Thursday, March 11, 2010

Precedential No. 10: Divided TTAB Panel Affirms 2(a) Disparagement Refusal of "KHORAN" for Wines

An augmented TTAB panel of five judges affirmed (3-2) a Section 2(a) disparagement refusal to register the mark KHORAN for wines, concluding that "Muslims would find the mark KHORAN for wines as disparaging to themselves, their religions and their beliefs." The dissent, however, found significant doubt that the word KHORAN, when used in the context of wine, would be equated with the Islamic holy text. In re Lebanese Arak Corporation, 94 USPQ2d 1215 (TTAB 2010) [precedential].

The panel majority reviewed the "structure and development" of Section 2(a), observing that "the proper ground for refusing marks which would offend the sensibilities of an ethnic or religious group is that the matter is disparaging to the members of that group, rather than the matter is offensive or scandalous." The disparagement bar differs from the "scandalousness provision" of Section 2(a) in that the latter protects the public as a whole and the effect of the mark is judged from a general perspective, whereas for the former there is a particular object of disparagement: e.g., a person, group, set of beliefs, etc.

The determination of disparagement requires the application of a two-part test: (1) what is the likely meaning of the mark, taking into account the nature of the goods and the way the mark is used; and (2) if that meaning refers to identifiable persons, institutions, beliefs, or national symbols, is that meaning disparaging to a substantial composite thereof.

The panel majority found "no real dispute that the Office has met the burden of proving the second part of the test. Specifically, the examining attorney has submitted a significant amount of evidence showing that the Koran is 'the sacred text of Islam, considered by Muslims to contain the revelations of God to Muhammad,' and that Islamic authorities view alcohol as a prohibited substance. Applicant does not dispute that this is the case."

The real disagreement between Applicant and the Examining Attorney, and between the majority and dissent, concerned the likely meaning of KHORAN. The Examining Attorney argued that KHORAN is the phonetic equivalent of Koran, while Applicant asserted that it is an Armenian term with the English translation of "altar."

The majority found that KHORAN "gives the commercial impression that it is the word Koran, and that the public (other than Armenian speakers) in general, and Muslim Americans in particular, would regard the mark as referring to the holy text of Islam." It noted, inter alia, that KHORAN and "Koran" may be pronounced identically, and that there are variations in how "Koran" is spelled, including "Khoran."

The dissent argued that the majority misapplied the disparagement test and it disagreed with the determination of the likely meaning of KHORAN.

Specifically, we dispute the majority’s contention that the determination of “what is the likely meaning of the matter in question” should be made from the perspective of the disparaged group. Rather, we believe the Board must look to the general population of the United States and how they will understand applicant’s mark when it is being used in connection with the identified goods or services, in this case wine.

According to the dissent, the majority's approach "will lead to cases where a proposed mark will be found disparaging despite the fact that most Americans attribute a different and inoffensive meaning to that mark."

Moreover, according to the dissent, the Islamic prohibition on alcoholic beverages "may decrease the likelihood that anyone from the general public, at least those familiar with the prohibition, would understand applicant’s mark as a reference to the Koran" as opposed to a reference to the Armenian word.

In short, the dissent concluded that the first part of the disparagement test had not been met. It had "significant doubt as to whether or not the general public is even likely to equate applicant's mark, when considered in the context of wine, with the Islamic holy text." The dissenters would resolve this doubt in favor of Applicant, bearing in mind that an "opposition or cancellation proceeding ... may be filed where the parties will have an opportunity to fully develop an evidentiary record and argue the issue."

TTABlog comment: When is the last time that the Board rendered a decision with an augmented panel? Why, pray tell, was it augmented here?

In any case, I think that, for the general public, the word KHORAN would bring to mind "Koran," and so the dissent's insistence that the meaning of the term be considered from the perspective of the general public would not have made a difference in the outcome here. The majority made that point.

Text Copyright John L. Welch 2010.


At 4:16 PM, Anonymous Anonymous said...

John a quick question.
What percentage of TTAB precedential decisions have ever been reversed upon subsequent Civil or Appelate review?



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