2009-1100 In re Shinnecock Smoke Shop

Decided: July 1, 2009

Appellant Smith, a member of the Shinnecock Indian Nation, filed two applications for trademarks. Both were rejected, and Smith appealed to the TTAB. The TTAB affirmed, and Smith appealed to the Federal Circuit Court of Appeals. Both the PTO examiner and the TTAB decided that the words “made under sovereign authority” in the trademark violated Section 2(a), which prohibits falsely connoting a connection to a non-sponsoring entity. The court of appeals affirmed.

On appeal, Smith raised three issues: that his applications were not disqualified under Section 2(a); that the refusal was the result of a pattern of racial discrimination which violated the Due Process Clause of the Constitution; and that the Equal Protection Clause had likewise been violated. The court reviewed the TTAB’s legal conclusions de novo and its factual findings for substantial evidence.

Section 2(a), or 15 USC 1052(a), prohibits marks that “falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols.” Construing the statute, the court found the ordinary meaning of “institution” was broad enough to include an Indian nation. Further, the court’s own precedent had explicitly stated that tribes were subject to 1052(a)’s protection.

The appellant also did not offer, or proffered very little, substantive support that the Shinnecock Indian Nation was not within the definition of “institution,” instead arguing that the issue had not been raised during examination or before the TTAB. However, the court held that the examiner’s remarks and explanations, and indeed the appellant’s own responses to those explanations, indicated that the issue had been properly raised.

The court next held that because the appellant had been given a full and meaningful opportunity to present his applications and appeals, he had not been denied due process. Lastly, the court tackled the Equal Protection argument, holding that, because the refusal of his applications was legally proper under Section 2(a), such an argument suggests only that other similar applications which had been registered should not have been. Twisting such an argument in support of the proposition that the appellant’s marks therefore should be registered was improper.