May 13 --The Trademark Trial and Appeal Board did not err when it determined that the “Stop the Islamisation of America” mark would be disparaging to a substantial composite of the American Muslim community, the U.S. Court of Appeals for the Federal Circuit ruled May 13 .
The registration was sought in connection with services identified as “understanding and preventing terrorism.” The Federal Circuit affirmed the board's refusal to register the mark, finding that the evidence clearly supported a conclusion that the mark was disparaging and thus unregistrable under Section 2(a) of the Lanham Act, 15 U.S.C. §1052(a).
It was a ruling of first impression by the Federal Circuit with respect to applying the Section 2(a) standard to disparaging marks. The court, however, has issued numerous rulings on scandalous and immoral marks, which also fall under Section 2(a).
Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.
The first clause of Section 2(a) is used to prevent the registration of vulgar marks that would be offensive to a substantial composite of the general public. The Federal Circuit has had many forays into Section 2(a) scandalous jurisprudence, most recently in 2012 when it affirmed the board's refusal to register “cock sucker” for rooster-shaped chocolate lollipops, In re Fox, 702 F.3d 633, 105 U.S.P.Q.2d 1247 (Fed. Cir. 2012) (246 PTD, 12/26/12). However, the Federal Circuit has never had the opportunity to issue a ruling on the second clause of Section 2(a), which is intended to block registrations that would offend a substantial composite of the relevant population. The relevant population can be an ethnic or religious group that is depicted in a trademark application.
Nonetheless, the Federal Circuit noted that all parties in the instant litigation agree that the board's standard, as set forth in In re Lebanese Arak Corp., 94 U.S.PQ.2d 1215 (T.T.A.B. 2010) (46 PTD, 3/11/10), was controlling. The two prong test looks at:
(1) what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and
(2) if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.
In a nonprecedential opinion, the board concluded, under the first prong of the test, that the term “Islamisation” has both a political and a religious meaning. The board then looked to dictionary definitions, essays hosted on the applicant's website and even anonymous Internet comments to determine that both meanings would be considered disparaging by a substantial composite of the relevant population.
In the religious context, the board held that the term is commonly used by persons and groups who are critical of the spread of Islam in the United States. This conclusion was supported by essays that appeared on the website created by the applicants, Pamela Geller and Robert B. Spencer.
On appeal, Geller argued that the essays do not oppose Islam as a faith but rather oppose the spread of political Islamisation. The Federal Circuit disagreed, particularly with respect to one essay, “Mosque Manifesto.”
“Taken generally, as Appellants do, mosques in this country are respectable and respected community religious institutions,” Judge Evan J. Wallach said. “Substantial evidence supports the Board's finding that the 'Mosques Manifesto' essay advocates suppression of the Islamic faith, taught and practiced in those places or prayer,” the Federal Circuit said.
The Federal Circuit also rejected Geller's argument that the “cherry-picked anonymous comments” that were posted on the website do not suggest the manner in which the mark was generally being used in commerce. The Federal Circuit noted that the board “considered the drawbacks of anonymous public comments” but decided that the statements were admissible as evidence of how the public perceived Geller's use of the mark.
The Federal Circuit found no plain error in the conclusion that the mark is being used with religious connotations. But, the appeals court noted that the board recognized that the mark may have political connotations and so it considered whether either the political or the religious meaning was disparaging under the second prong of the standard.
At oral argument Geller conceded that the mark was disparaging under the religious meaning of Islamisation and the Federal Circuit saw no reason to disturb the board's finding to that effect. It also affirmed the board's finding that an association between political beliefs and “preventing terrorism” was disparaging. Geller had argued that the board erred when it determined that political Islamisation is not intractably linked to violence and terrorism.
“The political meaning of Islamisation does not require violence or terrorism, and the Board properly found that associating peaceful political Islamisation with terrorism would be disparaging to a substantial composite of American Muslims,” the Federal Circuit said.
Christine Haight Farley, a law professor at American University, Washington, D.C., was critical of the standard in general, if not the result in this case.
Farley, who has studied Section 2(a) jurisprudence at length, told Bloomberg BNA that she wished the Federal Circuit had not adopted the board's standard. Instead, Farley said the Federal Circuit should have ruled that dictionary definitions alone can be sufficient for a Section 2(a) refusal.
“Anything else just gets the Patent and Trademark Office into needless trouble because it forces them to wade into the question deeper than they need to,” Farley said. She noted that the PTO is not supposed to regulate the use of a mark in commerce, but rather to make sure that scandalous and disparaging marks never get placed on the register in the first place. Accordingly, she would have a per se bar against the registration of certain words--including “Islamisation”--regardless of how those words were used in context or the goods and services listed in the application.
“Looking at how the mark is used in commerce really does give you a much clearer picture about what the applicant is doing with the mark,” Farley said. “But that should not be what we are paying examining attorneys at the trademark office to do.”
In 1999, the board determined that trademarks belonging to the Washington Redskins were disparaging, Harjo v. Pro-Football Inc., 50 U.S.P.Q.2d 1705 (T.T.A.B. 1999). That decision was appealed to, and overturned by, the U.S. District Court for the District of Columbia, (192 PTD, 10/3/03). The U.S. Court of Appeals for the District of Columbia affirmed the district court in two separate holdings (137 PTD, 7/19/05; 93 PTD, 5/18/09), with the laches doctrine being the ultimate issue that precluded a cancellation of the registrations.
But laches did not appear to be an issue in March 2013 when the board held a hearing on another petition to cancel the registrations, Blackhorse v. Pro-Football Inc., No. 92046185 (T.T.A.B. hearing held 3/7/13) (45 PTD, 3/7/13).
In that case, the board is considering if the six Redskins registrations should be cancelled pursuant to Section 14(3), which is the Lanham Act provision that allows members of the public to seek cancellation of any registrations that they believe were registered in violation of Section (2)(a).
Since the board's Blackhorse decision could be appealed to the Federal Circuit (or the Eastern District of Virginia), the adoption of the In re Lebanese Arak standard may be relevant. Also notable is that the Federal Circuit cited, without comment, the following definition for disparagement that was first set forth by the board in Harjo.
“A mark may disparage when it 'dishonor[s] by comparison with what is inferior, slight[s], deprecate[s], degrade[s], or affect[s] or injure[s] by unjust comparison,' ” the Federal Circuit said, quoting Harjo.
“We consider it a good sign for our case that the Federal Circuit applied the same legal test that the TTAB stated that it intends to apply in Blackhorse, and it applied a substantial evidence standard of review, which is a deferential standard,” Jesse A. Witten, of Drinker Biddle & Reath, Washington, D.C., who is representing the petitioners in Blackhorse, told Bloomberg BNA. “This is a positive development for the Blackhorse petitioners,” Witten said.
Judges Pauline Newman and Kathleen M. O'Malley joined the opinion.
David E. Yerushalmi of the American Freedom Law Center, Washington, represented Geller and Spencer. PTO Associate Solicitor Thomas L. Casagrande represented the office.
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