In re Geller, 2013–1412.

• Decision Date: 13 May 2014
• Docket Number: No. 2013–1412.,2013–1412.
• Citation: 751 F.3d 1355
• Parties: In re Pamela GELLER and Robert B. Spencer.
• Court: U.S. Court of Appeals — Federal Circuit

751 F.3d 1355

In re Pamela GELLER and Robert B. Spencer.

No. 2013–1412.

United States Court of Appeals,Federal Circuit.

May 13, 2014.

David Yerushalmi, American Freedom Law Center, of Washington, DC, argued for appellants.

Thomas L. Casagrande, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, argued for appellee. With him on the brief were Nathan K. Kelley, Solicitor, Benjamin T. Hickman, and Christina Hieber, Associate Solicitor.

Before NEWMAN, O'MALLEY, and WALLACH, Circuit Judges.

WALLACH, Circuit Judge.

Applicants Pamela Geller and Robert B. Spencer (“Appellants”) appeal from the Trademark Trial and Appeal Board's (“Board”) refusal to register the mark STOP THE ISLAMISATION OF AMERICA in connection with the recited services of “understanding and preventing terrorism.” J.A. 27. The Board found the mark contains “matter which may disparage” a group of persons in violation of § 2(a) of the Trademark Act. Because the Board's finding is supported by substantial evidenceand in accordance with law, this court affirms.

Background

In February 2010, Appellants filed an intent-to-use application to register the mark STOP THE ISLAMISATION ¹ OF AMERICA in connection with “[p]roviding information regarding understanding and preventing terrorism.” J.A. 27. The Examining Attorney refused the application on January 19, 2011, on the ground that the mark may be disparaging to American Muslims pursuant to § 2(a) of the Trademark Act, 15 U.S.C. § 1052(a) (2006). Appellants filed an appeal to the Board, which affirmed the § 2(a) refusal. In reaching this conclusion, the Board considered the likely meaning of the mark, and then determined whether that meaning was likely to disparage “ ‘a substantial composite of the referenced group.’ ” J.A. 2–3 (quoting In re Lebanese Arak Corp., 94 U.S.P.Q.2d 1215, 1217 (T.T.A.B.2010)).

The Board found the term “Islamisation,” as used in the mark, had two likely meanings: (1) “the conversion or conformance to Islam” (“the religious meaning”), J.A. 8; and (2) “a sectarianization of a political society through efforts to ‘make [it] subject to Islamic law’ ” (“the political meaning”), J.A. 9 (alteration in original). The religious meaning was supported by dictionary definitions and evidence of how the term was used in the marketplace, J.A. 3–8, and the Board found this meaning was “more reflective of the public's current understanding of the term.” J.A. 12. The political meaning of “Islamisation,” in turn, was supported by various publications by “professionals, academics and religious and legal experts.” J.A. 9. Such evidence was “less widely available” and “not necessarily reflective of the general public's understanding” of Islamisation. J.A. 11. Nevertheless, the Board found it established “a second meaning” of Islamisation, “at least to academic, professional, legal and religious experts.” J.A. 12.

The Board determined the mark may be disparaging to American Muslims under both meanings of “Islamisation.” J.A. 23. With respect to the religious meaning, the Board found the mark was disparaging to American Muslims because “[t]he admonition in the mark to STOP sets a negative tone and signals that Islamization is undesirable and is something that must be brought to an end in America.” J.A. 16. Moreover, the Board found Appellants' proposed use of the mark for “understanding and preventing terrorism” resulted in “a direct association of Islam and its followers with terrorism.” ² J.A. 16. Because “the majority of Muslims are not terrorists and are offended by being associated as such,” the Board determined the mark was disparaging under the religious meaning of Islamisation. J.A. 16.

The Board also found the mark would be disparaging under the political meaning of Islamisation. J.A. 19. It determined that even this narrower definition does not “mandate the use of violence or terrorism,” so the application's suggestion that political Islamisation must be “stop[ped]” to “prevent[ ] terrorism” would be disparaging to a substantial composite of American Muslims. J.A. 18–19, 21. The Board accordingly affirmed the Examining Attorney's refusal to register the mark under § 2(a) of the Trademark Act.

Appellants filed this timely appeal. This court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B) (2012).

Discussion

On appeal, Appellants argue there is no substantial evidence to support the Board's finding that the proposed mark may be disparaging in violation of § 2(a) of the Trademark Act. They contend the Board improperly relied “on arbitrary and anecdotal evidence” in determining the mark's meaning and in finding that meaning may disparage American Muslims. Appellants' Br. 2, 13, 19.

