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In re Pamela Geller and Robert B. Spencer
Published By Brinks Article May 13, 2014

IN RE PAMELA GELLER and ROBERT B. SPENCER
Case No. 2013-1412
Decided: May 13, 2014
110 U.S.P.Q.2d 1867
Appeal from the Trademark Trial and Appeal Board: In Re Geller, 2013 TTAB LEXIS 67 (TTAB Feb 27, 2014)
Federal Circuit Judges: Newman, O’Malley, and Wallach

On May 13, 2014, the Federal Circuit affirmed the Trademark Trial and Appeal Board’s refusal to register the mark STOP THE ISLAMISATION OF AMERICA for use in connection with “providing information regarding understanding and preventing terrorism” as disparaging under Section 2(a) of the Lanham Act. Section 2(a) provides that the USPTO may refuse to register a trademark if it “[c]onsists 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. Section 1052(a).

The Court’s analysis centered on the two-part inquiry previously set forth by the Board in In re Lebanese Arak Corp for the Section 2(a) disparagement analysis:

  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.

Under the first prong, the likely meaning of the matter in question, the TTAB had found that ISLAMISATION has two meanings: a religious meaning and a political meaning. The “religious meaning” is the “conversion of conformance to Islam” and the “political meaning” is “a sectarianization of a political society through efforts to ‘make [it] subject to Islamic Law.’”

On appeal, the Applicants conceded that the mark would be disparaging under the religious meaning and argued that only the political meaning applies to the term Islamisation. The Federal Circuit dispensed with this argument by citing to evidence in the record supporting the religious meaning of ISLAMISATION. The Court noted that support for the political meaning was “less widely available and not necessarily reflective of the general public’s understanding of the meaning of applicant’s mark,” when compared with the evidentiary support for the religious meaning of Islamisation.

In reviewing the Board’s handling of the second prong, the Court found that substantial evidence supported the Board’s conclusion that Appellant’s mark may be disparaging to Muslims under the political meaning. Further noting that nothing in the political meaning of Islamisation promotes violence, the Court upheld the Board’s conclusion that the political meaning of the word with terrorism and violence creates an improper disparaging connection between Muslims and Islamisation.

Although the Federal Circuit’s affirmance did not comment on First Amendment issues, the Board’s decision explained that “[o]ur decision does not impact [applicants’] rights under the First Amendment,” “[t]he Refusal to register Applicants’ mark does not impede their right to use the mark. As such it imposes no restraint or limit on their ability to communicate ideas or express points of view.” Accordingly, although applicants were denied registration, they may use the phrase as a mark in commerce.