In In re Geller, No. 13-1412 (Fed. Cir. May 13, 2014), the Federal Circuit refused to register STOP THE ISLAMISATION OF AMERICA for “[p]roviding information regarding understanding and preventing terrorism,” because the mark contained disparaging matter in violation of Section 2(a) of the Lanham Act.
According to the Board, Islamisation has both a religious meaning and a political meaning. The religious meaning of Islamisation is “the conversion or conformance to Islam,” and the political meaning is “a sectarianization of a political society through efforts to ‘make [it] subject to Islamic law.’” The Board found the mark disparaging to a substantial composite of American Muslims under both meanings.
On appeal, the Federal Circuit upheld the Board’s findings. While neither party could identify a prior case discussing the legal analysis for a Section 2(a) refusal based on disparagement, the parties did agree that the Board set forth the proper test in In re Lebanese Arak Corp. The two-pronged test requires determining: (1) what the likely meaning of the matter in question is, taking into account dictionary definitions, the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods and services; and (2) if that meaning refers to identifiable persons, beliefs, or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.
With regard to the first prong, Appellants argued that the political meaning of “Islamisation” was its sole likely meaning. The Court rejected this argument, holding that the term had a religious meaning as well. The Court then shed light on the types of evidence appropriate for determining the meaning of allegedly disparaging terms. The Board properly relied on dictionary definitions of “Islamisation” listing “to convert” or “conform” to Islam as primary definitions, select essays from Appellants’ website, and comments posted on Appellants’ website to determine the religious meaning of the term. The essays showed that Appellants used the mark in the context of stopping the spread of the Islamic faith and the comments, while of more limited probative value, also reflected the religious meaning of Islamisation and evidenced a desire to stop the spread of Islam in America. Academic materials and congressional testimony established the political meaning as a meaning of “Islamisation,” rather than its sole meaning because these materials were less widely available and did not reflect the general public’s understanding of the term. Appellants agreed that both meanings of “Islamisation” referred to all American Muslims and conceded at oral argument that the mark was disparaging under the religious meaning. The mark was also disparaging under its political meaning because political Islamisation does not require violence or terrorism and associating peaceful Islamisation with terrorism would be disparaging to a substantial composite of American Muslims.