons from more than one tribe does not negate the
uniqueness of the name. Noting that the statute utilizes the plural for the terms “persons”
and “institutions” and “clearly contemplates refusal of matter that would falsely suggest a
connection with multiple persons, whether natural or juristic, or with multiple
institutions,” the Board determined that the nine federally recognized Apache tribes were
persons or institutions for purposes of its § 2(a) analysis. See White I, 73 USPQ2d at 1717-
1718. Similarly in this case, the Lakota tribes are related as they speak the Lakota
language and share a common history.
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purchasers are likely to make a connection between him and applicant’s products);
Board of Trustees of the University of Alabama v. BAMA-Werke Curt Baumann, 231
USPQ 408, 411 (TTAB 1986) (University, having demonstrated that BAMA was its
well-known nickname, prevailed on its claim of false suggestion of a connection);
Buffett, 226 USPQ at 430, (close association of term MARGARITAVILLE with
public persona of opposer warranted denial of summary judgment against opposer).
Accordingly, we find LAKOTA identifies a historic people who speak the
Lakota language and share a single Native American heritage. Therefore, LAKOTA
identifies a “person(s)” or “institution(s)” as contemplated by § 2(a).
(3) Applicant’s argument that no entity exists with superior rights in the
LAKOTA mark

Applicant additionally argues that the refusal is incorrect because the
examining attorney failed to prove the existence of any entity having the authority
to affirm or authorize the use of LAKOTA as a trademark.25 According to applicant,
any passing mention of a tribal group in the examining attorney’s evidence does not
show that the group so referenced has authority to license, assign or otherwise
transfer rights in the LAKOTA designation.26 Applicant’s argument misses the
mark. 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

25 Applicant Appeal Brief pp. 15, 17.
26 Applicant Appeal Brief p. 16.
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trademark use. Cf. Notre Dame, 703 F.2d at 1375, 217 USPQ at 508-509; Buffett,
226 USPQ at 429.
Relying on the Board’s decision in In re MC MC S.r.l., 88 USPQ2d 1378
(TTAB 2008), applicant argues that the examining attorney’s failure to prove the
existence of a juristic entity or successor who is entitled to assert the right to use
the designation means no party exists which could own a protectable interest in the
LAKOTA name.27 Applicant’s reliance on the MC MC case is misplaced. The issue
in MC MC was whether there were any successors entitled to assert rights under
§ 2(a) on behalf of Maria Callas, a famous opera singer who was deceased. Here,
the group of persons who could assert rights in the LAKOTA name, unlike the
deceased person in the MC MC case, constitutes living Native American Lakota
people. Thus, they are endowed with proprietary rights under § 2(a) by virtue of
their status as members of the Lakota tribe. Compare with White II, 80 USPQ2d at
1660-61 (application to register MOHAWK by single member of Mohawk tribe
refused in absence of specific commercial connection for involved goods between
tribe and applicant under the third factor).
That there is no evidence of any juristic entity having superior rights in the
LAKOTA trademark is not relevant to our analysis. Rather, the lack of proof of
such a juristic entity merely requires the examining attorney to provide some other
proof that the term in question identifies a person(s) or institution(s). Even in the
absence of a juristic entity with superior rights in the LAKOTA mark, Lakota is a

27 Applicant Appeal Brief p. 18.
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spoken language and identifies the group of people who speak that language. As
such, the members of the Lakota-speaking group constitute “persons” contemplated
in § 2(a) and as that term is defined in § 45 of the Trademark Act.28
In addition to identifying a language, the evidence shows that the LAKOTA
name continues to be used both by the Lakota people to identify themselves and by
others to refer to this Native American group and their culture.29 In 1971, the
Oglala Sioux Tribal Council chartered the Lakota Higher Education Center, a
school which emphasizes retaining traditional Lakota values, linguistic skills and
cultural heritage.30 The Rosebud Sioux Tribe (i.e., Sicangu Lakota Oyate tribe)
opened a tourism office in 1994 to oversee development opportunities and the
interpretation of Lakota culture for non-Indian visitors to tribal land.31
In 2009, after a tragedy resulting in the deaths of three people, it was
reported that the Lakota Nation filed suit against “self-help guru” James Arthur
Ray and the Angel Valley Retreat Center, alleging that Ray violated the peace
between the government and the “Sovereign Lakota Nation” by impersonating an
Indian and by abusing the cultural property of the Lakota people when he
conducted a “sweat lodge” ceremony that lead to the deaths. The plaintiffs in the
suit contended that under the customs, traditions and cultural values of the Lakota

28 15 U.S.C. § 1127 (“Person, juristic person. . . . includes a juristic person as well as a
natural person.”).
29 That Lakota has survived as a spoken language is but one basis for reaching the
conclusion that LAKOTA identifies a Native American group and their culture.
30 Tiller’s Guide p. 933, Attachment No. 6 to November 21, 2011 Office Action.
31 Tiller’s Guide p. 935, Attachment No. 8 to November 21, 2011 Office Action.
Serial No. 85328868

