WM Distribution Inc.

Trademark Trial and Appeal Board

Oct 13, 2005

No. 78195284 (T.T.A.B. Oct. 13, 2005)

Hearing: Mailed: October 13, 2005
July 14, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re WM Distribution Inc.1
________

Serial No. 78195284
_______

Eugene Berman of Law Offices of Eugene Berman for WM
Distribution Inc.

M. Catherine Faint, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Hairston, Chapman and Grendel, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
On December 17, 2002, Julie White filed an application
to register on the Principal Register the mark SANDIA for
“cigarette products, namely, cigarettes” in International
Class 34. The application was filed based on applicant’s
assertion of her bona fide intention to use the mark in

1 Application Serial No. 78195284 was filed by Julie White
(United States citizen), who assigned the application to WM
Distribution Inc. (a Delaware corporation). See Reel 2834, Frame
0929.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78195284
2
commerce. Julie White later filed an Amendment to Allege
Use, with a claimed date of first use and first use in
commerce of February 20, 2004, which was accepted by the
USPTO.
The Examining Attorney has refused registration under
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), on
the ground that applicant’s mark “falsely suggests a
connection with the federally recognized tribe of the
Pueblo of Sandia, New Mexico.” (Examining Attorney’s
brief, p. 2.)
When the refusal to register was made final, applicant
appealed to the Board. Applicant and the Examining
Attorney have filed briefs. An oral hearing was held on
July 14, 2005.
Preliminarily, we address certain evidentiary matters.
In applicant’s brief (p. 3) it objects for the first time
to evidence attached to the Examining Attorney’s Office
actions. The involved evidence consists of the results of
Internet searches, and applicant has objected thereto on
the ground that the search results do not include a date or
source for the documents. The Examining Attorney contends
that the objection should have been raised prior to the
filing of applicant’s brief. Further, the Examining
Attorney explained (brief, p. 2) that several of the
Ser. No. 78195284
3
Internet pages carried a date and URL source, albeit on a
separate page; and that those pages without the source and
date information were from a Trademark Law Library search.
Applicant’s objection is untimely because if applicant
had raised the objection promptly upon receipt of the
Office actions with the involved attachments, the Examining
Attorney may have been able to cure the defect.
Applicant’s objection to the Examining Attorney’s Internet
evidence is overruled.
The Examining Attorney objects in her brief (p. 3) to
Exhibit 2 attached to applicant’s brief (a table of the
Examining Attorney’s exhibits) on the basis that
applicant’s table incorrectly characterizes the evidence;
and she “also objects to applicant’s new exhibits to the
brief because they are untimely.”
The Examining Attorney did not specify whether she
objects to all four exhibits, or if not, specifically which
exhibits are the subject of her second objection.
Applicant’s exhibits attached to its brief are the
following: Exhibit 1 -- table of exhibits submitted by
applicant; Exhibit 2 -- table of exhibits submitted by the
Examining Attorney; Exhibit 3 –- a summary of applicant’s
position on certain matters raised by the Examining
Attorney (e.g., the Federal Trust Obligation, the Indian
Ser. No. 78195284
4
Arts and Crafts Act); and Exhibit 4 -- a copy of
applicant’s specimen and a current version thereof.
The Board finds no harm in either an applicant or an
Examining Attorney including in its brief charts of the
evidence. However, we remain mindful of the Examining
Attorney’s view that applicant mischaracterizes the nature
of some of the items listed thereon.
Applicant’s position paper on trust principles is
allowed as the Examining Attorney raised these matters.2
In this case, the Board finds no harm in allowing
applicant’s exhibit which shows the original specimen as
well as a more current label (highly similar to the
original).
The Examining Attorney’s objections to applicant’s
exhibits attached to its brief are overruled.
The Examining Attorney requests (brief, footnote 6)
that the Board take judicial notice of a “Bartleby.com”
entry from The Columbia Gazetteer of North America (2000)
for the purpose of showing that the page remains unchanged
from the time it was previously submitted into the record
by the Examining Attorney. The request is granted. See
TBMP §704.12 (2nd ed. rev. 2004).

