Los Angeles Police Revolver and Athletic Club, Inc.

Trademark Trial and Appeal Board

Jan 15, 2004

No. 75786737 (T.T.A.B. Jan. 15, 2004)

Mailed: 15 JAN 2003
Paper No. 19
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Los Angeles Police Revolver and Athletic Club, Inc.
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Serial No. 75786737
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Tawnya R. Wojciechowski of Sheppard, Mullin, Richter &
Hampton LLP for the Los Angeles Police Revolver and
Athletic Club, Inc.
Angela M. Micheli, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Hohein, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On August 27, 1999, the Los Angeles Police Revolver
and Athletic Club, Inc. (applicant or LAPRAAC) applied to
register on the Principal Register the mark now identified
as TO PROTECT AND TO SERVE (in typed form) for goods
ultimately identified as “Beverage glasses” in
International Class 21 and “Clothing, headwear and
THIS DISPOSITION
IS CITABLE
AS PRECEDENT OF
THE TTAB
Ser No. 75786737
2
footwear, namely police and public safety uniforms, vests,
jackets, coats, foul weather gear, raincoats, overcoats,
gloves, gym suits, jerseys, socks, t-shirts, shirts,
shorts, pants, sweatsuits, ties, swimwear, trousers,
sweaters, pullovers, raincoats, boots, shoes, belts, caps,
sun visors, and headbands” in International Class 25. The
application (Serial No. 75786737) contains an allegation of
a date of first use and a date of first use in commerce of
at least as early as 1984.
The examining attorney1 ultimately refused to register
applicant’s mark on two grounds. First, the examining
attorney held that applicant’s mark falsely suggests a
connection with the Los Angeles Police Department (LAPD)
and therefore the mark is unregistrable under Section 2(a)
of the Trademark Act. 15 U.S.C. § 1052(a). The examining
attorney also refused registration on the ground that
applicant is not the owner of the mark under Section 1 of
the Trademark Act. 15 U.S.C. § 1051.
After the examining attorney made the refusals to
register final, this appeal followed.
1 The current examining attorney was not the original examining
attorney in this case.
Ser No. 75786737
3
We set out the following facts from the record that
are primarily gleaned from applicant’s and the LAPD’s
websites.
The LAPD was organized in 1869.2 The LAPRAAC was
formed in 1925. It consisted of sworn members of the LAPD
and it opened a pistol range in Elysian Park.3 “As the main
funding source of the Los Angeles Police Department
athletic program, LAPRAAC’s goal is to promote physical
fitness, at the same time sponsoring activities that reduce
stress and foster camaraderie and an esprit de corps among
police officers.”4 “LAPRAAC’s membership represents more
than 95 percent of the active and retired LAPD.”5
In 1932, the Olympics were held in Los Angeles. “The
Olympic Committee obtained permission to use the [LAPRAAC]
range for the pistol and rifle competition. When the games
were over, the Department was given the dormitory building.
The structure, which had been used at the Olympic village,
was dismantled and transported to the Elysian Park site by
off-duty officers, and then reassembled for use as a
clubhouse.”6
2 General History of the LAPD, p. 2.
3 LAPD website, “The LAPD Police Academy has a rich history,” p.
16.
4 LAPRAAC brochure, p. 3.
5 Id.
6 LAPD website, “The LAPD Police Academy has a rich history,” pp.
17-18.
Ser No. 75786737
4
“As the years progressed, a symbiotic relationship
developed between the City and LAPRAAC to provide training
and recreational facilities for sworn (training &
recreational) and civilian (training) members of the
Department.”7
The importance of police officer training became
obvious and the LAPD (City of Los Angeles) took it
upon themselves to move the Training Division into the
LAPRAAC facility. The year was 1936. It was at this
point in time that a relationship between the LAPRAAC
and the City of Los Angeles was established.
Handshake agreements were made by both parties that in
effect, the City would take over all police officer
training and LAPRAAC would permit the City to use all
of it[s] available buildings. In return, the City
took on the responsibility of grounds, maintenance,
and facility security. The LAPRAAC bylaws were
amended to include the Conunanding [sic] Officer of
Training Division as the Operations Officer of
LAPRAAC. This gave the city a voice in LAPRAAC
operations. The spirit of cooperation that exists
between the Training Division and LAPRAAC has been
cultivated for more than 60 years.8
In 1955, “To Protect and to Serve” became the official
motto of the Police Academy and on “November 4, 1963, the
Los Angeles City Council passed the necessary ordinance,
and the credo has now been placed alongside the City Seal
on the Department’s patrol cars.”9
7 LAPRAAC: Traditions, p. 1.
8 LAPRAAC: Traditions, p. 2.
9 LAPD website, “To Protect and to Serve,” p. 1.
Ser No. 75786737
5
The LAPRAAC identifies itself as “the history, the
social outlet, the fitness [arm] of the Los Angeles Police
Department.” It says it is “also known as the Los
Angeles Police Academy … [and] is a private club which was
established over 60 years ago by Los Angeles Police
Officers as a training facility.”10
The LAPD telephone directory has listings for LAPRAAC
in its “Training Division” section under the Elysian Park
Facility and the Ahmanson Recruit Training Center.