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people, the sacred “sweat lodge” ceremony practiced by Ray is a way of life that was
desecrated.32
In 2011, it was also reported that representatives of the Lakota tribes
participated in a summit to protest the construction of the tar sands Keystone XL
oil pipeline across lands secured to the “Lakota Nation.” Debra White Plume,
identified as a Lakota activist, attended the summit, maintaining that the
construction of the pipeline is a continuation of the destruction of her culture and
her nation, and will “be genocide for our Oglala Lakota people.”33
Letters posted on the website of applicant’s licensee show that certain Native
Americans continue to be identified under the LAKOTA name. One such letter
expresses gratitude to applicant’s licensee for its “committed support of the Lakota
people” while a second letter observes “. . . the elders and others in the community
are in agreement that the loss of the [Lakota] language is both a symptom and a
cause of the collapse of a strong, functional Lakota society.”34 Prior email
communications from June 2010 through July 2012 by the Lakota Language
Consortium with applicant’s licensee similarly express appreciation for “support of

32 See http://dontpaytopray.blogspot.com/2009/11/lakota-nation-calls-james-arthur-ray-
on.html; http://nicdhana.blogspot.com/2009/11/lakota-nation-files-lawsuit-against.html;
http://skywriter,wordpress.com/2009/11/18/lakota-nation-files-lawsuit-against-parties-
in-sweat-lodge-incident/, Attachment Nos. 51-53 to June 11, 2012 Final Office Action and
Attachment Nos. 6-7, 18-19, 21-22 to December 13, 2012 Request for Reconsideration
Denied.
33 See http://www.nativenewsnetwork.com/lakota-tribes-refuse-to-cooperate-with-tar-sands-
proponents.html, Attachment Nos. 23-28 to December 13, 2012 Request for Reconsideration
Denied.
34 See Exhibits A-C to Haukenfrers Declaration attached as Exhibit T to December 4, 2012
Request for Reconsideration.
Serial No. 85328868

19

the Lakota people” and advises that “Lakota Sioux make up the majority of the
Consortium leadership.”35 Additionally, the Life Initiatives website features a
“Lakota History” link that contains a narrative on the history of the Lakota people,
concluding with “[B]ut the Lakota people are here, still proud, still strong, still
surviving, in the face of inestimable difficulties. And the victory of a better life will
come.”36
Despite the fact that LAKOTA is not the name of a listed federally-recognized
tribe, the evidence, including the public activities engaged in by members of the
Lakota tribes, correspondence sent to applicant by Lakota language preservation
organizations, and coverage of news events involving the Lakota people, shows the
existence of persons who identify themselves and are identified by others as
“Lakota,” speak the Lakota language, and have engaged in activities on behalf of
the tribe and in their individual capacity to protect the land and culture of the
Native American Lakotas. In view of this evidence, the term LAKOTA identifies
“persons” or “institutions” as contemplated under § 2(a). Therefore, applicant’s
proposed mark LAKOTA is identical to the name that identifies the Lakota people
and language.

35 See Exhibit D to Haukenfrers Declaration attached as Exhibit T to December 4, 2012
Request for Reconsideration.
36 See http://www.lifeinitiativesinc.org/lakota.html printed June 11, 2012 and bearing
“Copyright notice © 2010-2012 Life Initiatives (at P.O. Box 7505, Rapid City, SD)”,
Attachment Nos. 41-45 to June 11, 2012 Final Office Action.
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20

B. Does the term LAKOTA point uniquely and unmistakably to the person(s) or
institution(s) known as the Native American Lakota tribes?
Applicant contends that LAKOTA does not point uniquely and unmistakably
to the Native American Lakota people because various unassociated third parties
use the name LAKOTA, there are numerous U.S. trademark registrations for marks
containing the word LAKOTA, applicant himself owns several Canadian trademark
registrations for the term and, his predecessor owned a now-cancelled U.S.
registration for LAKOTA for nearly identical products. A closer review of this
evidence indicates it does not sufficiently rebut the persuasive evidence submitted
by the examining attorney.
(1) Third-party uses
According to applicant, LAKOTA is a commonly used term which does not
point uniquely to Native American person(s) or institution(s) because numerous
third parties that are not associated with any Native American tribe use LAKOTA
as a trademark or trade name for a wide variety of goods and services.37 While the

37 See Applicant Appeal Brief p. 8 and Exhibits D-S attached to May 21, 2012 Response to
Office Action. Two of these sixteen Exhibits have little probative value because the entities
identified in the websites that are depicted in Exhibits O and P, Lakota Drilling (drilling
and boring contractors in Leduc, Alberta) and Lakota Music (“we continue to drive Bristol’s
music scene forward”) respectively, appear to be located outside of the United States and
nothing on the websites indicates they are the type of sites or businesses that would attract
viewers outside of the local areas.
Additionally, while Exhibits D-S appear to be printouts from the Internet, none of these
Exhibits contain the pertinent URL or the date printed information. For the reasons set
forth in TBMP § 1208.03, in ex parte cases, it is preferable that material obtained from the
Internet be identified by the full web address (i.e., the URL) for the web page, and the date
it was accessed and printed. Although the URL and date printed information were not
provided for these Exhibits, the examining attorney did not request the information from
applicant during examination or raise any objection, and generally referred to some of the
Exhibits in her Appeal Brief. Accordingly, we have considered these Exhibits.
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21

