Jean-Michel Basquiat was a New York-based visual artist whose contributions to the neo-expressionism artistic movement led to his rise to fame in the 1980s. Although Basquiat passed away in 1988 at the age of 27, his vast body of work continues to be relevant and influential on modern-day art scenes. While the Basquiat name remains pertinent in art, its recognition apparently does not extend to all areas of commerce. A recent decision by the Trademark Trial and Appeal Board ("TTAB") affirmed a refusal to register BASQUIAT as a mark for alcoholic beverages under Trademark Act Section 2(e)(4) because it was "primarily merely a surname" without sufficient acquired distinctiveness to warrant protection.
Basquiat's estate ("Estate") had sought to register the mark BASQUIAT for a line of alcoholic beverages, excluding beer, in Class 33. The U.S. Patent and Trademark Office ("USPTO") initially refused registration, finding that the mark was "primarily merely a surname." The Estate responded by claiming that the mark had become distinctive, but the USPTO rejected the argument and maintained the refusal, leading to this appeal.
On appeal, the Estate did not contest that the BASQUIAT mark is primarily a surname and thus subject to refusal under Section 2(e)(4) absent acquired distinctiveness. Instead, the Estate argued that the BASQUIAT name was not merely a surname, because it had acquired distinctiveness in connection with alcoholic beverages.
In making those arguments, the Estate was faced with a challenge. Specifically, the BASQUIAT mark was filed as an intent-to-use application, meaning that the applicant did not yet claim to have used the mark in commerce. But the path to register a mark through acquired distinctiveness relies on past use of the mark in commerce. All hope, however, was not lost, as the Estate could still prove distinctiveness of the BASQUIAT mark based on ownership of prior registrations covering related goods, under Trademark Rule 2.41. Under that rule, an applicant can "establish acquired distinctiveness in an intent-to-use application where it can show that [1] 'same mark' [2] acquired distinctiveness [3] for related goods or services, and [4] that this acquired distinctiveness will transfer to the goods or services specified in the application when the mark is used in connection with them." In re Dial-A-Mattress Operating Corp.,240 F.3d 1341, 1347 (Fed. Cir. 2001) (brackets added). That is precisely what the Estate argued on appeal, but the TTAB was not convinced.
First, Basquiat's Estate presented three prior registrations owned by the Estate: (1) BASQUIAT for art-related goods in Class 16; (2) BASQUIAT for clothing, jackets, and swim-wear goods in Class 25; and (3) BASQUIAT for cosmetic and fragrance goods in Class 3. The TTAB found that these prior registered marks covered the same BASQUIAT mark and were presumed distinctive, so the first two elements were established. The Estate was thus left with one final task: proving that the goods of the proposed application—alcoholic beverages—are sufficiently related to the goods covered by the prior registrations such that the acquired distinctiveness attributed to the prior registrations will transfer to the goods covered by the intent-to-use application. To do so, the Estate was required to establish that "there is a strong likelihood that the mark's established trademark function will transfer to the related goods or services when use in commerce occurs." In re Rogers,Ser. No. 75013108, 1999 WL 1427726, at *5 (TTAB 1999).
Basquiat's Estate focused on its prior registration for clothing and argued that "there is a well-known relationship between the fashion (Class 25) and alcohol (Class 33) industries, such that notoriety will transfer to the other." To support this argument, the Estate presented the following evidence: (1) articles from Forbes Magazine, Editorialist, and Outlander magazine, each discussing a collaboration between fashion and alcohol brands; and (2) a compilation of fourteen "dead" and "live" trademarks that included Class 33 alcoholic beverages and at least one of the goods included in the Estate's Class 3, 16, and/or 25 registrations.
Before addressing the strength of the Estate's evidence, the TTAB began with a legal issue. In its briefs, the Estate cited to decisions discussing the relatedness between goods and services in the context of likelihood of confusion disputes. While recognizing that relatedness was an element of proof in both contexts, the TTAB pointed out that the legal standard was not the same. Rather, the Estate had a "heavy burden" of demonstrating a "strong likelihood" that the acquired distinctiveness of the prior BASQUIAT marks would be transferable to the intended use of the pending BASQUIAT mark for alcoholic beverages. With this in mind, the TTAB turned to evaluation of the Estate's evidence.
The TTAB first dismissed the three cited articles discussing collaborations between fashion designers and alcohol brands by pointing out that Jean-Michel Basquiat, while certainly a "renowned artist," was not a fashion designer. Because all of the articles dealt with collaborations between fashion designers and alcohol brands, the TTAB found the articles insufficient to meet the Estate's burden of proof.
The TTAB then analyzed the compilation of "dead" and "live" trademarks to determine whether consumer perception of such marks would warrant a finding that distinctiveness acquired in the context of other goods would transfer to alcohol. The TTAB immediately dismissed the "dead" trademarks as having no probative value because they did not constitute "evidence of what consumers are exposed to" and thus did "not bear on consumer perception." After eliminating the "dead" trademarks, the Estate was left with only two "live" registered trademarks. Both trademarks were registered for goods that included wine/spirits and various clothing items, but the TTAB found that these two registrations fell "far short of satisfying [the Estate's] heavy burden"; they were insufficient to establish a strong likelihood that the acquired distinctiveness from existing BASQUIAT clothing items would transfer to potential BASQUIAT alcoholic beverages.
Jean-Michel Basquiat's robust oeuvre has led the Basquiat name to reverberate throughout modern American art and culture. But as for alcoholic beverages, BASQUIAT is nothing more than a surname that presently lacks the acquired distinctiveness to serve as a trademark.
The case is In re Basquiat, Serial No. 97291105 (TTAB May 1, 2024).
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