2 The Examining Attorney withdrew her reliance on the Trust
obligation. (Brief, p. 9.)
Ser. No. 78195284
5
Applicant’s request at the oral hearing that the Board
take judicial notice of further pages from “Bartleby.com”
provided for the first time at the hearing is denied.
We now turn to the merits of the case.
The issue before the Board in this application is
whether applicant’s mark SANDIA, as applied to the goods
(cigarettes), falsely suggests a connection with the
“federally recognized tribe of the Pueblo of Sandia, New
Mexico” within the meaning of Section 2(a) of the Trademark
Act, 15 U.S.C. §1052(a).
As discussed by our primary reviewing Court in the
case of University of Notre Dame du Lac v. J.C. Gourmet
Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983), the portion of Section 2(a) dealing with false
suggestion of a connection resulted from the desire to give
statutory effect to the notions of the rights of privacy
and publicity, the elements of which are distinctly
different from the elements of a trademark infringement
claim of likelihood of confusion, which is the essence of
Section 2(d) of the Trademark Act. Specifically, the Court
stated as follows (footnote omitted):
Under concepts of the protection of
one’s “identity,” in any of the forms
which have so far been recognized, the
initial and critical requirement is
that the name (or an equivalent
Ser. No. 78195284
6
thereof) claimed to be appropriated by
another must be unmistakably associated
with a particular personality or
“persona.” …

Thus, to show an invasion of one’s
“persona,” it is not sufficient to show
merely prior identification with the
name adopted by another. Nor is it
sufficient, as urged by the University,
that the fame of the name of an
institution provides the basis for
protection in itself. The mark, NOTRE
DAME, as used by Gourmet, must point
uniquely to the University.

217 USPQ at 509.

Following the University of Notre Dame case, the Board
enumerated the elements necessary to establish a claim
under Section 2(a) (false suggestion of a connection) or to
test the propriety of a refusal to register a mark based
thereon. The elements are that: (i) applicant’s mark (or
part of it) must be shown to be the same as or a close
approximation of the “person’s”3 previously used name or
identity; (ii) applicant’s mark would be recognized as such
(i.e., the mark points uniquely and unmistakably to that
person); (iii) the person in question is not connected with
the goods or services of the applicant; and (iv) the
person’s name or identity is of sufficient fame that when

3 The Board clarifies that throughout this decision our use of
the term “person” may refer to a natural person, and/or a group
of such people, and/or a juristic person. See Section 45 of the
Trademark Act, 15 U.S.C. §1127.
Ser. No. 78195284
7
it is used as all or part of applicant’s mark for its goods
or services, a connection with that person would be
presumed by purchasers and potential purchasers. See
Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985). See
also, In re Sloppy Joe’s International Inc., 43 USPQ2d 1350
(TTAB 1997); and In re Kayser-Roth Corp., 29 USPQ2d 1379
(TTAB 1993).
The Examining Attorney must accordingly establish a
prima facie case that the mark falsely suggests a
connection with the tribe Pueblo of Sandia, New Mexico.
See In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629
(Fed. Cir. 2003), and cases cited therein.
The Examining Attorney contends that in The Columbia
Gazetteer of North America (2000) “sandia” is defined as
“pueblo,” which is a recognized tribe as shown in the
publication “American Indian Reservations and Trust Areas,”
by Veronica E. Velarde Tiller (1996) (“Tiller
publication”), and thus the term is the same as or an
approximation of the name of the Indian tribe. Applicant
contends that the correct name of the federally recognized
tribe is “Pueblo of Sandia, New Mexico”; that applicant’s
mark SANDIA is not the same as or an approximation of this
tribe’s name as applicant’s mark does not include the
significant word “Pueblo,” which refers to one of 19 Pueblo
Ser. No. 78195284
8
tribes (e.g., “Pueblo of Acoma, New Mexico,” “Pueblo of
Cochita, New Mexico,” “Pueblo of Picuris, New Mexico,”
“Pueblo of Taos, New Mexico,” “Pueblo of Zia, New
Mexico,”); and that the name of the tribe includes the
significant geographical term “New Mexico,” which is
excluded from applicant’s mark.
The Examining Attorney contends that the term SANDIA
is recognized as the name of the tribe (i.e., the word
SANDIA points uniquely to the Pueblo of Sandia, New Mexico
tribe) as shown on the tribe’s website where it refers to
itself as “the Sandia people” and the Tiller publication
(p. 459) refers to “the people of Sandia” and “Sandia
Pueblo”; and that other uses of “Sandia” (e.g., Sandia
Mountain Wilderness, Sandia National Laboratories) “merely
extend the fame of the tribe.” (Brief, p. 6.) Applicant
contends that the Examining Attorney has not established
that the word SANDIA is recognized by the consuming public
as pointing uniquely to the Pueblo of Sandia, New Mexico
tribe because “Sandia” is only part of the tribe’s name;
the term translates from Spanish as “watermelon”; the term
is used in the name of the Sandia Mountain Wilderness
created by Congress in 1978 and run by the U.S. Forest
Service, the Sandia National Laboratories located in
Albuquerque, New Mexico and Livermore, California
Ser. No. 78195284
9
(government owned, contractor operated facilities), the
name of a town in Texas as well as the town in New Mexico;
and the term SANDIA is used as a trade name (over 100
listings in the Sandia, New Mexico telephone directory).4
Both applicant and the Examining Attorney agree that
there is no connection between the Pueblo of Sandia, New
Mexico tribe and applicant.
The Examining Attorney contends that if applicant’s
goods (cigarettes) are of a type that the person or
institution sells or uses and the person is sufficiently
famous, then it may be inferred that the purchasers of the
goods would be misled into making a false connection of
sponsorship, approval with the named party. Specifically,
she argues that “many Indian tribes sell, market, and
produce cigarettes and tobacco products”; that there is
evidence that “the Sandia people operate or are affiliated
with at least two smoke shops where they sell discount

