"Stop Islamization" Trademark Refused: Applicants Decry Political Correctness in Appeal

Image on AFDI Website

A U.S. federal trademark application for an anti-sharia law campaign known as "STOP ISLAMIZATION OF AMERICA" was filed by a group called the American Freedom Defense Initiative (AFDI), a pro-Israel group founded by controversial bloggers/commentators Robert Spencer and Pamela Geller.

The AFDI had been behind a grassroots movement that sought to stop the building of a mosque in lower Manhattan, near the Ground Zero World Trade Center site, claiming that the act would offend 9/11 victims' families.

Critics such as the Southern Poverty Law Center and the Anti-Defamation League have accused the AFDI of being an anti-Muslim hate group, alleging that it promotes a conspiratorial anti-Muslim agenda under the guise of fighting radical Islam" and "seeks to rouse public fear by consistently villifying the Islamic faith and asserting the existence of an Islamic conspiracy to destroy 'American' values." 

The Trademark Office refused the group's application for a trademark on the basis that it "consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols."

The Trademark Office ruled that it must apply a two factor legal test, asking: (1) What is the likely meaning of the matter in question; and (2) is that meaning referring to identifiable persons, institutions, beliefs or national symbols, and whether that meaning is disparaging to a substantial composite of the referenced group.

The Trademark Examiner concluded that, applying this test, the likely meaning of ISLAMIZATION refers to the act of converting to Islam, and that the proposed mark effectively disparages Muslims by implying that conformity to Islam is something that needs to be stopped.

The Trademark Office cited several cases supposedly supporting its conclusion.

However, on further examination, the cases that the Examiner cited were not necessarily relevant or helpful to its case, such as when the Trademark Office found THE MEMPHIS MAFIA for entertainment services not to be matter that disparages Italian-Americans or bring them into contempt or disrepute.

The Trademark Office had further cited the controversial proceedings finding that the WASHINGTON REDSKINS trademark should be cancelled on the same grounds.

The group appealed the Examiner's final refusal to the Trademark Trial and Appeal Board (TTAB), which affirmed the rejection.

Now, the group has appealed this decision to the United States Court of Appeals for the Federal Circuit, which hears appeals from final Trademark Office refusals to register trademarks.

In the appeal brief, the AFDI's lawyer argues that:

"Appellants [Geller and Spencer] are sympathetic to the USPTO’s politically correct sensitivities enticing it to protect Muslims and indeed Islam itself from even the slightest hint of disparagement in the form of public criticism, especially in the post-9/11 age with global terrorism conducted daily in the name of Islam and the Arab Spring featuring the Muslim Brotherhood’s Islamisation program for Egypt and elsewhere melting into murder and mayhem.

The problem with these sensitivities as applied to the denial of Appellants’ Mark is that the USPTO’s beef is not with Appellants or their Mark, but rather with terrorists who claim to speak in the name of all of Islam and all Muslims.  Appellants’ Mark does not.  

One of the AFDI's NYC MTA Advertisements

'Stop the Islamisation of America' has a specific meaning that Muslims and non-Muslims in America and indeed throughout the West embrace if they treasure liberty and religious freedom for all.  In a zeal to take on the role of parens patriae and to protect Muslims from every insult, the USPTO and the TTAB have both ignored the factual record and have simply assumed meanings and understandings of the terms of the Mark that have no factual or evidentiary basis.  There is no substantial evidence to support the TTAB’s Decision or the USPTO’s denial of the Mark."

The USPTO has yet to file its response.

The AFDI has seen its fair share of federal litigation and previously triumphed. For example, in a federal lawsuit that it filed against the New York Metropolitan Transit Authority (MTA), the group succeeded in forcing the MTA to carry its advertisements on the sides of New York City buses and in the subways.

The MTA had rejected the group's advertisements, purportedly on the basis that they "demeaned" Muslims.  

The New York federal court found that the MTA had violated the Group's First Amendment rights, and ordered the MTA to run the ads.

What if the Redskins Lose Their Trademarks, But Keep Using Them?

The Washington Redskins' logo

On Thursday, March 7, 2013 the Trademark Trial and Appeal Board for U.S. Patent and Trademark Office (the "TTAB") heard oral arguments in a case involving a decades-old question: whether the Washington Redskins' federal trademark registrations should be cancelled because they are allegedly offensive to Native Americans.

The case has now been fully briefed and submitted for a decision.  All that remains now is the court's determination: Will the Washington Redskins franchise lose its federal trademark registrations?

Commentators' predictions are mixed. Some argue that, if history is any judge, it would appear that Native Americans are poised to win this most recent battle cancelling the Washington Redskins' famous trademarks. Others aren't so sure, but argue that the poor publicity involved should counsel a branding change.

All commentators agree that what would likely occur if the worst case scenario happens to the Redskins would be years of further appeals to delay the impact of the ruling.  Will the Washington Redskins continue use its brand in the interim?

When confronted with this question, the owner of the team announced that it will "NEVER change its name." (capital letters in original).

But what would happen, long term, if the team loses its federal trademark registrations?  Wouldn't the team still possess at least some rights to prohibit third party uses?

Probably not. Third parties would begin using the name in an unauthorized manner, and take their chances. Without any federal trademark registrations and with a precedential public ruling finding the marks to be offensive and scandalous, the team would face an uphill battle legally protecting and further monetizing its existing brands.

From a practical standpoint, the team would probably face an onslaught of rampant counterfeiting that it could not legally stop. Without any valid or enforceable federal trademark registrations on file, the team would not be able to avail itself of the criminal and other protections that the law authorizes against counterfeiters.  Similarly, there would no longer be any legal bar to importation of unauthorized items bearing the team's name or logos.

Perhaps worse yet, the various lucrative licenses for team-branded products and third party endorsements could be prospectively ignored on the grounds that the team lacks any appreciable intellectual property rights to further license.

It is also worth noting that, even if the team wins this round in the TTAB, some Congressional Democrats have attempted to legislate the issue against the team.

Perhaps the moral of the story is "never say never" when it comes to branding and intellectual property.