The LAPD website in its Q&A section asks the following
question: “How can I obtain an item with an LAPD logo on
it such as a badge, shoulder patch, hat, pin or T-Shirt?”
The answer is: “Due to budgeting and security constraints,
The Los Angeles Police Department is unable to provide any
uniform items to the public. However, shoulder patches and
other memorabilia may be purchased in person by visiting
the Los Angeles Police Revolver and Athletic Club
(L.A.P.R.A.A.C.) located at the Los Angeles Police
Academy.”
The LAPD website also indicates that in 1932, the
Olympic Committee “searched for a suitable location to
conduct the pistol competition. They discovered an
10 LAPRAAC: “About” website.
Ser No. 75786737
6
improvised range in Elysian Park used by Los Angeles police
officers for informal shooting practice. The organizers
built a range to accommodate the needs of the Olympics and,
at the conclusion of the games, donated the range to the
Los Angeles Police Revolver and Athletic Club. Over the
years, other buildings and ranges have been added. Since
the 1950’s, the Training Academy in Elysian Park has been
used for the majority of the training.”11
The examining attorney argues that:
The evidence of record shows that the mark is the
official motto of the Los Angeles Police Department.
It shows neither the city of Los Angeles nor the Los
Angeles Police Department is connected to the goods
sold. It shows the city of Los Angeles and its police
force are well known and a connection between them and
the applicant’s mark would be presumed.
Examining Attorney’s Brief at 5.
We begin our analysis of the “falsely suggests a
connection” issue by setting out the relevant test.
The test for determining the propriety of a refusal to
register based on Section 2(a) has four elements. The
mark (or part of it) must be shown to be the same as
or a close approximation of the person's previously
used name or identity, and it must be established that
the mark would be recognized as such (i.e., the mark
points uniquely to that person). Further, it must be
shown that the person in question is not connected
with the goods or services of the applicant, and the
person's name or identity must be of sufficient fame
that when it is used as part or all of the mark on
applicant's goods/services, a connection with that
person would be presumed by someone considering
11 LAPD “History of the Training Division” website.
Ser No. 75786737
7
purchasing the goods/services. Buffett v. Chi-Chi's,
Inc., 226 USPQ 428 (TTAB 1985).
In re Sloppy Joe’s International Inc., 43 USPQ2d 1350, 1353
(TTAB 1997).
There is no real dispute that applicant’s mark is the
same as the official LAPD slogan, nor is there any dispute
as to the fact that the slogan is well known and associated
with the LAPD. The essential matter in dispute in this
case is whether there is a connection between applicant and
the LAPD. The examining attorney insists that the record
does not show that there is such a connection with respect
to the goods sold.
In the Sloppy Joe’s case, the board held that Ernest
“Hemingway’s friendship with the original owner of Sloppy
Joe’s bar, his frequenting the bar and use of the back room
as an office is not the kind of ‘connection’ contemplated
by Section 2(a). Rather, a commercial connection, such as
an ownership interest or commercial endorsement or
sponsorship of applicant’s services, would be necessary to
entitle applicant to register the involved mark.” 43
USPQ2d at 1354. The board also found that Hemingway’s
purported claim of co-ownership of the bar was “mere
folklore.” Id.
Ser No. 75786737
8
We have an entirely different situation in this case.
The websites and other literature of the LAPRAAC and LAPD
demonstrate that the two entities have had an extensive
mutual relationship for decades. This relationship
involves LAPD’s use of LAPRAAC facilities in exchange for
LAPD services such as maintenance and security. The
relationship is so close that applicant claims that the Los
Angles Police Academy was also known as the LAPRAAC. Reply
Brief at 3. While we find that the evidence is not
entirely clear that the Police Academy was interchangeable
with the LAPRAAC, it is apparent that the Police Academy
has been located on the LAPRAAC grounds for decades and the
LAPRAAC was associated with the training of LAPD officers.
Furthermore, the LAPD’s own website supports
applicant’s argument that the “connection has been both
publicly acknowledged and endorsed by both parties.” Reply
Brief at 4. The LAPD’s telephone directory specifically
lists LAPRAAC as an entry in its training division. The
LAPD’s website history of the Police Academy includes
information concerning the LAPRAAC as an integral part of
the Police Academy’s history. Finally, and more
importantly, the LAPD’s website refers inquiries about
purchasing LAPD memorabilia to the LAPRAAC.
