The WEMBY Refusal: Naming Lessons from False Connections

A recent precedential decision by the Trademark Trial and Appeal Board (TTAB) concerning the mark "WEMBY" offers critical insights for founders naming their products. The case highlights how even a nickname, not just a full legal name, can lead to a trademark application refusal.

What is a "False Connection" Refusal?

The USPTO can refuse a trademark application if the mark "falsely suggests a connection" with a person, institution, belief, or national symbol. This falls under Section 2(a) of the Lanham Act. The TTAB uses a four-part test, often called the Notre Dame test, to determine if a false connection exists:

1. The mark is the same as, or a close approximation of, the name or identity of a person or institution.
2. The name or identity is sufficiently well-known or famous that, when encountered in the marketplace, the public would presume a connection with the person or institution.
3. The person or institution is not connected with the goods or services offered under the mark.
4. The fame or reputation of the person or institution is such that a connection with the goods or services would be presumed by the public.

In the WEMBY case, the TTAB found that the mark "WEMBY" for athletic apparel met all these criteria, falsely suggesting a connection with NBA player Victor Wembanyama. Crucially, the test focuses on what consumers would perceive, not on whether the applicant intended to deceive them.

The "Living Individual Without Consent" Bar

The WEMBY application faced a second, independent ground for refusal: Section 2(c) of the Lanham Act. This section prohibits the registration of a mark that consists of or comprises a name, portrait, or signature identifying a particular living individual, unless that individual has given written consent. Even if a mark is a nickname, if it strongly identifies a living person, written consent is required.

The TTAB's decision underscored that these two bars, Section 2(a) (false connection) and Section 2(c) (living individual without consent), operate independently. Failing one can still lead to refusal, even if the other doesn't apply.

The WEMBY Case in Detail

The specific "WEMBY" mark was refused for athletic apparel. The TTAB's precedential ruling means this case sets an important example for future applications.

This wasn't the only instance where Wembanyama's identity was at play. On April 4, 2024, the USPTO issued an Office Action refusing "EL WEMBY" for similar reasons. A second Office Action followed on June 7, 2024, refusing "WEMBY'S WORLD" on the same false-connection ground. These refusals were mentioned in a lawsuit Wembanyama filed against a Texas retailer.

On October 15, 2024, Wembanyama sued the retailer over unauthorized use of his name, image, and likeness on merchandise like shirts, magnets, sweatshirts, T-shirts, mouse pads, wrapping paper, and drinkware. This lawsuit, later settled and closed on November 15, 2024, highlights a broader point: trademark refusal and exposure to publicity rights claims often go hand-in-hand when a name evokes a real, famous person.

Naming Lessons for Founders

1. Nickname Risk: If your brand name sounds like a celebrity nickname, athlete moniker, influencer handle, or any distinctive identifier for a living person, assume a higher refusal risk. This applies even if it's not their full legal name.
2. Consent is Key: For any name tied to a living individual, written consent is the cleanest path to registration. Without it, you face a Section 2(c) refusal.
3. Beyond Trademark Databases: Your brand clearance process should extend beyond just trademark databases. Assess publicity-right, Name, Image, and Likeness (NIL), and false-endorsement risks. A name choice can create both registration trouble and potential litigation.
4. Apparel and Merch are High Risk: For goods like apparel, the risk is especially high. Consumers may naturally assume a celebrity association, making these categories a prime target for both USPTO refusals and direct legal action.

Common Founder Questions:

• "Can I trademark a nickname if it's not the person's full name?" The WEMBY refusal shows that a nickname can still be barred if it's strongly associated with a specific living person and implies a connection.
• "Does it matter if I didn't mean to imply endorsement?" The false-suggestion test turns on consumer perception, not just your intent as the applicant.
• "If the name is available on the trademark register, am I safe?" Not necessarily. The Wembanyama dispute demonstrates that NIL/publicity claims and USPTO refusals can arise even if a name isn't already registered by someone else.
• "Would consent solve the problem?" For the living-individual bar, yes—written consent is the direct solution.

Why This Matters for Your Brand

The WEMBY decision is precedential, meaning it will guide future examining attorneys and applicants. It reinforces that the law protects against marks that trade on a person's identity, even without literal copying. For founders, this means a thorough naming strategy must anticipate not just direct trademark conflicts, but also implied associations with famous individuals. Navigating these complexities requires careful consideration upfront, often best done with guidance from legal counsel specializing in intellectual property.

Protecting your brand starts with a name that is both distinctive and clear of these potential pitfalls. Don't let a clever name become a legal headache.