In re Thomas D. Foster, APC: Trademark Refusal Reinforces Timing and False Connection Analysis Under the Lanham Act

In a recent decision, the Federal Circuit affirmed the TTAB’s refusal to register the trademark “US SPACE FORCE,” emphasizing critical considerations under § 2(a) of the Lanham Act related to false suggestions of a connection. This ruling highlights the significance of timing in trademark analysis and clarifies the factors influencing determinations of false associations with government entities.

The appeal arose from Thomas D. Foster, APC’s attempt to register “US SPACE FORCE” (Nos. 87839062 and 87981611) following President Trump’s public announcement in March 2018 about creating a new military branch under this name. Shortly thereafter, Foster filed an intent-to-use trademark application. The examining attorney refused registration under § 2(a), alleging the mark falsely suggested a connection with the United States government, a decision subsequently upheld by the TTAB.

Addressing the critical timing aspect, the Federal Circuit cited Piano Factory Group, Inc. v. Schiedmayer Celesta GmbH, where the court had previously determined that the relevant period for evaluating false connection claims is generally the time of registration. Here, because the matter concerned an application rather than an existing registration, the court clarified that for refusals, the relevant period extends up to the completion of the examination process. Thus, evidence arising during the examination period could properly be considered.

Applying the four-part test articulated in Univ. of Notre Dame Du Lac v. J.C. Gourmet Food Imports Co., the court analyzed:

1. Whether the mark closely approximates the identity previously used by another entity;
2. Whether it uniquely and unmistakably points to that entity;
3. Whether the applicant is connected to the named entity; and
4. Whether the entity’s fame or reputation would cause a presumed connection.

Foster disputed the TTAB’s findings on the first two prongs, arguing primarily against the consideration of evidence developed after his filing date. However, substantial evidence—including extensive media coverage and official government announcements—demonstrated the public association between the “US SPACE FORCE” mark and the United States government, particularly as the name of an official military branch.

In affirming the Board’s refusal, the Federal Circuit underscored that Foster’s arguments lacked substance against the compelling evidence that the mark unequivocally pointed to the United States government. This decision aligns with earlier precedent such as In re Geller and Bridgestone/Firestone Research, Inc., reinforcing robust protections under § 2(a) against trademarks that falsely suggest governmental connections.

This ruling emphasizes two critical takeaways for practitioners:

• Timing for evaluating false connection claims in application refusals is comprehensive, extending throughout the examination period.
• Establishing a false suggestion of a connection involves assessing not only similarity but the public’s recognition and association of the mark with an existing entity.

Practitioners should remain mindful of these considerations when advising on trademark strategies involving names potentially associated with prominent governmental entities or widely publicized initiatives.

By Charles Gideon Korrell