record is silent as to whether any type of association exists between those third
parties and the Native American Lakota people, the relatively few (i.e., fourteen)
particular examples of third-party use are not sufficient to defeat the contrary
evidence that there is a unique and unmistakable association of the name LAKOTA
with the Lakota people. The examining attorney’s evidence shows that some uses of
the LAKOTA name directly relate to the Native American Lakota people. For
example, as explained on the website of the city of Lakota, North Dakota, the city
was named by governor N.H. Ordway for the “Lakotah [sic] Indian tribe.”38 Some
business owners also chose the LAKOTA name because of its reference to the Indian
tribe. The Lakota Coffee Company, a third-party user identified by applicant,
explains on its website that its owner was inspired by the “Seven Sacred Campfires,
known as the Western or Teton Sioux, Lakota – meaning ‘friendly people.’”39
Similarly, the owner of the Lakota Bakery chose the name Lakota because she was
“born and raised in South Dakota and Dakota and Lakota are two of the tribes of
Native Americans who live there.”40 Thus, some third-party users of the LAKOTA
name chose the name specifically because of its direct reference to the Lakota
Indian tribe. As noted by the examining attorney, the requirement that the
proposed mark point uniquely and unmistakably to a particular institution or
person does not mean that the term itself must be “unique,” i.e., used exclusively to

38 See http://www.stores.lakotacoffee.com, Attachment No. 16 to June 11, 2012 Final Office
Action.
39 See Attachment No. 17 from http://www.stores.lakotacoffee.com/-strse-
template/about/Page.bok attached to June 11, 2012 Final Office Action.
40 See Attachment No. 68 from http://www.lakotabakery.com/bakery.html, Attachment No.
68 to June 11, 2012 Final Office Action.
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identify the institution or person.41 Rather, the question is whether, as used on the
goods in question, consumers would view the mark as pointing uniquely to the
Lakota people. Hornby, 87 USPQ2d at 1426-27.
Although some third-party uses of LAKOTA directly reference the Lakota
tribe, applicant contends U.S. consumers are so well-accustomed to the use of
LAKOTA as a brand for many different products and services, and as the name for
different places and institutions which do not emanate from Native American
origins, that his LAKOTA mark does not point uniquely or unmistakably to a
particular people or institution.42 However, we lack information to determine
whether the third-party uses identified by applicant are authorized by or affiliated
with the Lakota people. 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 concern in § 2(a) cases involving a false suggestion of a
connection, unlike cases under § 2(d) which are concerned with protection of the
public from confusion, is protection of persons and institutions from unauthorized
exploitation of their personas. Bridgestone/Firestone Research, Inc. v. Automobile
Club De l’Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460, 1464 (Fed. Cir.
2001).43 The concern in this case is protection of the identity of the Lakota people
from use by another without the right to do so. Whether consumers are exposed or
well-accustomed to third-party use of LAKOTA on a host of other products and

41 Examining Attorney’s Brief unnumbered p. 9.
42 Applicant Appeal Brief p. 11.
43 Nor are we concerned in this case with the question whether the Lakota people could, if
they chose to try, establish a superior proprietary trademark right in the term LAKOTA.
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services that are unrelated to applicant’s goods is insufficient to show that
applicant’s LAKOTA mark when used on applicant’s goods does not point uniquely
to the Lakota people.
(2) Third-party registrations and applications
Applicant also submitted evidence of five registrations for marks containing
the word LAKOTA for the following goods and services, none of which is related to
the goods covered in applicant’s application: organizing intercultural events and
exhibitions relating to American Indian culture, granite, tractors and travel
trailers.44 However, third party registrations are not evidence that the marks
depicted therein are in use or that the public is aware of them. In re Opus One Inc.,
60 USPQ2d 1812, 1814 (TTAB 2001) citing Olde Tyme Foods Inc. v. Roundy’s Inc.
961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992); see also In re Helene Curtis Indus.,
Inc., 305 F.2d 492, 134 USPQ 501, 503-504 (CCPA 1962).
Thus, applicant has provided evidence of only four Registrations for LAKOTA
marks that, on their face, have no connection with Native Americans (aside from

44 See Exhibit T attached to applicant’s May 21, 2012 Response to Office Action which
includes evidence of the following Registrations: 3219393 for LAKOTA’S; 3345011 for
LAKOTA TRACTORS; and 3536042 for LAKOTA CROSSINGS. Applicant submitted two
other registrations (Registration Nos. 2607457 for LAKOTA; and 3089672 for LAKOTA
ROSE MADISON) which were cancelled or expired. Moreover, the services recited in
Registration No. 3089672, include “. . . sponsoring, developing and carrying out programs to
educate young people about the culture of the American Indian, and to educate young
American Indians to the American culture.” See Exhibit T to applicant’s May 21, 2012
Response to Office Action. Hence, contrary to applicant’s contention, the services in this
Registration have a direct connection with Native Americans. While the cancelled/expired
registrations do not “provide constructive notice of anything,” they are admissible and we
have considered them for the modest quantum of probative value they may have as to this
factor. Nike Inc. v. Maher, 100 USPQ2d 1018, 1021 (TTAB 2011), quoting, Action
Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed.
Cir. 1989).
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24

the LAKOTA name).45 Applicant did not address the substantive differences
between these four registrations and applicant’s application, most notably, the
differences in goods and services, to explain why these registrations show that his
mark does not falsely suggest a connection with the Lakota people. See Shinnecock,
571 F.3d 1175, 91 USPQ2d at 1221.
Nor has applicant pointed to any case law holding that third-party
applications and/or registrations should be accorded significant weight in an
analysis of a § 2(a) false suggestion refusal and we see no reason to accord
significant weight in this case, where we are unable to conclude that the public is
aware of the marks shown therein. See White II, 80 USPQ2d at 1660. Accordingly,
applicant’s evidence showing third-party uses and registrations for LAKOTA for
goods and services that are unrelated to medicinal herbal remedies have little, if
any, probative value. See Hornby, 87 USPQ2d at 1427 (consumers are likely to
associate clothing and models, and therefore to view the mark TWIGGY as pointing
to petitioner, a former model; three third-party registrations for unrelated goods or
services have no probative value in showing name does not point uniquely to
petitioner). Finally, 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

