Mailed: March 23, 2012
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
________
In re Prosynthesis Laboratories, Inc.
________
Serial No. 77902555
Filed December 30, 2009
_______
Oral Hearing: June 22, 2011
_______
Morris A. Nunes, Esq. for applicant.
Robert L. Lorenzo, Managing Attorney, Law Office 111.
_______
Before Bucher, Zervas, and Mermelstein, Administrative
Trademark Judges.
Opinion by Mermelstein, Administrative Trademark Judge:
Applicant Prosynthesis Laboratories, Inc., has applied
to register
for “vitamin and mineral supplements,” in International
Class 5.1
1 The application is based on the allegation of a bona fide
intent to use the mark in commerce. Applicant has disclaimed the
exclusive right to use “CHINA FREE” apart from the mark as shown.
Applicant submitted the following description of the mark:
The mark consists of the words “CHINA” and “FREE” separated
by a square rotated 45 degrees so that such square appears
like a “diamond” and substitutes for a hyphen between the
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77902555
2
The managing attorney has issued a final refusal to
register on the ground that the mark consists of or
comprises matter which may disparage or bring into contempt
or disrepute persons, institutions, beliefs or national
symbols. Trademark Act § 2(a); 15 U.S.C. § 1052(a).
We reverse.
I. Preliminary Issues
A. Evidence
Applicant attached approximately forty pages of
exhibits to its brief on appeal; the managing attorney has
objected to this evidence as untimely. Managing Atty. Br.
at 2 (unnumbered). The objected-to evidence consists of
records of eight third-party registrations from the USPTO’s
TESS database, nine search summaries from the TEAS
database, a newspaper article,2 the transcript of a press
conference,3 and websites showing use of two of the
submitted TESS registrations.
In this case, applicant did not properly submit any
two words, the lowest corner of said square being tangent
to the imaginary horizontal line that would intersect the
bottom of each of the letters in the two words.
2 McClatchy Newspapers and The Associated Press, New FDA safety
rules for dietary products; Vitamins, herbal pills; Manufacturers
must test all ingredients; China a leading supplier, SEATTLE TIMES,
June 23, 2007.
3 Food and Drug Administration, Press Conference on Dietary
Supplements (June 22, 2007) (Kimberly Rawlings, moderator).
Serial No. 77902555
3
evidence prior to appeal, relying only on argument in
response to the § 2(a) refusal. In response to the
managing attorney’s evidentiary objection, applicant points
out that in its May 28, 2010, response to the initial
refusal under § 2(a), it listed ten third-party
registrations in support of its argument, Reply Br. at 1,
but appropriate evidence of these registrations was not
submitted at the time.4 In his final Office action, the
managing attorney neither discussed applicant’s listed
registrations, nor did he inform applicant that such a list
was not a proper means to introduce registrations into the
record.
“The record in the application should be complete
prior to the filing of an appeal. The ... Board will
ordinarily not consider additional evidence filed with the
Board by the appellant or by the examiner after the appeal
4 It is well-established that in order to make third-party
registrations properly of record, “applicant should submit copies
of the registrations themselves, or the electronic equivalent
thereof” from the USPTO’s electronic databases. In re Broadway
Chicken Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB 1996) (citing In re
Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994)). Such
submissions should be made no later than six months following a
final refusal or later (in the case of an appeal), pursuant to a
granted motion to remand the matter to the examining attorney for
further examination. Trademark Rule 2.142(d). (A motion for
remand will only be granted upon a showing of good cause. It is
not clear whether one would have been granted in this case had it
been made.)
Serial No. 77902555
4
is filed.” Trademark Rule 2.142(d).
Because the managing attorney did not object to the
applicant’s listing of registrations in its response to an
office action, we will consider applicant’s list of third-
party registrations as submitted during examination, “for
whatever limited probative value such evidence may have.”5
In re Broyhill Furniture Indus. Inc., 60 USPQ2d 1511, 1513,
n.3 (TTAB 2001) (examining attorney’s failure timely to
object to applicant’s listing of registrations is a waiver
of objection to consideration of the list).
Nonetheless, we sustain in full the examining attorney’s
objection to the untimely evidence attached to applicant’s
brief on appeal. It is clear that none of this material
was submitted to the examining attorney during examination
or upon a request for remand, and we will not consider it
in the first instance on appeal. Trademark Rule 2.142(d).
Although applicant listed several of the registrations in
its May 28, 2010, Office action response, neither that
listing nor the managing attorney’s failure to object to
the listing justifies applicant’s submission on appeal of
5 To be clear, we will consider only the information regarding
these registrations which was provided in applicant’s May 28,
2010, Office action response. As in Broyhill, that evidence is
of limited probative value because it does not include critical
information, such as the particular goods or services for which
the listed marks are registered.
