The U.S. Court of Appeals for the Federal Circuit recently affirmed the Trademark Trial and Appeal Board’s (the Board) decision wherein it affirmed the U.S. Patent and Trademark Office’s (USPTO) refusal to register two trademarks on the basis that they falsely suggested a connection with the non-sponsoring Shinnecock Indian Nation. In re Shinnecock Smoke Shop, Case No. 09-1100 (Fed. Cir., July 1, 2009) (Clevenger, J.)

Jonathan Smith (applicant), a member of the Shinnecock Indian nation and sole proprietor of Shinnecock Smoke Shop, sought to register the marks SHINNECOCK BRAND FULL FLAVOR and SHINNECOCK BRAND LIGHTS for cigarettes. Citing 15 U.S.C. §1052(a), the examining attorney refused to register the proposed marks on the basis that the marks falsely suggested a connection with a non-sponsoring entity. Smith unsuccessfully appealed the refusal to the Board and then to the Federal Circuit.

Smith did not contest that the marks falsely suggested a connection with the Shinnecock Indian Nation. Instead, he challenged the Board’s determination that the Shinnecock Indian Nation was a “person” or “institution” under § 1052(a). The Federal Circuit disagreed, finding that the Shinnecock Indian Nation was an “institution.” The Court noted that its construction was in accord with both Board precedent and the ordinary meaning of the term.

Smith also argued that that the USPTO’s refusal to register the marks, when it had 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.

The Court found Smith’s allegations meritless, holding that there no was due process violation because he was provided a full opportunity to prosecute his applications and to the appeal the USPTO’s final rejections to the Board. Further, Smith’s allegations regarding similar marks were irrelevant because each application must be considered on its own merits, regardless of whether the USPTO erred with respect to other third-party applications. The Federal Circuit similarly found no equal protection violation because the Board and the USPTO had legitimate, nondiscriminatory reasons for denying registrations, noting that the most Smith could establish was that the USPTO should have rejected other applications to register marks. Moreover, Smith’s argument was based on the unsupported assumption that the other successful applicants were non-Indians and that this is the reason why their marks were registered. The Court agreed with the Board, stating 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.”