April 2010 Issue

TTAB Cases

In re Lebanese Arak Corp.,
94 USPQ2d 1215 (TTAB Mar. 4, 2010)

ABSTRACT
In a 3-2 decision by an augmented panel of judges, the TTAB affirmed the refusal of registration of the mark KHORAN for wine on disparagement grounds under Section 2(a) of the Lanham Act based on the mark’s similarities to the term “Koran,” which is the sacred text of Islam, and the fact that alcohol is prohibited by the tenets of Islam.  The majority held that use of the name of the sacred Islamic text for a substance prohibited by that religion would be disparaging to Muslims.

CASE SUMMARY

FACTS
Applicant Lebanese Arak Corp. (“Applicant”) applied for registration of the mark KHORAN for “alcoholic beverages, namely wines.”  The Examining Attorney refused the application on the ground of disparagement under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a).  Specifically, the Examining Attorney concluded that KHORAN is the phonetic equivalent of “Koran,” which is the sacred text of Islam, and that because the Koran forbids consumption of alcoholic beverages, use of KHORAN for wine is disparaging to the beliefs of Muslims.  The Examining Attorney rejected Applicant’s position that because the English translation of the Armenian word KHORAN is “alter,” KHORAN had an entirely different meaning and commercial impression than “Koran.”  Applicant appealed the refusal to the TTAB.

ANALYSIS
In a 3-2 decision affirming the refusal of registration, the TTAB majority first clarified that disparagement, not scandalousness, is the proper ground for refusal of registration under Section 2(a) of the Lanham Act based on perceived offense to religious or ethnic sensibilities.  Disparagement is determined under a two-pronged test, namely:  (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 and 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.  The majority began its analysis with the second prong of the test, finding “no real dispute” that the Examining Attorney had met his burden on that prong.  In particular, the majority relied on the fact that the Koran is the sacred text of Islam and Islamic authorities view alcohol as a prohibited substance.  Thus, the crux of the second prong was whether use of the name of the holy Islamic text for a substance banned by that religion would be disparaging to Muslims and their beliefs.  The majority answered this question in the affirmative.

Turning to the hotly contested first prong, the likely meaning of the matter in question, the majority held that the public would regard Applicant’s KHORAN mark as referring to the holy text of Islam.  First, the majority concluded that KHORAN was the phonetic equivalent of “Koran.”  Second, the majority pointed out that Koran has many alternate spellings and, thus, the public was likely to believe that KHORAN was yet another alternate spelling.  Third, the majority acknowledged that people do, in fact, use “Khoran” as an alternate spelling for “Koran” based on Internet evidence from blogs and web articles.  Fourth, there was no evidence that people other than those who speak Armenian were likely to recognize KHORAN as the Armenian word for “alter.” 

Finally, the majority rejected the dissent’s position that the meaning of Applicant’s mark under the first prong must be determined from the standpoint of the general public rather than that of a substantial composite of the referenced group.  The majority first noted that the result would be the same here regardless of whether it considered how the mark would be perceived by Muslim Americans or the public in general due to the relative renown of the Koran.  However, in limiting the scope of the inquiry to a substantial composite of the referenced group, the majority focused its reasoning on hypothetical situations in which a term or symbol would be clearly understood by members of a particular religious group as being significant to their worship or beliefs, but would not be known or understood by the general public.  The majority refused to interpret the disparagement test in a way that would ignore such situations, holding that the proper analysis of the meaning of the mark under the first prong is from the standpoint of a substantial composite of the referenced group.

The majority concluded that KHORAN would be recognized as the name of the holy text of Islam and that the use of that name for wine would be disparaging to the beliefs of Muslim Americans.  Accordingly, the majority affirmed the refusal of registration under Section 2(a) of the Lanham Act.

CONCLUSION
This decision clarifies the proper analysis for Section 2(a) disparagement claims.  By limiting the scope of the “meaning of the mark” inquiry to the standpoint of a substantial composite of the referenced group, the majority aimed to prevent disparagement stemming from use of a term that would be integral to the beliefs or culture of a particular group but relatively unknown to the public as a whole.