Ritchie v. Simpson

• Decision Date: 15 March 1999
• Docket Number: Nos. 99,845,100,431,101,186 and 101,216,s. 99,845
• Citation: 50 USPQ2d 1023,170 F.3d 1092
• Parties: William B. RITCHIE, Appellant, v. ORENTHAL JAMES SIMPSON, Appellee. 97-1371 (Opposition).
• Court: U.S. Court of Appeals — Federal Circuit

Page 1092

170 F.3d 1092

50 U.S.P.Q.2d 1023

William B. RITCHIE, Appellant, v. ORENTHAL JAMES SIMPSON, Appellee.

97-1371 (Opposition Nos. 99,845, 100,431, 101,186 and 101,216).

United States Court of Appeals Federal Circuit.

March 15, 1999.

William B. Ritchie, pro se, of Concord, New Hampshire.

Before NEWMAN, PLAGER, and RADER, Circuit Judges.

Opinion for the court filed by Circuit Judge PLAGER. Dissenting opinion filed by Circuit Judge NEWMAN.

PLAGER, Circuit Judge.

Applications for federal registration of the trademarks O.J. SIMPSON, O.J., and THE JUICE were filed on behalf of Orenthal James Simpson for use with a broad range of goods, including figurines, trading cards, sportswear, medallions, coins, and prepaid telephone cards. After the marks were approved by an examiner in the United States Patent and Trademark Office ("PTO"), the marks were published in the Official Gazette in accordance with 15 U.S.C. § 1062(a) (1994).

Pursuant to 15 U.S.C. § 1063 (1994), William B. Ritchie filed oppositions to registration of the three marks, asserting that they are not registrable on either of two statutory grounds: first, that the marks are immoral or scandalous matter and should be denied registration under § 2(a) of the Lanham Act, and second, that one of the marks is primarily merely a surname and thus unregistrable under § 2(e)(4) of the Lanham Act. The Trademark Trial and Appeal Board ("Board") dismissed the oppositions, holding that Mr. Ritchie did not have standing to oppose the registrations. ¹

Because the law as properly understood grants standing in an opposition proceeding to a person in Mr. Ritchie's position, we reverse the decision of the Board and remand the case for further proceedings.

A.

The question in this case is not whether the marks, O.J. SIMPSON, O.J., and THE JUICE, constitute immoral or scandalous matter, thus precluding their registration under the law. Rather, the issue is the narrower one of whether Mr. Ritchie is entitled to come before the Board and raise that question, that is--whether Mr. Ritchie has "standing" to oppose the registration.

The Board answered the question of Mr. Ritchie's standing in the negative. That answer is in error for two reasons. First, the controlling precedents of this court, as well as the precedents of the Board, are fully consistent with recognizing that someone in Mr. Ritchie's position has standing to oppose a registration on the grounds raised here. Second, this court has recently made clear that the Board, in carrying out its duties under the Lanham Act, may not decide whether a registration is scandalous simply by asserting its own views and values. Instead, the Board has a duty to obtain the views of the affected public. Since Mr. Ritchie alleges that he is such a person, the Board's refusal to give him a hearing is inconsistent with its duty.

B. Standing to Oppose a Mark

Under § 2 of the Lanham Act, a trademark that comprises immoral, deceptive, or scandalous matter which may disparage persons or beliefs is not entitled to registration by the PTO:

§ 2. Trademarks registrable on principal register

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--

(a) Consists of or comprises immoral, deceptive, or scandalous matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute;....

15 U.S.C. § 1052(a) (1994). Whether a mark comprises immoral and scandalous matter is to be ascertained in the context of contemporary attitudes, and the relevant viewpoint is not necessarily that of a majority of the general public, but of a "substantial composite." In re Mavety Media Group Ltd., 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925-26 (Fed.Cir.1994).

This court has made it clear that the officials of the PTO may not readily assume, without more, that they know the views of a substantial composite of the public. See id. In this light, we have commended the practice of resolving the issue of whether a mark comprises scandalous matter by first permitting the mark to pass for publication, and then allowing interested members of a composite of the general public who consider the mark to be scandalous to bring opposition proceedings. See id. at 1374, 33 F.3d 1367, 31 USPQ2d at 1928. By so doing, the PTO avoids the risk of pre-judging public attitudes toward a proposed registration based on ad hoc responses by government officials, while at the same time affording the affected public an opportunity to effectively participate in the question of whether the registration is proper. See id. at 1374, 33 F.3d 1367, 31 USPQ2d at 1928. Thus, the policy behind the procedure for determining whether a mark is scandalous encourages, if not requires, participation by members of the general public who seek to participate through opposition proceedings.

