U.S. Patent and Trademark Office Snuffs Out Trademark Applications for "Shinnecock Cigarettes."

Warning - Improper Use of Tribal Names Can Kill Your Trademark: U.S. Patent and Trademark Office Snuffs Out Trademark Applications for "Shinnecock Cigarettes."

By: Rebeccah L. Gan Generally, the hot topic involving trademarks and Indian tribes centers around challenging trademark protections for sports teams' marks which appropriate Native American names and imagery in a manner that many in and outside Indian country consider to be offensive or disparaging.(1) In In re Shinnecock Smoke Shop, a recent case before the U.S. Trademark Trial and Appeal Board (the "TTAB"), the Board tackled the issue of false suggestion of connection with an Indian tribe head-on. In re Shinnecock Smoke Shop, TTAB Ex Parte Board Decision, Serial Nos. 78918061 and 78918500 (TTAB September 10, 2008). Jonathan K. Smith, an on-reservation member of the Shinnecock Indian Nation, and sole proprietor of the Shinnecock Smoke Shop, filed two trademark applications for Shinnecock and differing designs in connection with cigarettes. The Trademark Office refused registration, on the grounds that Smith's usage of the Shinnecock name falsely suggested a connection with Smith's cigarettes and Smith's tribe, the Shinnecock Indian Nation of eastern Long Island, New York. The path to challenging racially offensive trademarks for, e.g., a controversial Native American mascot like the Cleveland Indians' Chief Wahoo, relies on Section 2(a) of the Trademark Act which prohibits the registration of a mark that consists of or comprises matter that may disparage, or bring into contempt or disrepute, persons, institutions, beliefs or national symbols. See In re Squaw Valley Development Co., 80 USPQ2d 1264 (TTAB 2006) (holding that SQUAW and SQUAW ONE were disparaging terms when used in connection with clothing and retail store services in the field of sporting goods and equipment because the likely meaning of "Squaw" is an American Indian woman or wife, and the Trademark Office's evidence established prima facie that a substantial composite of Native Americans would consider the term to be offensive). However, Section 2(a) of the Trademark Act contains another prohibition important to Native American tribes, namely, it also bars the registration of a mark that consists of or comprises matter that may falsely suggest a connection with a person or institution, e.g., an Indian tribe. 15 U.S.C. � 1052(a); See In re White, 73 USPQ 2d 1713 (TTAB 2004) (Trademark Office's refusal to register APACHE for use in connection with cigarettes because the name falsely suggested a connection with Apache tribes). To succeed on a claim that a given trademark violates Section 2(a)'s prohibition on false suggestion of connection, the Trademark Office (or an opposing party in an inter partes proceeding) must establish the following:
    (1) that the mark at issue is the same as, or a close approximation of, the name or identity previously used by another person or institution; (2) that the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution; (3) that the person or institution named by the mark is not connected with the activities performed by applicant under the mark; and (4) that the fame or reputation of the person or institution is such that, when the mark is used with the applicant's goods or services, a connection with the person or institution would be presumed. See In re White, 73 USPQ2d 1713 (TTAB 2004); In re Sloppy Joe's International Inc., 43 USPQ2d 1350 (TTAB 1997).
In Shinnecock Smoke Shop, the TTAB affirmed the Trademark Office's Section 2(a) "false suggestion of a connection" refusal, noting that the Shinnecock Indian Nation "has been a state-recognized tribe for over 200 years;"(2) that the wording SHINNECOCK has no other significance than as the name of the tribe; and that mere membership in a tribe or even the tribe's awareness of Smith's marketing of the cigarettes under the Shinnecock name was not enough as to obviate a Section 2(a) refusal, as to overcome a false association refusal, Smith needed to demonstrate that the Shinnecock Nation endorses or sponsored the sale of his cigarettes. Shinnecock at 10. (Emphasis added). Finally, the TTAB opined that the Shinnecock Indian Nation and its Shinnecock name are well-known and that "because Indian tribes, in general, are known to manufacture and market cigarettes,"(3) consumers of Smith's Shinnecock cigarettes were likely to mistakenly presume the existence of a commercial connection between Smith's cigarettes and the Shinnecock Tribe. In support of his opposition to the Section 2(a) refusal, Smith introduced a creative, but ultimately ill-fated argument, namely, that since the U.S. Trademark Register is replete with registrations for marks owned by non-Indians, containing tribal names or the names of famous Indians(4), owned by non-Indians, the Trademark Office's refusal of his Shinnecock cigarette applications constituted racial discrimination in violation of Smith's constitutional due process and equal protection rights under the Fifth Amendment of the U.S. Constitution. The TTAB quickly disposed of Smith's discrimination claim, reasoning that the existence of registrations for marks containing Indian names was either because the goods or services in question were not those which consumers were likely to believe that the tribe would provide, or because the Office had erred in allowing registration of the applied-for marks, and not because of racial bias. Shinnecock Smoke Shop at 21, quoting In re Boulevard Entertainment Inc., 67 USPQ2d 1475 (Fed. Cir. 2003) ("the fact that some marks have been registered . . . in violation of the governing statutory standard does not mean that the [Patent and Trademark Office] must forgo applying the standard in all cases"). The Shinnecock Smoke Shop case raises some interesting trademark issues, namely: (1) Who speaks for a tribe as a government or institution for trademark purposes? (2) What constitutes tribal endorsement or sponsorship of a member of a tribe's use of a tribal name and/or insignia? and (3) besides cigarettes, what other goods or services could the Trademark Office and/or courts find that consumers would presume a commercial connection between tribes and the goods and services marketed under a tribal name or insignia? Preventing Improper Registration of Tribal Names and Insignia: To prevent trademark registration of marks misusing tribal names or insignia, Indian can take several preventative measures, inter alia: (1) Write to the U.S. Patent and Trademark Office (the "USPTO") and request that your tribe's official insignia be entered in the USPTO Database of Native American Tribal Insignia, so that USPTO Trademark Examining Attorneys will be able to spot misuses of tribal insignia in pending trademark applications and refuse registration pursuant to Section 2(a) of the Trademark Act; (2) Police misuse of the tribal name or insignia by improper parties; (3) Submit a letter of protest to the USPTO Trademark Commissioner when your tribe becomes aware that an improper party has filed for a trademark application incorporating a tribal name or insignia; (4) Consider filing opposition proceedings against pending trademark applications once they have been published for public opposition; (5) Consider filing cancellation proceedings against registered marks misusing tribal names or insignia. _____________________________________________________________________________________ (1). See Harjo v. Pro-Football Inc., 50 USPQ2d 1705 (TTAB 1999), rev'd on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003), remanded, 415 F.3d 44, 75 USPQ2d 1525, motion for summary judgment granted, 87 USPQ2d 1891 (D.D.C. 2008) (holding that laches barred claims from Native American petitioner who had waiting eight years past the age of m
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