Citable No 30: At PTO's Request, TTAB Reconsiders and Partially Reverses "SQUAW" Disparagement Ruling

In the 30th citable TTAB decision of 2006, the PTO succeeded in obtaining reconsideration and partial reversal of the Board's decision of September 26, 2005, in which the Board had reversed Section 2(a) disparagement refusals of the marks SQUAW and SQUAW ONE for clothing, ski equipment, and retail store services. (TTABlogged here). In re Squaw Valley Devpt. Co., 80 USPQ2d 1264 (TTAB 2006) (on reconsideration).


The Board's earlier ruling was predicated in large part on the PTO's failure to establish that a "substantial composite of Native Americans finds applicant's use of SQUAW in its marks on applicant's goods and services to be disparaging." [emphasis in original].

On reconsideration, the Board again applied the two-part test of Harjo v. Pro-Football, Inc., 50 USPQ2d 1705 (TTAB 1999) [reversed on other grounds] ["Harjo I"] for determining whether matter may be disparaging under Section 2(a):

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;


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.

Examining Attorney Michael Baird, in the reconsideration request, maintained that the Board had (1) misapplied the second part of the Harjo I test (as to clothing and retail services) by requiring evidence that the goods and services be considered in finding a term to be disparaging; (2) incorrectly applied an inter partes standard of evidence in this ex parte appeal; and (3) as to the class 28 goods, incorrectly analyzed the evidence relating to the likely meaning of the term SQUAW under the first part of the Harjo I test.

As to point 1, the Board reviewed the Harjo decisions, and concluded that it had not erred in its original ruling: "the second part of the test for disparagement requires consideration of whether the term would be considered disparaging as the term is used in connection with the identified goods or services."

As to point 2, for which the PTO's arguments were limited to class 25 and 35, the Board agreed that, in light of applicable CAFC precedent (which recognize the limited resources of examining attorneys) it had applied the wrong standard of proof:

"even though there was no direct evidence that a substantial composite of Native Americans find applicant's use of SQUAW in its marks on the identified goods and services to be disparaging, we did not consider whether the examining attorney met the Office's burden under the second prong of the Harjo I test by extrapolating from the evidence of record that a substantial composite of Native Americans find applicant's use of SQUAW in its marks on the identified goods and services to be disparaging."

The Board then reviewed the PTO's evidence in order to correctly apply the second prong of the test. It found the evidence "sufficient to establish prima facie that applicant's marks disparage a substantial composite of Native Americans when used in the context of applicant's goods and services." Applicant's evidence failed to overcome the PTO's case, since it failed to submit "any evidence which suggests that Native Americans do not view 'squaw' as a [disparaging] term for its Class 25 and 26 goods and services."

Finally, as to point 3, the Board reiterated its finding under the first prong of the Harjo I test that, when used in connection with ski equipment, the primary meaning of SQUAW is the SQUAW VALLEY ski resort. Thus as to these goods, Applicant successfully rebutted the PTO's prima facie case that SQUAW is disparaging.

TTABlog comment: I'm not squawking about this one. It is, however, the first decision I can recall wherein the PTO sought reconsideration of an unfavorable TTAB ruling. I wonder why it doesn't happen more often?

Text Copyright John L. Welch 2006.