In re Kent Pedersen

In a lengthy (43 page) precedential decision that offers an interesting history of the Sioux Nation and an overview of the current cultural, business, tourism, and healing focus of one of its western tribes, the Board upheld the PTO’s refusal to register a third party’s mark LAKOTA for medicinal herbal remedies for falsely suggesting a connection with the Native American Lakota tribe under Section 2(a) of the Trademark Act.

Section 2(a) prohibits registration of a mark that falsely suggests a connection with persons, institutions, beliefs, or national symbols. In defending against the refusal of registration, Applicant argued that the term LAKOTA could not point “uniquely and unmistakably” to a person or institution as the term enjoyed multiple meanings -- in identifying not only the tribe itself, but also the language spoken by the tribe. The Board found the evidence submitted by the PTO examiner more than sufficient to satisfy her burden.

Applicant also argued that the federal government’s omission of the LAKOTA name from the list of tribes entitled to receive services from the U.S. Bureau of Indian Affairs meant that the tribe could not qualify as a “recognized institution” entitled to the protections of the Lanham Act. Noting the extensive references to the LAKOTA tribe in numerous dictionaries, treatises, on numerous websites, and in historical documents, the Board rejected Applicant’s attempt to ascribe to the federal government exclusive control over a tribe’s legitimacy and/or the protectability of its name. The Board also cited a string of cases extending protection under Section 2(a) to nicknames and other non “legal names,” to support its conclusion LAKOTA, even if not formally recognized by the government, was nevertheless source identifying and entitled to protection.

The Board also rejected Applicant’s attempt to rely upon third-party registrations of LAKOTA marks to argue the direct connection between the name and the tribe had been lost. Applicant offered no evidence regarding the use (as contrasted with the registration) of these marks and thus the existence or absence of a connection with the tribe had not been established. Nor did the Board accept Applicant’s attempts to rely upon the attenuated charitable contributions of its licensee as evidence of required commercial connection between the tribe, Applicant, and products necessary to overcome a Section 2(a) refusal. Finally, noting the extensive use by Applicant’s licensee of images, language, and symbols of the Lakota people on its website and in its marketing materials, the Board found proof of an “intent to associate” and concluded that the likelihood of a false association was thus undeniable.