SHINNECOCK decision affirmed on appeal

United States of America
In In re Shinnecock Smoke Shop (Case 2009-1100, July 1 2009), the US Court of Appeals for the Federal Circuit has affirmed a decision of the Trademark Trial and Appeal Board (TTAB) in which the latter had refused to register the marks SHINNECOCK BRAND FULL FLAVOR and SHINNECOCK BRAND LIGHTS for cigarettes on the grounds that the marks falsely suggested a connection with a non-sponsoring entity.
On appeal, the applicant - a member of the Shinnecock Indian Nation and sole proprietor of Shinnecock Smoke Shop - raised several arguments:

  • the Shinnecock Indian Nation is not an 'institution' under Section 2(a) of the Lanham Act; and
  • the refusal to register the marks was part of a pattern by the US Patent and Trademark Office (USPTO) of racial discrimination in violation of the due process and equal protection clauses of the US Constitution.  
Section 2(a) of the Lanham Act prohibits the registration of marks that “falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols”. The applicant did not contend that the suggestion of a connection with the Shinnecock Nation was not false. Rather, he argued that the Shinnecock Nation was not a 'person' or 'institution' within the meaning of Section 2(a). 

The Federal Circuit agreed with the TTAB (and the examining attorney) that the term 'institution' was broad enough to include a self-governing Indian nation. The applicant offered little support to the contrary, but rather argued that the issue of whether the Shinnecock Nation was an 'institution' was not raised before the USPTO. The applicant contended that the USPTO’s rejection was based on the conclusion that the Shinnecock Nation was a 'person' under Section 2(a). The Federal Circuit disagreed with this characterization, holding that the record showed that the terms 'person', 'juristic person' and 'institution' were essentially treated in the same way. The court was confident that the issue was properly raised by the USPTO and that the applicant “was aware that the ‘institution’ issue was in play”. 
As to the pattern of racial discrimination, the Federal Circuit agreed with the TTAB that these allegations were meritless. The applicant had a full opportunity to prosecute his applications such that the due process clause was satisfied. The applicant’s reference to third-party registrations that were allegedly treated differently were not persuasive. The court concluded that even if those registrations had been issued in error, the error did not justify a further error in approving the marks at issue. 
With respect to the equal protection argument, the court found that there were legitimate, non-discriminatory reasons for denying registration. At most, the applicant could establish only that the USPTO should have rejected other marks, not that his marks should have been accepted. Additionally, the applicant’s arguments were based on unsupported assumptions - for example, that the successful applicants were non-Indians who did not have consent of the tribal entities at issue. 
This case is another example of how applicants will find it difficult to rely on the USPTO's past patterns of practice. Without more, applicants will not be able to persuade the TTAB or the Federal Circuit that two wrongs make a right.
Karin Segall, Foley & Lardner LLP, New York

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