4 Applicant also submitted evidence in the form of (i) the
listing of several “hits” in a Google search of the term, (ii) a
private database listing of several third-party applications
and/or registrations for marks that consist of or include the
word SANDIA for a variety of goods and services, and (iii)
printouts from the USPTO’s TESS system of 11 third-party
applications and registrations for marks that consist of or
include the word SANDIA for a variety of goods and services.
This evidence is of little probative value and does not establish
third-party use of the term SANDIA.
Ser. No. 78195284
10
cigarettes”;5 that “some of the tribes have reached beyond
the tax and sale of cigarettes to produce those
cigarettes”; that “the record is clear that the Sandia are
affiliated with smokeshops, and it is clear that many
Native Americans are engaged in the large-scale marketing
of cigarettes and even their manufacture”; and that “Native
American tribes are well known for having a sovereign legal
authority to impose their own taxes, or as is more common
in the case of cigarettes and other tobacco products, to
offer those goods for sale ‘tax-free.’” (Brief, p. 7.)
The Examining Attorney concludes (brief, p. 8) that
applicant’s evidence of the various places and/or
businesses with the name “Sandia” shows that the Sandia
people “are sufficiently famous to lend their name to the
nearby mountains, towns and businesses.”
Applicant argues that the Examining Attorney has not
established that the Pueblo of Sandia, New Mexico tribe is
of sufficient fame that when SANDIA is used on applicant’s
goods, a connection with the tribe would be presumed as

5 The two smoke shops which reference the Pueblo of Sandia, New
Mexico tribe are (i) www.mailmesmokes.com, which states therein
that this is an incomplete list of the “reservations that may
sell you cigarettes online” and it then lists almost all Native
American reservations in all 50 states, and (ii) www.bienmur.com,
which lists “smoke shop” as well as, inter alia, “casino” and
“online store” for the Bien Mur Indian Market Center (“owned and
operated by the Pueblo of Sandia”).
Ser. No. 78195284
11
there is no evidence that the tribe or any enrolled member
is involved in the manufacture or sale of cigarettes; that
the fact that other tribes are so engaged is not relevant
as it does not establish the required commercial connection
of applicant’s goods to the Pueblo of Sandia, New Mexico
tribe; that the fact that cigarettes are sold on the Pueblo
of Sandia, New Mexico reservation is not sufficient because
cigarettes are ubiquitous; that the fact that the tribe is
a sovereign entity that may tax cigarettes is not a
sufficient connection as all sovereign entities may impose
taxes on almost all goods and/or services, but that does
not create the connection needed to establish a false
suggestion of a connection; that there is no evidence that
tobacco is grown or that cigarettes or other tobacco
products are made by the tribe; that the cigarette industry
is highly regulated as to advertising and labeling and
applicant’s label clearly shows a mountain, and not any
Indian connection; and that there is no showing that the
sale of cigarettes has any special connection to the Pueblo
of Sandia, New Mexico tribe.
In addition, applicant points out that the Examining
Attorney submitted a few pages from the website of the Bien
Mur Indian Market Center (www.bienmur.com) wherein it
states the following: “Sandia Pueblo is perhaps the least
Ser. No. 78195284
12
known and understood of the dozens of cultures that once
dominated the Rio Grande Valley.” Thus, applicant argues
there is not sufficient fame that a connection with the
Pueblo of Sandia, New Mexico tribe would be presumed by
consumers.
We have carefully reviewed all of the evidence in this
case. As to the first prong of the test under Section 2(a)
false suggestion of a connection, applicant’s mark must be
shown to be the same or a close approximation of the
tribe’s name. The record shows that there are numerous
Pueblo tribes; that the name of one of those tribes is
Pueblo of Sandia, New Mexico; and that the “Sandia, New
Mexico” portion of the tribe name refers to the
geographical location of the tribe. It cannot be said that
SANDIA specifically names the Pueblo of Sandia, New Mexico
tribe.
We are aware of the Board decision In re Julie White,
73 USPQ2d 1713 (TTAB 2004)6 in which the Board stated that
“an applicant cannot take a significant element of the name
of another and avoid a refusal by leaving one or more
elements behind, provided that that which has been taken