45 We note that application Serial No. 85524250 for the mark SOUTH LAKOTA submitted
by applicant after the mark was published for opposition, has since been abandoned. The
Board has long held that third-party applications are evidence only of the fact that they
were filed; they have no other probative value. In re Juleigh Jeans Sportswear, Inc., 24
USPQ2d 1694 (TTAB 1992).
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25

when such a grant, on the record before us, would be contrary to applicable law.
Shinnecock, 571 F.3d at 1174, 91 USPQ2d at 1221.
(3) Applicant’s ownership of foreign registrations
Applicant’s ownership of four Canadian trademark registrations for marks
that include the LAKOTA name is not relevant to our consideration of the refusal
under § 2(a) and, accordingly, we give them no consideration. Registration in a
foreign country does not ensure eligibility for registration in the United States as an
applicant here is subject to the bars to registration mandated by U.S. law. In re
Rath, 402 F.3d 1207, 74 USPQ2d 1174, 1179 (Fed. Cir. 2005); In re Mastic Inc., 829
F.2d 1114, 4 USPQ2d 1292, 1293 (Fed. Cir. 1987). Moreover, we fail to see how a
foreign registration bears on the question whether consumers in the U.S. would
view the mark as falsely suggesting a connection with the Lakota people.
Therefore, applicant’s ownership of Canadian registrations offers no support to
overcome the refusal under § 2(a).
(4) Prior U.S. registration of applicant’s predecessor
Neither does the issuance of now-cancelled Registration No. 2308458 for
LAKOTA for vitamin and herbal supplements owned by applicant’s predecessor
support the registrability of the current application.46 The Board is not bound by
the prior decisions of examining attorneys in allowing the foregoing marks for
registration. It has been noted many times that each case must be decided on its
own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.

46 See Applicant Appeal Brief pp. 12-13 and Exhibit U to applicant’s May 21, 2012 Response
to Office Action.
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26

Cir. 2001) (“Even if some prior registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such prior registrations does not
bind the Board or this court.”); and In re Merrill Lynch, Pierce, Fenner & Smith Inc.,
828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987). In view of the foregoing, we
are obligated to assess the registrability of applicant’s mark on its own merits based
on the record in this application and not simply based on the existence of other
registrations. Thus, this cancelled registration is only evidence that the
registration issued and does not afford applicant any legal presumptions under
§ 7(b) of the Trademark Act. See Anderson, Clayton and Co. v. Krier, 478 F.2d 1246,
178 USPQ 46, 47 (CCPA 1973) (statutory benefits of registration disappear when
the registration is cancelled); In re Brown-Forman Corp., 81 USPQ2d 1284, 1286
n.3 (TTAB 2006); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1048 n.2
(TTAB 2002).
Moreover, in response to a refusal to register that LAKOTA mark based on a
false suggestion of a connection under § 2(a), applicant’s predecessor requested
entry of the following amendment: “The goods are sold by Lakota Sioux Indians.”47
Because this amendment identified a direct connection between the Lakota people
and the goods involved in that application, it significantly impacted the
registrability of the LAKOTA mark.48 Indeed, after the amendment was made, the
application was approved for publication. Thus, the statement contained in the

47 See May 7, 1999 Response to the Office Action of November 5, 1998, filed in connection
with Registration No. 2308458, available on the USPTO’s electronic TSDR database.
48 The amendment also constitutes an admission by applicant’s predecessor that a certain
group of Native Americans is identified by the name “Lakota Sioux.”
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amendment is a material factual difference from applicant’s present application.
Applicant’s argument that the issues in this case were already addressed and
decided by the USPTO by virtue of the issuance of Registration No. 2308458 is
disingenuous at best.
While the Board historically has not taken judicial notice of third-party
registrations or USPTO records,49 we find that taking judicial notice of the foregoing
amendment made during the prosecution of Registration No. 2308458 is most
appropriate in the unusual situation that arises in this ex parte case. Applicant has
introduced Registration No. 230845850 and attempts to benefit from its issuance to
his predecessor by arguing that the issuance of that Registration for the LAKOTA
mark “implies that the issue raised herein, namely whether the mark may falsely
suggest a connection with a Native American tribal group, was already addressed
and decided by the [USPTO].”51 By this argument, applicant essentially exploits
the legal presumptions of the validity of the mark and registration under § 7(b) of
the Trademark Act that are afforded to a registration to which it claims a direct