Ser No. 75786737
9
The evidence in this case demonstrates a relationship
between applicant and the LAPD that is historical and not
“mere folklore.” It is substantial to the extent that it
involves the training of LAPD police officers in
association with applicant as well as the use and
maintenance of applicant’s real estate. Finally, while the
details are not entirely clear, both parties seem to have
accepted this arrangement because applicant operates its
shop in facilities shared with the LAPD and the LAPD refers
inquiries regarding LAPD merchandise to the LAPRAAC.
Based on this evidence, we cannot say that the
evidence supports a conclusion that applicant’s mark
falsely suggests a connection with the LAPD. Instead, the
evidence suggests that there is a substantial commercial
connection between applicant and the LAPD. The evidence
from the LAPD supports applicant’s argument that the LAPD
“openly advanced the commercial activities of Applicant.”
Reply Brief at 4. Clearly, applicant is no interloper
trading on LAPD’s slogan. The slogan was first developed
as the motto of the Los Angeles Police Academy that was
located on applicant’s grounds and with which applicant has
been closely associated.12 Applicant and the LAPD have a
12 However, the evidence does not support applicant’s argument
that the Police Academy and LAPRAAC are virtually synonymous.
Ser No. 75786737
10
long history of a “symbiotic” relationship. Because there
is an actual commercial connection between applicant and
the LAPD, the record does not demonstrate that the mark
falsely suggests a connection with the LAPD.
The next issue in this case is whether applicant is
the owner of the mark. The examining attorney maintains
that:
[A]pplicant is a distributor of goods, such as mugs,
badge replica and clothing that bear the motto of the
Los Angeles Police Department, TO PROTECT AND TO
SERVE. The applicant has presented no evidence such
as there being a parent and wholly owned subsidiary
relationship between the distributor and the
manufacturer that it is merely a distributor of, to
refute the evidence that it is merely a distributor of
goods bearing the motto of the Los Angeles Police
Department.
Examining Attorney’s Brief at 7.
The examining attorney’s argument seems to rest on the
fact that the motto “To Protect and To Serve” is the
official motto of the LAPD as well as the fact that
applicant identifies itself as the exclusive distributor
for items bearing the LAPD name. However, the mere fact
that applicant is the distributor of goods is not
Applicant argues that, since they are the same, it should be
considered the first user of the slogan TO PROTECT AND TO SERVE.
In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990). The
history of the slogan supports the conclusion that the slogan was
developed as the result of a contest in the internally produced
Los Angeles Police Department magazine, BEAT, in 1955. LAPD
website, “The LAPD motto was developed from a Contest.”
Ser No. 75786737
11
necessarily fatal to its claim of ownership of the mark. 2
McCarthy on Trademarks and Unfair Competition, § 16:46 (4th
ed. 2003) (“[O]ne who only distributes goods made by
another can be the ‘owner’ of a trademark which the
distributor places on the goods to identify the
distributor”). Applicant is not a distributor of LAPD-
produced goods with the TO PROTECT AND TO SERVE slogan.
There is no evidence that the LAPD is producing goods of
this nature. Indeed, the LAPD’s website indicates that it
is not the source of goods of this type. See LAPD website
“Miscellaneous Information” (LAPD is “unable to provide any
uniform items to the public. However, shoulder patches and
other memorabilia may be purchased by visiting the
[LAPRAAC]”).
Applicant claims that it controls the nature and
quality of the goods and that it affixes the mark to the
goods. This is not a case where applicant is distributing
the “goods of a manufacturer or producer.” In re Bee
Pollen from England Ltd., 219 USPQ 163, 166 (TTAB 1983).
Applicant is the source of the goods and the party that the
examining attorney alleges is the owner of the mark (LAPD)
denies that it is the source of goods of this nature
sending purchasers for these goods to applicant.
Ser No. 75786737
12
The examining attorney apparently considers the LAPD’s
ownership rights in the motto to be very broad. “The
examining attorney should accept the applicant’s statement
regarding ownership of the mark unless it is clearly
contradicted by information in the record.” TMEP § 1201.01
(2003). We are reluctant to resolve this question adverse
to applicant in an ex parte proceeding when applicant has
presented a plausible explanation that it is the owner of
the mark for which it seeks registration.
We conclude by observing that this is an unusual case
that perhaps raises more questions that it answers. It is
clear that the motto TO PROTECT AND TO SERVE is the
official motto of the Los Angeles Police Department. It is
also apparent that applicant and the LAPD have had a long
and close relationship. However, we are faced with only
two fairly narrow issues, i.e. whether applicant owns the
mark and whether the mark, as used on applicant’s goods,
falsely suggests a connection with the LAPD. As set out
above, we cannot say that applicant is not the owner of
this mark or that the mark as used on the goods falsely
suggests a connection with the LAPD. Those are the only
issues we decide.
Decision: The refusals to register are reversed.