CAFC Affirms TTAB's Shinnecock Smoke Shop Section 2(a) Ruling

The U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's judgment in the Shinnecock Smoke Shop case, in which the Board affirmed the PTO's Section 2(a) false association refusal of the two marks shown below, for cigarettes. (TTABlogged here). The Board found that the marks falsely suggest a connection with the Shinnecock Indian Nation. In re Shinnecock Smoke Shop, 91 USPQ2d 1218 (Fed. Cir. 2009) [precedential]. [An mp3 of the oral argument before the CAFC may be found (here).]


Applicant/Appellant argued that the Shinnecock Indian Nation is not a "person" or "institution" under Section 2(a), but the court agreed with the TTAB that the Nation is indeed an institution. That conclusion, the court found, is in accord with Board precedent and the ordinary meaning of the term.

Applicant also contended that the "institution" issue was not raised below, but the record showed otherwise. Indeed, Applicant's own brief to the Board stated that, after the PTO final rejection, it "filed a request for reconsideration, arguing, among other things, that the Tribe is not a person or institution within the meaning of Section 2(a)."

Finally, Applicant asserted that the PTO's refusal to register the marks, when it has registered "supposedly similar marks also involving Indian tribe names to non-Indians, shows a pattern of racial discrimination," in violation of the Due Process and Equal Protection Clauses of the Fifth Amendment, and of the United Nations' International Convention on the Elimination of All Forms of Racial Discrimination (CERD).

The court ruled, however, that there was no due process violation because Applicant was accorded a full opportunity to prosecute the applications and to appeal the PTO's final refusals to the TTAB. The allegations regarding similar marks are irrelevant because each application must be considered on its own merits, regardless of whether the PTO erred with regard to some other applications.

There was no equal protection violation because the Board and PTO had legitimate, nondiscriminatory reasons for denying registration, and because the most Applicant could establish is that the PTO should have rejected the other marks as well. Moreover, Applicant assumed that the other applicants were not Indians and that this is the reason why their marks were registered. The court agreed with the Board that "[i]t is entirely reasonable to assume that these registrations were issued not because the applicants therein were non-Indians, but because the elements of the Section 2(a) refusal were not or could not be proven by the Office."

Finally, Applicant reliance on CERD was misplaced because CERD is not a self-executing treaty, and affords no private right of action.

And so the court affirmed the TTAB's ruling.

Text Copyright John L. Welch 2009.