49 See e.g., In re Wada, 48 USPQ2d 1689, 1689 n.2 (TTAB 1998) (request in reply brief that
Board take judicial notice of “thousands of registered marks incorporating the term NEW
YORK for products and services that do not originate in New York state or city” denied),
aff’d, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999); In re Thomas Nelson Inc., 97
USPQ2d 1712, 1717 n.18 (TTAB 2011); Beech Aircraft Corp. v. Lightning Aircraft Co., 1
USPQ2d 1290, 1293 (TTAB 1986) (“[W] e do not take judicial notice of application and
registration files that reside in the Patent and Trademark Office on the basis of their mere
identification in briefs, pleadings and evidentiary submissions.”). Also see, TBMP §§ 704.12
and 1208.04.
50 Registration No. 2308458 is in the record. See Exhibit U to applicant’s May 21, 2012
Response to Office Action which consists of a copy of a Trademark Electronic Search System
(TESS) report for the Registration.
51 See Applicant Appeal Brief pp. 12-13.
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relationship. Under these circumstances, where applicant has relied on the validity
of a registration for the same mark and (essentially the same) goods at issue in this
appeal and to which applicant claims a direct relationship, taking judicial notice of
a material basis for the issuance of that registration as set forth in an amendment
filed during the prosecution of the registration, for the purpose of assessing
applicant’s argument, is both appropriate and in accordance with 37 C.F.R.
§ 2.122(a) and TBMP §§ 704.12(a) and 1208.04.52 Accordingly, the issuance of
Registration No. 2308458 for the LAKOTA mark to applicant’s predecessor does not
support applicant’s position. To the contrary, issuance of the Registration based on
the representation of a direct connection between the Lakota people and the goods
involved in that application, supports the refusal of registration of applicant’s mark
in this case where there is no evidence of a connection between applicant’s goods
and the Lakota people.
In view of the foregoing, applicant’s third-party evidence fails to show that
LAKOTA does not point uniquely and unmistakably to persons or institutions
known as the Lakota.
C. Whether the Lakota people are connected with the sale of applicant’s goods
Applicant’s primary contention is that because there is no juristic entity with
the ability to authorize the transfer of rights in the LAKOTA designation for use
with medicinal herbal remedies and preparations, there can be no connection
between him and the Lakota people. As addressed above, an active group of

52 See also Fed. R. Evid. 801(d) (prior statements and admissions).
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persons identified by the name LAKOTA exists such that the lack of proof of a
juristic entity authorized to transfer rights to the use of LAKOTA does not call for
the conclusion that no connection with the Lakota people is possible.53 Therefore,
we consider applicant’s alternative argument, i.e., that a connection exists between
him and “an entity that can be considered associated with an Indian group that
speaks the Lakota language.”54 To say the least, such connection is tenuous.
Nonetheless, we consider whether applicant’s evidence shows the type of connection
contemplated by § 2(a) between applicant and the Lakota tribes.
In support of his position that he has a connection with Native American
organizations that are interested in preserving the Lakota language, applicant
submits the Declaration of Reinhardt Haukenfrers.55 Mr. Haukenfrers is the Vice
President of HPI Health Products, Inc. of Canada. HPI uses the LAKOTA name on
the goods identified in applicant’s application through a license from applicant,
Kent Pedersen, who also serves as the President of HPI. (Haukenfrers Decl. ¶¶ 2,
3).56 HPI owns and operates the www.lakotaherbs.com website and has sold health
related products under the LAKOTA mark in Canada since at least as early as
March 2000 and began selling such products in the United States in 2010.

53 Moreover, it is not entirely clear that no such entity exists. That ownership question,
however, is not before us.
54 See Applicant Appeal Brief pp. 18-21.
55 See Exhibit T to the December 4, 2012 Request for Reconsideration after Final Action.
Inadvertently, two exhibits have been designated as Exhibit T (this Exhibit T is different
from the Exhibit T applicant submitted with its May 21, 2012 Response to Office Action).
56 The only evidence of the license between HPI and applicant is the statement in Mr.
Haukenfrers’ Declaration.
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30

(Haukenfrers Decl. ¶¶ 6, 9). According to Mr. Haukenfrers, HPI has partnered with
“at least two organizations that are in some way associated with the Native
American Indian Community and in particular, the people that speak the Lakota
language such as the Sioux Indians.” (Haukenfrers Decl. ¶ 10). Specifically, HPI
has been an official sponsor of the Lakota Language Consortium, a non-profit
organization formed with the intention of educating children from Native American
Indian tribes to learn and preserve the Lakota language (Haukenfrers Decl. ¶¶ 11-
12); as well as the Lakota Immersion Childcare program located on the Pine Ridge
Reservation in South Dakota which works to assist young children to learn and
become fluent speakers of the Lakota language. (Haukenfrers Decl. ¶ 13).
Applicant argues that its financial contributions to these two organizations is proof
of a definitive commercial association between organizations involving members of
Native American Indian tribes that are interested in preserving the Lakota
language and applicant’s use of the LAKOTA mark.57
The foregoing connection between applicant’s licensee and the language
preservation organizations falls far short of the type of commercial connections that
are sufficient to overcome a § 2(a) refusal. See In re Los Angeles Police Revolver and
Athletic Club Inc., 69 USPQ2d 1630, 1633-34 (TTAB 2003) (“actual commercial
connection” existed between applicant and the Los Angeles Police Department
where the Department “openly advanced the commercial activities of applicant”
including allowing applicant to train LAPD officers, and the Department’s use and

