Free Speech May Allow Disparagement, but the Trademark Office Does Not: TTAB Affirms Refusal to Register STOP THE ISLAMISATION OF AMERICA
On February 7, 2013, the Trademark Trial and Appeal Board affirmed the refusal to register the mark, STOP THE ISLAMISATION OF AMERICA, for “providing information regarding understanding and preventing terrorism” on the basis that the mark “may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols.” The registration of disparaging marks is explicitly prohibited by Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a).
Applying the legal test for disparagement of a non-commercial group (such as a racial or religious group) set forth in In re Lebanese Arak Corp., the Board evaluated the likely meaning of the mark, as well as whether its meaning may be disparaging to a “substantial composite” of the group in question. In affirming the examining attorney’s refusal to register, the Board found that the mark conveyed the message “that the conversion or conformance to Islam must be stopped in order to prevent the intimidating threats and violence associated with terrorism.” It also found that the direct association of Islam and its followers with terrorism would be offensive to the majority of Muslims, citing a number of articles from prominent publications in support of its position.
The applicants’ arguments that refusal to register the mark violated their right to free speech under the First Amendment were rejected wholesale. As the Board rightly noted, the Trademark Office’s decision on registerability has no impact on the applicants’ ability to use the mark. Consequently, the refusal to register “imposes no restraint or limit on their ability to communicate ideas or express points of view, and does not suppress any tangible form of expression.”
Catherine M. Clayton is a Director in the Gibbons Intellectual Property Department.