Islamophobia and Islamisation are hot-button topics and a group that has previously ran provocative advertisements in the New York City subway has hit out at the USPTO after it concluded that its trademark was disparaging to American Muslims. The dispute highlights the ever-developing issue of immoral, scandalous and disparaging trademarks.

The American Freedom Defense Initiative (AFDI), led by Pamela Geller and Robert Spencer, previously filed a trademark application for their anti-sharia law campaign known as “Stop Islamisation of America” (SIOA). The USPTO rejected the application, concluding that the trademark was disparaging to American Muslims. A subsequent appeal to the Trademark Trial and Appeal Board (TTAB) affirmed the USPTO decision, finding that the mark conveyed “that the conversion or conformance to Islam must be stopped in order to prevent the intimidating threats and violence associated with terrorism”.

The American Freedom Law Center (AFLC) has asked the US Court of Appeals for the Federal Circuit to overturn the denial of the AFDI’s trademark application, and alleges that political correctness favouring Islam is behind the denial of their trademark application. David Yerushalmi, senior counsel of the AFLC, says that the term ‘Islamisation’ does not refer to the mere conversion of someone to Islam, but what they believe to be the more sinister implementation of sharia law.

Geller told WTR that the mark is not disparaging and that: “The USPTO should have no authority to judge such things. Doing so involves it taking political sides, which it should never do. We want to trademark the name so that we can have control over who uses it, and to forestall attempts by foes of our work to discredit us by using the name in connection with something unacceptable to us, trying to associate us with something done using our name but without our authorisation.” Asked whether she could accept the SIOA mark could offend some people she replied: “So if someone is offended by some trademark, that trademark should be withdrawn? Offense is subjective.”

While cited as a relatively uncommon reason for trademark denial, the USPTO is occasionally faced with the possibility that a potential trademark contains “immoral, deceptive, or scandalous matter”, or may disparage, or bring into contempt or disrepute, persons, institutions, beliefs, or national symbols – marks for which registration is prohibited. In this instance, the TTAB concluded that “applicants’ mark used in connection with their services would be disparaging to a substantial composite of Muslims in America”.

Each trademark application is examined according to its particular circumstances (the USPTO does not provide comment on specific applications) and so it will be in this instance, but the dispute does highlight an important consideration when applying for marks. So what can be done to avoid a trademark being deemed disparaging? Ensuring that there is evidence to argue your case with the USPTO is key, such as in the case of lesbian motorcycle group “Dykes on Bikes”. The group submitted hundreds of pages of additional material to prove the mark did not disparage lesbians after the USPTO twice rejected their application. The National Center for Lesbian Rights (NCLR) helped provide declarations from linguists, sociologists and psychologists as to the history and meaning of the word ‘dyke’. They showed that the lesbian community had taken back the term; reinventing it as one of pride and empowerment and not to stigmatise lesbian sexuality.

However, there are examples where a well-documented argument against a mark being disparaging will still fail with the USPTO. The Asian-American band The Slants tried trademarking their name in 2010. The USPTO deemed it to be of a derogatory nature towards Asian people. A 2012 appeal was rejected leaving the band with no way to protect its name. (Somewhat ironically the band works with fans to empower the Asian community and overcome discrimination.) The Slants are once again appealing the decision.

International treaties such as the Paris Convention also allow for the prohibition of trademarks that are contrary to morality or public order, so the USPTO is not alone in its regulations. For all trademark counsel, a consideration of context and connotations remains crucial.

This blog was first published in World Trademark Review on 24 September 2013