57 Applicant Appeal Brief p. 21.
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31

maintenance of applicant’s real estate); In re Sloppy Joe’s Int’l Inc., 43 USPQ2d
1350, 1353-54 (TTAB 1997) (Hemingway’s friendship with original owner of
applicant, his frequenting the bar and use of the back room as an office did not
establish the kind of “commercial connection” that entitled applicant to register a
mark consisting in part of a portrait of Hemingway). Compare with White II, 80
USPQ2d at 1660 (although applicant is a member of a Mohawk tribe, a general
commercial connection between applicant and the institution held insufficient; the
commercial connection must be specific and relate to the particular goods and
services). In short, the philanthropic good will engendered by applicant’s licensee
with the Lakota language preservation organizations as a result of its donations to
the organizations does not equate to evidence of a commercial connection between
applicant and the Lakota people.
The fact that there is more than one tribal group that can be identified as
LAKOTA does not excuse Applicant from the need to demonstrate a commercial
connection with the Lakota people. The Lakota tribes are encompassed by a single
historic group. That individuals may be members of certain tribes within this
historic group should not obfuscate the fact that they share the same unified
heritage. See White I, 73 USPQ2d at 1720 (existence of nine Apache tribes did not
absolve applicant from having to establish a connection with the Apache tribes in
order to use the tribal name on its goods). Therefore, whether the persons residing
on the five reservations home to the Lakota people are considered individually or
collectively, if applicant’s use of LAKOTA is viewed as falsely suggesting a
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32

connection with these persons or institutions, the refusal of registration under § 2(a)
is warranted. Id.
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.
D. Is the fame or reputation of the Lakota people such that when the mark is
used with applicant’s goods, a connection with them would be presumed?
If the fame or reputation of the Native American people known as the Lakota
is of such nature that a connection with them would be presumed when applicant’s
mark is used on his goods, then it may be inferred that purchasers of the goods
would be misled into making a false connection of sponsorship, approval, support or
the like with the Lakota people. Cotter, 228 USPQ at 205; In re National
Intelligence Academy, 190 USPQ 570, 572 (TTAB 1976). Applicant contends that
only a relatively small percentage of Native Americans may be associated with the
word LAKOTA as the name of a language and this does not lend itself to a level of
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33

fame or reputation such that a connection with that group of Native Americans
would be presumed.58
The evidence indicates there are about 70,000 registered Lakota Indians and
that there are thousands who also speak the Lakota language.59 Under the four
factor test, we must look to the fame or reputation of these Lakota people in order to
determine whether a connection with applicant’s goods would be presumed. See
Gavel Club v. Toastmasters International, 127 USPQ 88, 94 (TTAB 1960) (“[T]here
is nothing in Section 2(a) of the Act which would indicate that it is intended to
afford protection only to large or nationally known institutions.”).
According to the undisputed evidence submitted by the examining attorney,
the Lakota people, which are primarily located in the Dakotas, are not only
extensively involved in the development of the communities in which they reside,
they are also involved in educating the public about their culture and in marketing
products and services to the general public, including an ever-increasing tourism
industry.60
The Oglala Lakota of the Pine Ridge Reservation operate the Prairie Winds
Casino with over 170 employees, most of whom are tribal members. The tribe
operates the largest Indian-owned and operated public radio station in America,

58 Applicant Appeal Brief p. 13.
59 See http://www.indians.org/articles/lakota-indians.html, Attachment No. 1 to
December 13, 2012 Request for Reconsideration Denied. According to the website,
Indians.org is part of the American Indian Heritage Foundation, a non-profit charity
“dedicated to the preservation and accurate presentation of the rich culture of the American
Indian.”
60 See Tiller’s Guide p. 931, Attachment No. 4 to November 21, 2011 Office Action.
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34

broadcasting in both English and Lakota. Tourist attractions on the Pine Ridge
Reservation of great public interest include the Wounded Knee Battlefield and the
Badlands National Park, which the tribe co-manages with the National Park
Service. The tribe’s parks and recreation department offers guided hunts for large
and small game.61 The tribe also operates the Heritage Center, a museum and
cultural resource center, on the campus of the Red Cloud Indian School. The
Lakota Trade Center operated by the Lakota Fund, a nonprofit community
development financial institution, houses local arts and crafts for sale. Each
August, the tribe holds the Sun Dance and Oglala Nation Powwow attracting
thousands of tourists, and the Lakota Vietnam Powwow is held yearly as well.
Oglala Lakota College is a tribally chartered fully-accredited university that was
responsible for the formation of the Lakota Fund for community development.62
The Lakota on the Rosebud Reservation operate the Rosebud Casino and
Quality Inn. They also operate a tourism office to oversee the development of
tourism and the interpretation of Lakota culture for non-Indian visitors. The tribe
began renewable energy efforts with the development of a wind turbine, maintains
golf courses and has a variety of businesses including restaurants and auto repair
shops. It also has shops featuring fine arts and Lakota crafts offered for sale to the
public.63

61 See Tiller’s Guide p. 932, Attachment No. 5 to November 21, 2011 Office Action.
62 See Tiller’s Guide p. 933, Attachment No. 6 to November 21, 2011 Office Action.
63 See Tiller’s Guide pp. 934-35, Attachment Nos. 7-8 to November 21, 2011 Office Action.
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The Lakota on the Standing Rock Reservation are also involved in numerous
business activities. The tribe operates two casinos. Lakota Technologies, a million
dollar enterprise, provides telephone service and Lakota Energy, owned by a tribal
member, supplies fuel oil and propane to homes in the districts of the reservation.64
A variety of tribal celebrations, including powwows, are open to the public. The
tribe annually marks the death of the Lakota Chief Big Foot at Wounded Knee.
Other public attractions include the grave of Lakota Indian Chief Sitting Bull. The
tribe has also attracted industrial manufacturers to the reservation and leases
property to non-Indian farmers and ranchers.65
In view of the foregoing, we find that the Lakota people are of sufficient
renown for their business, tourism and cultural enterprises such that they would be
well known not only among residents of the Dakotas, but also to visitors to that
area. See White I, 73 USPQ2d at 1721. Additionally, as shown below, the
reputation of Lakota people extends to healing and traditional medicinal herbal
remedies.
Traditionally, Lakota tribal members were herbal healers.66 The Lakota
“still practice their sacred and traditional ceremonies which encompass the seven
sacred rites” of the Lakota. The majority of people follow the traditional Native