6 The Board affirmed the Examining Attorney’s refusal to register
the mark APACHE for cigarettes as the term falsely suggests a
connection with the nine federally recognized Apache tribes.
Ser. No. 78195284
13
still would be unmistakably associated with the other
person.” White, supra, 73 USPQ2d at 1719. However, in the
case now before us, applicant does not seek to register the
term “Pueblo,” which is the name of several tribes.
Rather, applicant seeks to register the term “Sandia,”
which is the name of the New Mexico town where one of the
Pueblo tribes is located, and in fact “Sandia” has been
used in numerous other contexts and has other meanings. We
find that SANDIA per se does not name the Pueblo of Sandia,
New Mexico tribe.
Although the refusal to register could be reversed on
this basis alone, in the interest of providing a complete
decision, we will also determine the other prongs of the
test under the facts of this case.
With regard to the second prong of the test under
Section 2(a) false suggestion of a connection -- that the
mark SANDIA would be recognized as pointing uniquely and
unmistakably to the tribe -- the record simply does not
support that conclusion. The term “Sandia” has many other
significant meanings, including the name of the mountain
wilderness, the National Laboratories, and two towns.
There are over 100 listings which include the word “Sandia”
in their trade names for various businesses in the Sandia
Telephone Directory. Also, the term is Spanish for
Ser. No. 78195284
14
“watermelon.” This record fails to show that the term
“SANDIA” is unmistakably and uniquely associated with the
Pueblo of Sandia, New Mexico Indian tribe by consumers.
See University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., Inc., supra.
There is no disagreement on the third prong of the
test -- applicant is not associated with the Pueblo of
Sandia, New Mexico tribe.
As to the last prong of the test under Section 2(a)
false suggestion of a connection, the person’s name or
identity must be shown to be of sufficient fame that, when
used on the involved goods, a connection between applicant
and the tribe would be presumed by consumers. That is, we
must determine whether the term SANDIA is of sufficient
fame that a connection with the federally recognized tribe
“Pueblo of Sandia, New Mexico” would be presumed by
consumers of cigarettes. As explained previously, we
cannot find on this record that “Sandia” specifically
refers unmistakably and uniquely to the Pueblo of Sandia,
New Mexico Indian tribe. Thus, the term is not famous as
the name of the tribe such that a connection would be
presumed. Moreover, evidence that some Indian tribes, but
not the Pueblo of Sandia, New Mexico tribe, have produced
and sold cigarettes is not persuasive evidence that
Ser. No. 78195284
15
consumers would presume a connection between the Pueblo of
Sandia, New Mexico tribe and cigarettes. Cigarettes are
everyday consumer goods which are sold in every town and
every state in the United States. The fact that tribes are
sovereign entities with the power to tax (or allow “tax-
free”) goods and/or services is not evidence that consumers
presume a connection between this particular Pueblo tribe
and cigarettes. The fourth prong of the test is not met.7
Inasmuch as the ex parte record here does not
establish that the mark SANDIA falsely suggests a
connection with the Pueblo of Sandia, New Mexico tribe, we
reverse the refusal to register. See In re Los Angeles
Police Revolver and Athletic Club, Inc., 69 USPQ2d 1630
(TTAB 2003). See generally, 3 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition, §19:76 (4th ed.
2005).
Decision: The refusal to register under Section 2(a)
of the Trademark Act is reversed.

7 Compare the case of Buffett v. Chi-Chi’s, Inc., supra, wherein
the Board denied applicant’s motion for summary judgment and
found genuine issues as to the elements of a Section 2(a) claim.
There was extensive evidence providing factual support “for
opposer’s allegations that the song ‘Margaritaville’ and [Jimmy]
Buffett are well-known and that Buffet has attempted, through his
commercial licensing program, publicity, and entertainment
services, to associate the term ‘MARGARITAVILLE’ with the public
persona of Jimmy Buffett.” 226 USPQ at 430.