Serial No. 77902555
5
the TESS registrations, TEAS search summaries, or other
evidence attached to its opening brief.6
Applicant correctly points out that standards of
evidence are more relaxed in ex parte examination as
opposed to oppositions and cancellations. Yet our cases
concerning the submission of new evidence on appeal have
long-emphasized the principle that, with rare exceptions
not applicable here (such as judicial notice7), in order to
be considered, evidence must be submitted to the examining
attorney during examination. In hearing an appeal, the
Board’s role is to review the examining attorney’s final
refusal or requirement based on the evidence before him
during examination. It is not our place to consider new
evidence and examine applications in the first instance.
6 Applicant is mistaken in its citation of TRADEMARK TRIAL AND APPEAL
BOARD MANUAL OF PROCEDURE (“TBMP”) § 1207.03 (3d ed. 2011), in
support of its argument. As we made clear in In re City of
Houston, 101 USPQ2d 1534, 1537 n.7 (TTAB 2012), the failure to
object to listed registrations is a waiver of objection only to
consideration of the list of registrations, not to any other
information concerning them which may later be untimely submitted
on appeal.
7 Applicant did request that the Board “take judicial notice of
each and all of the Registrations cited in Applicant’s Brief in
accord with TBMP § 704.12.” App. Br. at 3, n.3. However, as
TBMP § 704.12(a) makes clear, “[t]he Board does not take judicial
notice of third-party registrations.” In re Carolina Apparel, 48
USPQ2d 1542, 1543 n.2 (TTAB 1998); see also, In re Thomas Nelson
Inc., 97 USPQ2d 1712, 1717 n.18 (TTAB 2011).
Serial No. 77902555
6
B. Issue on Appeal
During examination and appeal, the managing attorney
primarily argued that the person or institution referred to
in the mark (and thus the target of the mark’s alleged
disparagement) is the nation of China. Managing Atty. Br.
at 4 (unnumbered) (“In this case, the term ‘CHINA’ refers
to the ‘People’s Republic of China, a country in Eastern
Asia.’”), 5 (“consumers reasonably would understand that
the wording ‘CHINA FREE’ in the proposed mark refers to the
disparaged party, i.e.[,] in the People’s Republic of
China.”). However, in response to a question at oral
hearing, the managing attorney argued that the mark would
also be disparaging to Chinese people, including people
living in China, as well as United States residents of
Chinese origin.
There is only scant reference in this file to Chinese
people as an object of disparagement relevant to this case.
The only reference during examination was the statement (in
the first Office action to raise the issue of
disparagement) that “[c]onsumers reasonably would
understand that the wording CHINA FREE in the proposed mark
refers to the disparaged party, i.e.[,] people who live in
the People’s Republic of China.” Ofc. Action at 2 (Nov.
Serial No. 77902555
7
21, 2010).8 Applicant filed a response, in which it
characterized the Office action as “alleg[ing] that the
Mark disparages the People’s Republic of China,” Response
at 1 (May 28, 2010) (emphasis added), and specifically
argued that the mark did not refer to a “person” under the
Trademark Act, id. at 4-5. Nonetheless, rather than
correct what might have been applicant’s
mischaracterization of the basis for the refusal, the
managing attorney replied in the final Office action that
“a nation ... is an institution and thus falls within
section 1052(a)’s protection. Clearly, the ordinary
meaning of institution suggests the term is broad enough to
include a self-governing … nation. Therefore, the nation
of CHINA falls within the purview of Section 1052(a).”
Final Ofc. Action at 3 (Oct. 5, 2010) (citation and
internal quotation marks omitted). Applicant was not
advised in the final Office action that the mark was (or
8 Likewise, the Office’s brief indicates that “the term ‘CHINA’
refers to the ‘People’s Republic of China, a country in Eastern
Asia,’” Managing Atty. Br. at 4 (unnumbered), that “[t]he
[p]roposed [m]ark [d]isparages [t]he [n]ation [o]f China,” id. at
5, and that “consumers reasonably would understand that the
wording “CHINA FREE” in the proposed mark refers to the
disparaged party, i.e.[,] in [sic] the People’s Republic of
China,” id. at 6. The Brief does not significantly allege that
the mark disparages Chinese individuals.
Serial No. 77902555
8
was also) alleged to be disparaging to Chinese people,
whether living in this country or in China.
The effect of focusing in the final refusal on whether
“China” (the country) is a person or institution under the
Trademark Act – to the exclusion of any mention of Chinese
individuals here or abroad – was to narrow the basis for
the refusal to the issue of whether the mark is disparaging
to the People’s Republic of China as a person or
institution. Even assuming that the previous Office action
had given applicant fair notice of the argument that the
mark is disparaging to Chinese individuals, that ground was
ceded in the Final Office Action. Accordingly, we consider
the issue on appeal to be whether the mark is disparaging
to the People’s Republic of China.9
II. Applicable Law
The relevant statute provides as follows:
No trademark by which the goods of the applicant
may be distinguished from the goods of others
shall be refused registration on the principal
register on account of its nature unless it ...
[c]onsists of or comprises ... matter which may
disparage ... persons, living or dead,
institutions, beliefs, or national symbols, or
9 Aside from the question of whether applicant was on notice of
the basis for the refusal to register, we note that the question
of whether the mark is disparaging to individuals of Chinese
descent (in this country or in China) was not developed on this
record, notwithstanding that it raises significant factual and
legal questions.
