United States: Trademark Registration Refused Because It Contained Disparaging Matter

In In re Geller, No. 13-1412 (Fed. Cir. May 13, 2014), the Federal Circuit affirmed the TTAB's refusal to register STOP THE ISLAMISATION OF AMERICA because the mark contained "matter which may disparage" a group of persons in violation of § 2(a) of the Lanham Act.  Slip op. at 1-2.

In 2010, Pamela Geller and Robert B. Spencer (collectively "Appellants") filed an intent-to-use application to register the mark STOP THE ISLAMISATION OF AMERICA for "[p]roviding information regarding understanding and preventing terrorism."  Id. at 2 (alteration in original) (citation omitted).  The Examining Attorney refused the mark on the ground that it may disparage American Muslims in violation of § 2(a) of the Lanham Act.  Appellants then filed an appeal, and the TTAB affirmed.

Specifically, the TTAB found that "Islamisation" had two likely meanings:  a religious meaning and a political meaning.  The TTAB concluded that the religious meaning of "Islamisation" is "the conversion or conformance to Islam," and the political meaning is "a sectarianization of a political society through efforts to 'make [it] subject to Islamic law.'"  Id. (alteration in original) (citations omitted).  The TTAB then concluded that the mark was disparaging to American Muslims under both meanings.  The TTAB concluded that the mark was disparaging under the religious meaning because the majority of Muslims are not terrorists and would be offended by the association.  The TTAB also found that the mark was disparaging under its political meaning because the narrower political definition did not "mandate the use of violence or terrorism," and that the mark's "suggestion that political Islamisation must be 'stop[ped]' to 'prevent[ ] terrorism' would be disparaging to a substantial composite of American Muslims."  Id. at 4 (alterations in original) (citation omitted).

"To the extent Appellants established that one likely meaning of Islamisation is a political movement to spread Islamic law, they certainly did not show that violence is required to achieve that goal.  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."  Slip op. at 12.

On appeal, the Federal Circuit upheld the TTAB's refusal to register the mark as disparaging.  The Court noted that the proper analysis for whether a mark is disparaging involves determining "(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."  Id. at 4-5 (quoting In re Lebanese Arak Corp., 94 U.S.P.Q.2d 1215, 1217 (T.T.A.B. 2010)). 

With regard to the first prong of the disparagement inquiry, the Federal Circuit rejected Appellants' argument that the term "'Islamisation' has only been used in the public domain to refer to a political and military process replacing civilian laws with Islamic religious law."  Id. at 6 (citation omitted).  The Court explained that the TTAB properly relied on three types of evidence to determine the religious meaning of Islamisation:  dictionary definitions, essays from Appellants' website, and readers' comments posted on Appellants' website.  The Court agreed with—and Appellants did not challenge—the TTAB's reliance on dictionary definitions of "Islamize," listing "to convert" or "conform" to Islam as the primary definition.  Id. at 6-7 (citation omitted).  The Court also explained that it was appropriate for the TTAB to rely on select essays from Appellants' website because the essays "implicate[d] Islam more generally," "advocate[d] suppression of the Islamic faith," and "offered 'assistance' to people considering leaving Islam," supporting the TTAB's "conclusion that Appellants used the mark in the context of stopping the spread of the Islamic faith."  Id. at 7-8.  The Court concluded that the TTAB did not err in relying on comments posted on Appellants' website because, while of more limited probative value than the essays, the comments "reflect[ed] the religious meaning of Islamisation, and evidence[d] a desire to stop the spread of Islam in America."  Id. at 9.  Finally, the Court held that the remaining evidence did not establish the political definition of Islamisation as the sole likely meaning because the academic materials and congressional testimony were "'less widely available' and 'not necessarily reflective of the general public's understanding of the meaning of applicants' mark.'"  Id. (citation omitted).

The Federal Circuit then held that, under the second prong of the disparagement inquiry, the mark disparaged American Muslims under both the religious and political meanings of Islamisation.  Appellants agreed that both meanings of Islamisation referred to all American Muslims and conceded at oral argument that the mark was disparaging under the religious meaning of Islamisation.  The Court noted the TTAB's finding that "the mark's admonition to 'STOP' Islamisation in America 'sets a negative tone and signals that Islamization is undesirable and is something that must be brought to an end in America.'"  Id. at 10 (citation omitted).  The Court also explained that the TTAB properly considered multiple sources supporting the point that "the majority of Muslims are not terrorists and are offended by being associated as such."  Id. (citation omitted).  The Court held that substantial evidence supported the TTAB's finding that the mark is also disparaging in the context of its political meaning:  "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."  Id. at 12. 

Accordingly, the Court affirmed the TTAB's refusal to register the mark because it contained disparaging matter.

This article previously appeared in Last Month at the Federal Circuit, June, 2014.

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