Cert Petition Faults Disparaging Trademark Analysis, Standard in ‘Stop Islamisation' Case

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By Tony Dutra

Aug. 18 - The Patent and Trademark Office's refusal to register "Stop the Islamisation of America" trademark is now the subject of a petition for writ of certiorari in Geller v. USPTO.

The Trademark Trial and Appeal Board found that the evidence clearly supported a conclusion that the mark would disparage American Muslims and was thus unregistrable under Section 2(a) of the Lanham Act, 15 U.S.C. §1052(a). Essays that appeared on the website created by the applicants, Pamela Geller and Robert B. Spencer, were of particular relevance to the board's decision.

The Federal Circuit affirmed on May 13 in a nonprecedential opinion, though it said it was a matter of first impression for the court. In re Geller , 751 F.3d 1355, 2014 BL 132368, 110 U.S.P.Q.2d 1867 (Fed. Cir. 2014).

It adopted the TTAB's two-pronged test, set forth in In re Lebanese Arak Corp. , 94 U.S.P.Q.2d 1215 (T.T.A.B. 2010), as the Section 2(a) standard for a finding of disparaging marks.

The questions presented in the cert petition are:

1. May the United States Patent and Trademark Office refuse a trademark registration for a mark because the Office understands the mark to be disparaging in violation of §2(a) of the Trademark Act based upon the Office's interpretation of the viewpoint of the trademark applicant's political speech related tangentially to the subject of the mark?

2. Did the court of appeals err by utilizing a standard of review for the "ultimate registrability" of Petitioners' mark that (a) conflicts with the standard utilized by the majority of circuits that have addressed this issue, and (b) is both illogical in theory and muddled in practice?

As to the latter, the court's standard was that registrability is ultimately a question of law with underlying questions of fact. The petitioner contended that the Federal Circuit also decides likelihood-of-confusion cases, under Section 2(d), with the same standard, and that the two are statutorily similar.

Most other circuits see likelihood-of-confusion analysis as at least "predominantly" a question of fact, according to the petition.

David Eliezer Yerushalmi of the American Freedom Law Center, Washington, D.C., filed the brief. The government's response is due Sept. 15.

 To contact the reporter on this story: Tony Dutra in Washington at adutra@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com

Petition is available at http://pub.bna.com/ptcj/140175petition.pdf .