Failure to Grant Trademarks Does Not Violate Applicant’s Constitutional or Treaty-Based Rights
July 01, 2009
Last Month at the Federal Circuit - August 2009
Judges: Mayer, Clevenger (author), Schall
[Appealed from: TTAB]
In In re Shinnecock Smoke Shop, No. 09-1100 (Fed. Cir. July 1, 2009), the Federal Circuit concluded that the TTAB did not err in affirming the rejection of the applicant’s trademarks under section 2(a) of the Trademark Act because they falsely suggested a connection to a nonsponsoring Indian nation. The Court also held that the PTO’s refusal to register the trademarks did not violate the applicant’s due process and equal protection rights.
Jonathan K. Smith, a member of the Shinnecock Indian Nation, filed two trademark applications for the marks SHINNECOCK BRAND FULL FLAVOR and SHINNECOCK BRAND LIGHTS for cigarettes. Both marks included the wording “MADE UNDER SOVEREIGN AUTHORITY.” The PTO refused to register the marks, citing 15 U.S.C. § 1052(a), which generally protects against registering marks that falsely suggest a connection to a nonsponsoring entity—in this case, the Shinnecock Indian Nation. Smith appealed to the TTAB, which affirmed. The TTAB also rejected the applicant’s constitutional and treaty-based claims related to his allegation of racial discrimination. Smith appealed.
On appeal, Smith did not contest that the marks falsely suggested a connection with the Shinnecock Indian Nation. Instead, he challenged the TTAB’s determination that the Shinnecock Indian Nation is a “person, living or dead, [or] institution” under § 1052(a). To construe the statute, the Court first looked to the plain meaning of the words. The Court concluded that the ordinary meaning of “institution” is broad enough to include a self-governing Indian nation. The Court also found this construction consistent with TTAB precedent that has specifically included Indian tribes under § 1052(a), and with the TTAB’s general practice of construing the statute as broadly as applicable.
The Court rejected Smith’s argument that the “institution” issue was not raised below. According to Smith, the examining attorney rejected the marks based on her conclusion that the Shinnecock Indian Nation falls under the statute’s protection for “persons,” and that the TTAB should not have affirmed the decision based on its “institution” determination. The Federal Circuit found that the “institution” issue was in play at the time of the initial rejection of Smith’s marks, and that Smith understood that at the time.
The Federal Circuit next addressed Smith’s contention that the PTO’s refusal to register his marks, while granting supposedly similar marks involving Indian tribe names to non-Indians, shows a pattern of racial discrimination that violated his constitutional and treaty-based rights. Specifically, Smith alleged that the PTO violated the Due Process and Equal Protection Clauses of the Fifth Amendment to the U.S. Constitution and the U.S. treaty obligations under the United Nations’ International Convention on the Elimination of All Forms of Racial Discrimination (“CERD”).
The Court found no due process violation because the applicant “was provided a full opportunity to prosecute [his] applications and to appeal the examining attorney’s final rejections to the Board.” Slip op. at 5 (alteration in original) (citing In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1368(Fed. Cir. 1999)). The Court considered Smith’s allegations regarding similar marks irrelevant because each application must be considered on its own merits. Indeed, the Court explained that “[e]ven if all of the third-party registrations should have been refused registration under section 1052(a), such errors do not bind the [PTO] to improperly register Applicant’s marks.” Id. at 6.
The Court also rejected Smith’s equal protection argument. The Court first found that “allegations of disparate treatment, even if accurate, do not diminish the Board’s and Examining Attorney’s legitimate, nondiscriminatory reasons for denying registration.” Id. The Court concluded that the most Smith could establish is that the PTO should have rejected the other marks. The Court also found that Smith’s argument was founded on unsupported assumptions, such as that, unlike Smith, successful applicants were non-Indians and that is the reason their applications were not rejected. The Court further concluded that Smith made no showing that any of the other registered marks were registered without the consent of the named tribal entities and that Smith ignored substantive differences, either in the marks or in their associated goods and services, that might have made the other registrations less suggestive of a false connection.
In sum, the Court agreed with the TTAB that “[i]t is entirely reasonable to assume that these registrations were issued not because the applicants therein were non-Indians, but because the elements of the Section 2(a) refusal were not or could not be proven by the Office.” Id. (alteration in original) (quoting In re Shinnecock Smoke Shop, 2008 WL 4354159, at *6 (T.T.A.B. Sept. 10, 2008)).
The Court also found Smith’s reliance on CERD unavailing because he failed to establish any racial discrimination and because he has no private right of action under CERD, which is not a self-executing treaty.