California -- The estate of Frank Sinatra on Wednesday shut down a hot dog truck owner's attempt to trademark the phrase "Franks Anatra" with the U.S. Patent and Trademark Office, as the PTO's Trademark Trial and Appeal Board sustained the estate's challenge and rejected the trademark application.
Frank Sinatra Enterprises LLC alleged Bill Loizon's application for the Franks Anatra trademark would create a likelihood of confusion with its own previously registered trademarks for Frank Sinatra's name, falsely suggest a connection with Sinatra and dilute the estate's trademarks.
The estate owns registered trademarks for Sinatra's name in connection with entertainment services including musical performances rendered by a singer, as well as in connection with prepared sauces.
Federal Circuit law dictates that when a trademark attains dictionary recognition as part of the language, it can be taken to be reasonably famous, the TTAB said. Sinatra has his own entries in reference works including the Random House Dictionary of the English Language and the Encyclopedia Britannica, it noted.
Loizon's desired trademark is a close approximation of the name Frank Sinatra, and is also phonetically equivalent, which reinforces the visual similarity, the board ruled.
Loizon argued that Franks Anatra was not a close enough approximation because the "Franks" portion refers to frankfurters, hot dogs and other similar food items, and "Anatra" means "duck" or "drake" in Italian.
The TTAB disagreed, saying there is nothing inherent in the trademark or Loizon's marketing to lead consumers to translate the word Anatra to duck.
"Furthermore, we do not understand how applicant's mark engenders the commercial impression relating to anything other than a play on the Frank Sinatra name," the board said.
Loizon testified, "The name of my business is Franks Anatra. Franks as in frankfurter, Anatra as in People's Republic of Anatra," "an independent island nation" that is "all about the hot dogs," according to the board. Loizon told the board he has placed the badge of his country on the door of his truck.
"They see our badge of our country, our symbol on the door that says People's Republic of Anatra," Loizon testified. "And it's a colorful logo that I created, and it's on the hood with some Latin underneath it. It looks very official, and it sells a lot of people. They believe it. They walk away saying, 'Wow, Anatra, I've never heard of the place.'"
Loizon also admitted, though, that his island nation imagery is not self-evident and that he has to explain it to customers, the TTAB said.
"Suffice it to say, we find applicant's explanation for choosing the mark Franks Anatra to be obscure and find it unlikely that consumers will understand it," the board said.