Tuesday, December 16, 2008

Precedential No. 52: TTAB Affirms 2(a) Disparagement Refusal of "HEEB" for Clothing and Entertainment Services

Despite Applicant's claim that the Jewish community neither objects to nor views Applicant's use of the mark HEEB as disparaging, the Board affirmed a Section 2(a) refusal of the mark for clothing and entertainment services. The Board noted that there are differing views on the question, but found that a substantial composite of the Jewish community would view the term as disparaging. In re Heeb Media, LLC, 89 USPQ2d 1071 (TTAB 2008) [precedential].

Applicant Heeb Media, LLC argued that Examining Attorney Allison Schrody "ignored the context and manner in which applicant’s mark is used when determining whether the likely meaning of applicant’s mark is disparaging to the Jewish community." It contended that "many of this country’s most established Jewish philanthropies and cultural organizations have openly and actively supported Applicant’s magazine and events through their continued funding and sponsorship."

The Examining Attorney relied on dictionary definitions and NEXIS excerpts to support the PTO's position that "the word HEEB is a highly disparaging reference to Jewish people, that it retains this meaning when used in connection with applicant’s goods and services, and that a substantial composite of the referenced group finds it to be disparaging."

The Board observed that "[w]hether a proposed mark is disparaging must be determined from the standpoint of a substantial composite of the referenced group (although not necessarily a majority) in the context of contemporary attitudes."

Applying the two-part Harjo test (see In re Squaw Valley Development Co., 80 USPQ2d 1264, 1267 (TTAB 2006)), the Board first found that HEEB "means a Jewish person and that HEEB has no other meaning pertinent to clothing or entertainment services." The second question was whether HEEB would be perceived as disparaging. Applicant argued that “the context in which Applicant uses the term 'heeb' is the exact opposite of derogatory and is rather as a symbol of pride and progressive identity among today’s Jews.”

The Board, however, pointed out that Applicant's identification of goods and services "is not limited to use by a Jewish group for those in the Jewish community who are not offended by this use."

What is clear from the record is that within the referenced group there are disparate views, perhaps most prominently delineated along generational lines, as to whether HEEB retains its disparaging character in the context of applicant’s use in connection with its magazine. We find it reasonable to conclude that such disparate views likewise exist in connection with use of the mark for applicant’s clothing and entertainment services. Thus, the question raised by this record is how do we balance competing views within the referenced group.

Based on the evidence of record, the Board concluded that HEEB "is considered to be disparaging by a substantial composite of the referenced group, regardless of context, including in connection with applicant’s identified goods and services."

While applicant may intend to transform this word, the best that can be said is that it is still in transition. Although some in the community may not find it disparaging, ... the evidence shows that there is a substantial component of those in the named group who do.

The Board therefore affirmed the refusal to register.

TTABlog note: Compare this decision to the PTO's action vis-a-vis the DYKES ON BIKES service mark: TTABlog postings here and here.]

Text Copyright John L. Welch 2008.


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