64 See Tiller’s Guide p. 939, Attachment No. 12 to November 21, 2011 Office Action.
65 See Tiller’s Guide pp. 938-39, Attachment Nos. 11-12 to November 21, 2011 Office Action.
66 See Tiller’s Guide p. 934 Attachment No. 7 to November 21, 2011 Office Action; and
http://www.squidoo.com/Basic-Herbal-Remedies-1, Attachment No. 33 and
http://www.native-net.org, Attachment Nos. 32-33 to June 11, 2012 Final Office Action.
Serial No. 85328868

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American religion under the leadership of medicine men.67 In 2012, the section of
the “Native Net” website entitled “Lakota Indians” observed that “[T]he Lakota
Indians and many other Indian tribes always have and still do practice ‘natural
medicine.’”68 Today, certain individuals identify themselves as Lakota herbal
practitioners. Moreover, herbalists travel to the Pine Ridge Lakota Indian
Reservation to learn Lakota ways and traditional Lakota herbal use.69 Finally,
classes are offered in “Lakota medicine teachings.”70
The National Law Institute Community Center of Healing established on the
Standing Rock Reservation populated by Lakota tribal members harvests herbs
which it utilizes to make Lakota herbal remedies and personal care products that
are advertised at its website and offered for sale. These remedies include “Lakota
Pejuta Islaye,” an herbal salve for skin problems and sore joints and “Lakota
Ipawaga Si Cayata,” a peppermint foot scrub. The Institute invites people from all

67 See Tiller’s Guide pp. 931 and 934, Attachment Nos. 4 and 7 to November 21, 2011 Office
Action.
68 See http://www.native-net.org/tribes/lakota-indians.html, Attachment Nos. 15-16 to
December 13, 2012 Request for Reconsideration Denied.
69 See http://www.livestrong.com, Attachment Nos. 19-20 to June 11, 2012 Final Office
Action; and http://www.nhaa.org.au/index.php?option=com_content&view=article&
id=447&Itemid=322, Attachment Nos. 34-35 to June 11, 2012 Final Office Action
(practicing herbalist Rob Santich of Avalon, Sydney Australia, “travels to the Pine Ridge
Lakota Indian Reservation in South Dakota USA to learn Lakota ways, take part in
ceremonies and learn traditional Lakota herb use.”).
70 “Lakota Medicine Teachings” were the subject of a seminar by Niccole Toral, an earth-
based curandera (healer), scheduled for September 8, 2012, and the complete teachings
were advertised in connection with a Medicine Walk Retreat scheduled for November 9-11,
2012 in Highland, North Carolina. According to an online promotion of the courses, Niccole
Toral’s earth-based traditions include “Vision Quest, a Wilderness Rites of Passage, the
Andean cosmology of the Q’eros, and the Native American ceremonies of the Lakota.” See
http://www.crystalvisionbooks.com/?p=6106, Attachment Nos. 8-9 to December 13, 2012
Request for Reconsideration Denied.
Serial No. 85328868

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areas of the world to visit the Institute on a work-trade basis.71 On the
“aworldofgoodhealth.com” website, “Lakota Native Herbals” are listed as a product
category along with “Chinese Medicines,” “Ayurvedic Herbals” and “Bath & Body.”72
A permaculture73 design course offering participation in the creation and
maintenance of a Lakota herbal medicine wheel garden is offered on the Pine Ridge
Reservation. This course incorporates projects offered in connection with the Oglala
Lakota Cultural and Economic Revitalization Initiative which features a Lakota-
owned and run ranch with an 8000 acre demonstration site.74
Although the evidence shows that Native American tribal groups, including
Lakota tribal members, are recognized for healing and the use of healing remedies,
this evidence, according to applicant, does not show that a subgroup of Native
American Sioux who speak Lakota have either a level fame or have produced and
sold applicant’s goods. Thus, applicant argues, the record does not establish that