In courts created pursuant to Article III of the United States Constitution, a plaintiff must make out a "case or controversy" between himself and a defendant to have standing. See Warth v. Seldin, 422 U.S. 490, 498-99, 95 S.Ct. 2197, 45 L.Ed.2d 343 (1975). However, "case" and "controversy" restrictions for standing do not apply to matters before administrative agencies and boards, such as the PTO. See, e.g., California Ass'n of Physically Handicapped, Inc. v. FCC, 778 F.2d 823, 826 n. 8 (D.C.Cir.1985) ("The Article III restrictions under which this court operates do not, of course, apply to the FCC. The Commission may choose to allow persons without Article III 'standing' to participate in FCC proceedings."); Ecee, Inc. v. Federal Energy Regulatory Comm'n, 645 F.2d 339, 349-50 (5th Cir.1981) ("Administrative adjudications, however, are not an article III proceeding to which either the 'case or controversy' or prudential standing requirements apply; within their legislative mandates, agencies are free to hear actions brought by parties who might be without standing if the same issues happened to be before a federal court."); see also 13A Charles A. Wright, Arthur R. Miller, and Edward H. Cooper, Federal Practice and Procedure, § 3531.13, at 80 (1984 & Supp.1997) ("Administrative agencies are not established under Article III and should not be bound by judicial rules of standing in determining what parties to admit to adjudicatory or rulemaking proceedings, any more than they are bound by other judicial rules of procedure.").

Thus, the starting point for a standing determination for a litigant before an administrative agency is not Article III, but is the statute that confers standing before that agency. In the case at hand, the starting point for the standing determination of the opposer is § 13 of the Lanham Act, which provides:

Any person who believes that he would be damaged by the registration of a mark upon the principal register may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor....

15 U.S.C. § 1063.

Section 13 of the Lanham Act establishes a broad class of persons who are proper opposers; by its terms the statute only requires that a person have a belief that he would suffer some kind of damage if the mark is registered. However, in addition to meeting the broad requirements of § 13, an opposer must meet two judicially-created requirements in order to have standing--the opposer must have a "real interest" in the proceedings and must have a "reasonable" basis for his belief of damage.

1. The "Real Interest" Test

Since the days of our predecessor court, an opposer has been required to show that he has a "real interest" in the outcome of a proceeding in order to have standing. See, e.g., Universal Oil Prod. Co. v. Rexall Drug & Chem. Co., 59 C.C.P.A. 1120, 463 F.2d 1122, 1123, 174 USPQ 458, 459 (C.C.P.A.1972) ("Standing, within the meaning of § 13, is found when the opposer establishes a real interest in the proceeding." (internal citation omitted)); Tanners' Council of Am., Inc. v. Gary Indus. Inc., 58 C.C.P.A. 1201, 440 F.2d 1404, 1406, 169 USPQ 608, 609 (C.C.P.A.1971) ("[A]n opposition may be filed by anyone having a real interest."). This "real interest" requirement stems from a policy of preventing "mere intermeddlers" who do not raise a real controversy from bringing oppositions or cancellation proceedings in the PTO. See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1028, 213 USPQ 185, 189 (C.C.P.A.1982); see also Tanners' Council, 440 F.2d at 1406, 169 USPQ at 609; Singer Mfg. Co. v. Birginal-Bigsby Corp., 50 C.C.P.A. 1380, 319 F.2d 273, 276-77, 138 USPQ 63, 66 (C.C.P.A.1963) (An opposer who was not an intermeddler was permitted to oppose a mark.). ² Pursuant to the "real interest" requirement, to have standing an opposer to a registration is required to have a legitimate personal interest in the opposition. See Lipton, 670 F.2d at 1029, 213 USPQ at 189. In other words, the opposer must have a direct and personal stake in the outcome of the opposition.

The Board placed an overly constrictive interpretation on what constitutes a "real interest." According to the Board, a person may only have a "real interest" if he or she has "a personal interest in the proceeding beyond that of the general public." Ritchie, 41 USPQ2d at 1861 (emphasis added). The Board supported its interpretation of the "real interest" test by citing Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed.Cir.1987), a case concerning a trade association's standing to oppose a mark. See Ritchie, 41 USPQ2d at 1861. In Jewelers, 823 F.2d at 492-93, 2 USPQ2d at 2022-23, the "beyond that of the general public" language was paraphrased from language from Lipton, 670 F.2d at 1028, 213 USPQ at 188, which itself took out of context language in Sierra Club v. Morton, 405 U.S. 727, 92...