Federal Circuit Knocks Out Trademark Applicant for Disparaging Muslims | Practical Law

Federal Circuit Knocks Out Trademark Applicant for Disparaging Muslims | Practical Law

In In re Geller, the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board's (TTAB) refusal to register the STOP THE ISLAMISATION OF AMERICA mark as disparaging under Section 2(a) of the Lanham Act.

Federal Circuit Knocks Out Trademark Applicant for Disparaging Muslims

Practical Law Legal Update 2-568-1105 (Approx. 4 pages)

Federal Circuit Knocks Out Trademark Applicant for Disparaging Muslims

by Practical Law Intellectual Property & Technology
Published on 15 May 2014 • USA (National/Federal)
In In re Geller, the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board's (TTAB) refusal to register the STOP THE ISLAMISATION OF AMERICA mark as disparaging under Section 2(a) of the Lanham Act.
On May 13, 2014, the US Court of Appeals for the Federal Circuit decided In re Geller, affirming the Trademark Trial and Appeal Board's (TTAB) refusal to register the mark STOP THE ISLAMISATION OF AMERICA because it is disparaging to American Muslims (No. 2013-1412, (Fed. Cir. 2014)).
In February 2010, Pamela Geller and Robert Spencer (collectively Geller) filed an intent-to-use trademark application for the mark STOP THE ISLAMISATION OF AMERICA in connection with providing information about understanding and preventing terrorism. The Examining Attorney refused the application, under Section 2(a) of the Lanham Act, on the ground that the mark may be disparaging to American Muslims. Geller appealed the refusal to the TTAB, which affirmed the refusal, finding that:
  • The term "Islamisation" had two likely meanings:
    • the conversion or conformance to Islam (religious meaning); and
    • a sectarianization of a political society through efforts to make it subject to Islamic law (political meaning).
  • The religious meaning was supported by dictionary definitions and marketplace evidence.
  • The political meaning was supported by various professional, academic, religious and legal publications even though it did not necessarily reflect the general public's understanding of the term.
  • Under both meanings, the mark was disparaging to American Muslims because:
    • the admonition in the mark to "stop" set a negative tone and signalled that the spread of Islam is undesirable and something that must be stopped;
    • the use of the mark for understanding and preventing terrorism resulted in a direct association of Islam and its followers with terrorism; and
    • the political meaning does not mandate the use of violence or terrorism making the suggestion that political Islamisation must be stopped to prevent terrorism disparaging to American Muslims.
On appeal, the Federal Circuit acknowledged that the proper analysis for a Section 2(a) refusal based on disparagement is a two-prong analysis that requires determining:
  • The likely meaning of the matter in question, taking into account:
    • dictionary definitions;
    • the relationship of the matter to 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 and services.
  • If the 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.
Despite Geller's arguments that the TTAB ignored evidence that the term Islamisation has only been used in the public domain to refer to a political and military process of replacing civilian laws with Islamic religious laws, the Federal Circuit affirmed the TTAB's findings that there were two meanings, religious and political, based on the following evidence:
  • Dictionaries that listed the primary definition of Islamize as "to convert" or "conform" to Islam.
  • Certain essays on the Stop The Islamisation of America section of Geller's website which opposed the construction of mosques in the US and discussed an ad campaign to provide assistance to Muslims considering leaving the faith.
  • Reader comments on Geller's website which the TTAB determined were reflective of the website's message of stopping the spread of Islam in the US.
Although Geller did not challenge the TTAB's reliance on dictionary definitions, they argued the TTAB improperly relied on irrelevant essays and arbitrarily selected anonymous comments. The Federal Circuit rejected this argument however, as the essays the TTAB selected demonstrate an opposition to Islam in general and advocate the suppression of the Islamic faith. The Federal Circuit therefore concluded that the mark is used in the context of stopping the spread of the Islamic faith.
For the second prong of the test:
  • On the religious meaning, the Federal Circuit noted that:
    • Geller's arguments merely restated their arguments concerning the meaning of the mark; and
    • Geller conceded at oral argument that their mark is disparaging under the religious meaning.
  • In the context of the political meaning, the Federal Circuit concluded that there was substantial evidence supporting the TTAB's finding that the mark is disparaging to American Muslims, specifically noting that:
    • associating the political meaning of Islamisation with preventing terrorism creates an association with terrorism that would be disparaging to a substantial composite of Muslims;
    • nothing in the record suggested that the political meaning of Islamisation required violence or terrorism and associating peaceful political Islamisation with terrorism would be disparaging to a substantial composite of Muslims.