Section 2(a) of the Trademark Act provides that the Board may refuse an application when the trademark “[c]onsists of or comprises ... matter which may disparage ... persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” 15 U.S.C. § 1052(a) (emphasis added). Although neither party was able to identify a prior case in this court or its predecessor setting forth the legal analysis for a § 2(a) refusal based on disparagement, all parties agree the proper inquiry was set forth by the Board in In re Lebanese Arak Corp.:

(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.

In re Lebanese Arak Corp., 94 U.S.P.Q.2d at 1217;see also Harjo v. Pro–Football, Inc., 50 U.S.P.Q.2d 1705, 1740–41 (T.T.A.B.1999), rev'd on other grounds,284 F.Supp.2d 96 (D.D.C.2003). A mark may disparage when it “ ‘dishonor[s] by comparison with what is inferior, slight[s], deprecate[s], degrade[s], or affect[s] or injure[s] by unjust comparison.’ ” Pro–Football, Inc. v. Harjo, 284 F.Supp.2d 96, 124 (D.D.C.2003) (quoting Harjo, 50 U.S.P.Q.2d at 1737 n. 98).

The determination that a mark may be disparaging “is a conclusion of law based upon underlying factual inquiries.” Cf. In re Mavety, 33 F.3d 1367, 1371 (Fed.Cir.1994) (applying that standard with respect to whether a mark is “scandalous” under § 2(a)). The Board's factual findings are reviewed for substantial evidence, “while its ultimate conclusion as to registrability is reviewed de novo.” In re Fox, 702 F.3d 633, 637 (Fed.Cir.2012).

I.

The first prong of the disparagement test determines “the likely meaning of the matter in question.” In re Lebanese Arak Corp., 94 U.S.P.Q.2d at 1217. The Board found the term ISLAMISATION used in Appellants' mark has two likely meanings: the religious meaning and the political meaning. ³ On appeal, Appellants argue the Board “ignore[d] the overwhelming evidence in the record 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.” Appellants' Br. 13 (emphasis added).

To the extent Appellants argue the political meaning of Islamisation is the sole likely meaning under prong one, they are incorrect. The Board relied on three separate types of evidence in support of the religious meaning. First, it considered dictionaries that listed the primary definition of “Islamize” as “ ‘to convert’ ” or “ ‘conform’ ” to Islam. J.A. 4 (quoting, e.g., J.A. 58 (Islamize, Dictionary.com, http:// dictionary. reference. com (as retrieved on Apr. 28, 2010))); J.A. 1040 ( Islamize, YourDictionary, http:// yourdictionary. com/ Islamize (as retrieved on Sept. 1, 2010)); see also J.A. 3 n. 3 (“The definitions indicate that ‘Islamization’ is the noun form of the transitive verb ‘Islamize.’ ”). Next, the Board considered certain essays posted on Appellants' website, www. sioaonline. com, ⁴ which were “featured immediately underneath the website's STOP THE ISLAMIZATION OF AMERICA banner.” J.A. 6. Two of these essays opposed construction of mosques in the United States, and another essay discussed an ad campaign to provide “assistance” to Muslims considering leaving the Islamic faith. J.A. 5–6, 1043–46, 1064–67, 1075–77. Finally, the Board considered readers' comments posted on Appellants' website as “reflect[ive of] the website's message of stopping the spread of Islam in the United States.” J.A. 6.

Appellants do not challenge the Board's reliance on online dictionaries, but instead assert error in the remainder of the Board's analysis of “Islamisation.” They argue the Board improperly relied on “irrelevant essays and arbitrarily selected anonymous ‘comments' posted to Appellants' blog.” Appellants' Br. 13.

Appellants contend the essays posted on their website do not advocate suppression of the Islamic faith, but only oppose political Islamisation. The Board disagreed, as do we. The first essay they discuss is titled “[Stop the Islamisation of America] Mosque Manifesto: All Mosques are Not Created Equal, A Handy Guide to Fighting the Muslim Brotherhood.” J.A. 1043. Appellants characterize this essay as merely opposing “Islamist Muslim Brotherhood groups” that “use mosque-building as a political tool to accomplish Islamisation.” Appellants' Br. at 14. This is an overly narrow interpretation of the “Mosque Manifesto” essay, which provides tips for opposing “huge monster mosque[s]” proposed in people's communities. J.A. 1044. Although portions of the essay refer to political forces such as the Muslim Brotherhood, the article as a whole implicates Islam more generally. See, e.g., J.A. 1045 (quoting a source that “80% of American mosques were controlled by ‘extremists' ”); J.A. 1043 (“As we have been reminded...