71 See http://www.naturallawinstitute.com and
http://www.thenaturallasinstitute.com/massage-and-bodyworks.php, Attachment Nos. 18-
22 to November 21, 2011 Office Action.
72 See http://www.aworldofgoodhealth.com/native-american-medicine.htm, Attachment
No. 26 to June 11, 2012 Final Office Action.
73 Permaculture is defined as: an agricultural system or method that seeks to integrate
human activity with natural surroundings so as to create highly efficient self-sustaining
ecosystems; from http://www.merriam-webster.com/dictionary/permaculture. The Board
may take judicial notice of dictionary definitions, Notre Dame, 213 USPQ at 596, including
online dictionaries that exist in printed format or have regular fixed editions. In re Red
Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
74 See Permaculture Blog at:
http://www.permaculturelist.wordpress.com/2011/04/01/permaculture-pine-ridge-alkota-
reservation-permaculture-design-course-in-june, Attachment Nos. 23-25 to June 11, 2012
Final Office Action.
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LAKOTA falsely suggests a connection with Indian tribal groups in the business of
selling herbal remedies.75
Applicant misconstrues the nature of our inquiry under section 2(a)’s false
suggestion of a connection provision. Contrary to applicant’s contention, we do not
require proof that the Lakota Indian tribe or its members are famous for selling
herbal remedies or even that the tribe or its members sell herbal remedies. Rather,
we inquire into whether the fame or reputation of the Lakota people is such that
when the LAKOTA mark is used with applicant’s goods, consumers would recognize
LAKOTA as used in the mark to refer to the Lakota people such that a connection
with the Lakota people would be presumed.
As noted in Notre Dame, and further explained in White I, the fame of the
name of a person or institution is not sufficient in and of itself to provide the basis
for protection of the name under the § 2(a) false suggestion analysis. Notre Dame,
217 USPQ at 509. Rather, the key is whether the name per se is unmistakably
associated with a particular person or institution and, as used would point uniquely
to the person or institution. In short, it is the combination of: (1) a name of
sufficient fame or reputation and (2) its use on or in connection with particular
goods or services, that would point uniquely to a particular person or institution.
White I, 73 USPQ2d at 1720. Thus, our inquiry is whether consumers of medicinal
herbal remedies would think only of the Lakota tribes when the LAKOTA name is
used on such goods. Cf. Notre Dame, 217 USPQ 509 (“‘Notre Dame’ is not a name

75 See Applicant Appeal Brief p. 14.
Serial No. 85328868

39

solely associated with the University. It serves to identify a famous and sacred
religious figure and is used in the names of churches dedicated to Notre Dame, such
as the Cathedral of Notre Dame in Paris.”).
Here, there is no question that the USPTO has proven both points, and that
there is the false suggestion of a connection. The evidence amply demonstrates the
fame of the Native American people known as the Lakota. Additionally, the
evidence establishes that their reputation with respect to healing and herbal
remedies is of such nature that a connection with them would be presumed by
consumers when applicant’s LAKOTA mark is used on his goods. See Hornby, 87
USPQ2d at 1427 n.19 (“We point to petitioner’s fame as a model not to show that
consumers would expect her to be associated with the sale of clothing, but because
consumers are likely to associate clothing and models, and therefore to view the
mark TWIGGY as pointing to petitioner.”). We hasten to note that this fourth
factor does not require proof of a reputation that is closely related to an applicant’s
goods. However, there is strong evidence of this type of relationship in this case.
In view of the foregoing, there is sufficient evidence for us to conclude that
consumers will view applicant’s mark LAKOTA as used on his identified goods as
referring to the Lakota people. While analysis of this factor of the test for false
suggestion of a connection does not require an inquiry into the intent of the
applicant to identify with the named person or institution, applicant argues that
LAKOTA is not used to create any type of false association (although he admits that
the term LAKOTA when associated with his products “may suggest that the
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Serial No. 85328868

42

the Native American Lakota people. Thus, applicant, despite his protests to the
contrary, consciously or otherwise is forging a false connection between his products
and Native Americans, and specifically members of the Lakota Nation.78
The section of applicant’s licensee’s website entitled “Lakota Supports the
Lakota Language” indicates there are fewer than 6,000 Lakota speakers and
advocates that the Lakota language “needs to be preserved.” This statement urging
the preservation of the Lakota language in connection with products sold under the
LAKOTA brand clearly draws a connection between the people who speak the
Lakota language and the LAKOTA products sold by applicant’s licensee. Similarly,
the letters from the two Lakota language preservation organizations supported by
applicant’s licensee that are posted on its website promotes a strong connection with
the Lakota people.79
In view of the foregoing, applicant, via its licensee, has intentionally or
otherwise, drawn a false association between his goods and members of the Lakota
tribes.

78 We note that LaKOTA brand medicinal herbal products were previously marketed as
“LaKOTA Native American Herbal Formulas” and included the following statement at the
bottom of a webpage on which they were marketed: A portion of all proceeds from the sale
of LaKOTA products go to benefit the Oglala, Hunkpapa, Sans Arc, Minneconjou and Brule
Lakota (Sioux) Tribes. © Copyright 1999 Farmanatural, Inc. (emphasis added). See
http://wa007.com/projects/lakota/, Attachment No. 31 to June 11, 2011 Final Office
Action. The connection being drawn between such products and the Lakota tribe is clear.
While applicant has indicated that the foregoing website is not its website, Mr.
Haukenfrers stated that HPI’s predecessor was selling products under the Lakota mark in
1998 which is consistent with the foregoing copyright date. See Haukenfrers Declaration,
¶ 6 of Exhibit T to December 4, 2012 Request for Reconsideration.
79 See Exhibits A-D to Haukenfrers Declaration attached as Exhibit T to December 4, 2012
Request for Reconsideration.
Serial No. 85328868

43

Conclusion:
Because: (1) applicant’s proposed mark LAKOTA is identical to the name
currently and previously used to identify existing Native American people and their
language; (2) the LAKOTA name points uniquely and unmistakably to the Lakota
people and language; (3) applicant has no actual or commercial connection with the
Lakota people or language; and (4) the LAKOTA name is of sufficient fame or
reputation that a connection with the Lakota people would be presumed if
applicant’s mark were used in connection with his goods, we find that applicant’s
mark for his identified goods falsely suggests a connection with the Lakota people.

Decision: The refusal to register LAKOTA under § 2(a) of the Trademark Act is
affirmed.