Divided TTAB finds mark disparaging for use with wine
In In re Lebanese Arak Corporation (Serial 77/072,261, March 4 2010), the Trademark Trial and Appeal Board (TTAB) has affirmed the examining attorney’s refusal to register the mark KHORAN for “alcoholic beverages, namely wines”. The precedential decision was reached by a 3 to 2 majority of an augmented, five-judge panel, used by the TTAB only in “extraordinary cases involving precedent-setting issues of exceptional importance, or when consideration by an augmented panel is necessary to secure or maintain uniformity of [TTAB] decisions”.
Lebanese Arak Corporation, an importer and wholesaler of alcoholic beverages, mostly from the Middle East and Central Asia, sought to register the mark KHORAN in connection with “alcoholic beverages, namely wines”. The application was rejected under Section 2(a) of the Lanham Act on the grounds that the mark was disparaging to the beliefs of Muslims, because KHORAN is the phonetic equivalent of 'Koran', the sacred text of Islam, which forbids the consumption of alcoholic beverages, including wine.
Section 2(a) prohibits the registration of marks that consist of or comprise:
“immoral, deceptive or scandalous matter; or 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.”
In reaching its decision, the majority first distinguished among the various rejections contained in Section 2(a), noting that a rejection on the basis that a mark is scandalous involves a different analysis than a rejection on the basis that the mark is disparaging. In particular, the TTAB noted that, while a mark may be rejected as scandalous if it is found to be offensive to a substantial composite of the general public, the test of whether a “proposed mark is disparaging must be determined from the standpoint of a substantial composite of the referenced group”. In fact, the majority held that “the proper ground for refusing marks which would offend the sensibilities of an ethnic or religious group is that the matter is disparaging to the members of that group, rather than that the matter is offensive or scandalous”, because the test for whether a mark is scandalous requires that a substantial composite of the general public be offended, which would not be appropriate in cases where ethnic and religious groups may constitute small minorities.
The majority applied the following test to determine whether a proposed mark is disparaging:
- 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
- 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 applying this test, the majority first found that public in general, and Muslim Americans in particular, would regard the mark KHORAN as referring to the holy text of Islam. The TTAB further noted that, while KHORAN was not an 'official' spelling of Koran, it was a common misspelling thereof, and, in any event, the silent 'H' would not be perceived when heard by consumers. The majority also rejected the applicant’s argument that the mark was not disparaging because it is actually an Armenian word for 'altar', finding that there was no evidence that anyone other than Armenian speakers would be aware of the Armenian meaning of the mark. The majority then found that the evidence submitted by the examining attorney, which consisted of references to several articles from US newspapers, as well as a book entitled "The Everything Koran Book", was convincing to show that “use of the name of the sacred text of Islam for a substance prohibited by that religion, indeed, a substance prohibited by that very text, would be disparaging to followers of Islam and their beliefs”.
The dissent’s concern with the majority approach was that the majority unfairly considered the likely meaning of the term (the first prong of the test) from the perspective of the disparaged group - Muslim Americans - rather than from the perspective of the general population of the United States. The dissent asserted that the general public would not attribute any specific meaning to the mark except for trademark meaning, and would not perceive it as a misspelling of the word 'Koran'. The dissent then noted that the second prong is where it would be appropriate to consider whether the mark would be disparaging to the referenced group. The minority also reviewed the specimen submitted and found a lack of an overt intention to disparage, which although not dispositive, it found persuasive - a view the majority rejected entirely. Ultimately, the minority urged that any doubt in the situation should be resolved in favour of publication.
Susan M Natland and Jeffrey H Larson, Knobbe Martens Olson & Bear LLP, Irvine
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