Serial No. 77902555
9
bring them into contempt, or disrepute....
Trademark Act § 2(a); 15 U.S.C. § 1052(a).
In determining whether a proposed mark is disparaging,
we have applied a two-part test:
1. What is the likely meaning of the matter in
question, taking into account not only
dictionary definitions, but also 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 or services?
2. If that meaning is found to refer to
identifiable persons, institutions, beliefs or
national symbols, whether that meaning may be
disparaging to a substantial composite of the
referenced group?
In re Lebanese Arak Corp., 94 USPQ2d 1215, 1217 (TTAB 2010)
(citing In re Heeb Media LLC, 89 USPQ2d 1071, 1074 (TTAB
2008); In re Squaw Valley Dev. Co., 80 USPQ2d 1264, 1267
(TTAB 2006); Harjo v. Pro-Football, Inc., 50 USPQ2d 1705,
1740-41 (TTAB 1999), rev’d on other grounds, 284 F. Supp.
2d 96, 68 USPQ2d 1225 (D.D.C. 2003) (subsequent history
omitted).
III. Application of Trademark Act § 2(a)
Before turning to the question of disparagement, we
consider two preliminary issues:
A. Person or Institution Under Trademark Act § 2(a)
As noted, the managing attorney’s contention is that
Serial No. 77902555
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the applied-for mark would be disparaging to China. As a
threshold matter, applicant argues that Trademark Act
§ 2(a) does not apply in this case because “China” is not a
“person[], living or dead,” or an “institution[], belief[],
or national symbol[],” within the meaning of Trademark Act
§ 2(a). App. Br. at 7 (“China is surely not a living
person or a dead person....”).
We are skeptical of applicant’s position. See, e.g.,
Trademark Act § 45 (definition of “person”); In re
Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1219
(Fed. Cir. 2009) (affirming “the Board’s conclusion that
the Shinnecock Indian Nation is an ‘institution’ and thus
falls within section 1052(a)’s protection”). Nonetheless,
we need not consider this question. As will be seen, we
would reach the same result regardless of the answer.
Accordingly, for purposes of this opinion, we will assume
that China is a person or institution within the meaning of
Trademark Act § 2(a).10
10 Applicant also urges that “country names [are] outside the
purview” of Trademark Act § 2(a), citing In re Sweden Freezer
Mfg. Co., 159 USPQ 246, 248-49 (TTAB 1968), in which we held that
the name of a country is not a national symbol. App. Br. at 6-9.
Nonetheless, the refusal to register in this case is not based on
an allegation that the name of a country would be disparaged as a
national symbol. Rather, the refusal alleges that the country
itself would be disparaged as a person or institution. While
Trademark Act § 2(a) protects, inter alia, “persons, ...
Serial No. 77902555
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B. Constitutionality of Trademark Act § 2(a)
Applicant contends that “even if Applicant’s trademark
does somehow imply or amount to some degree of
disparagement, the attributive application of [Trademark
Act § 2(a)] in this case to prevent registration is an
unlawful abridgement of Applicant’s [F]irst [A]mendment
commercial speech rights.” App. Br. at 10-11. We
disagree.
First, the authorities applicant relies on are
inapposite. Applicant cites Mattel Inc. v. MCA Records
Inc., 296 F.3d 894, 63 USPQ2d 1715 (9th Cir. 2002), as
stating that “[t]rademark rights do not entitle the owner
to quash an unauthorized use of the mark by another who is
communicating ideas or expressing points of view.” Mattel,
63 USPQ2d at 1718 (quoting L.L. Bean, Inc. v. Drake
Publishers, Inc., 811 F.2d 26, 1 USPQ2d 1753, 1755 (1st
Cir. 1987)). Mattel primarily involved infringement and
other claims based on use of the involved marks. By
contrast, the question before us today is not applicant’s
use of the applied-for mark, but its application for
registration. The crucial difference is that applicant
need not secure a registration for its mark in order to use
institutions, ... or national symbols,” we are concerned here
only with the first two.
Serial No. 77902555
12
it, and the USPTO’s refusal to register a mark has no
bearing on applicant’s right to use it. The refusal to
register applicant’s applied-for mark thus imposes no
restraint or limit on applicant’s ability to communicate
ideas or express points of view. In re Boulevard Entm’t
Inc., 334 F.3d 1336, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003);
In re McGinley, 660 F.2d 481, 211 USPQ 668, 672 (CCPA
1981).
Similarly, applicant quotes at length from Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999).
App. Br. at 11. What applicant fails to point out is that
the passage it relies on in Ritchie is from the dissenting
opinion, and on a point which was specifically disavowed by
the majority.11 The Court said the following in response to
the passage applicant cites:
The dissent also expresses at some length
concerns about Mr. Simpson’s First Amendment
rights. The dissent fails to understand that the
11 Parties may cite to dissenting opinions if they wish, although
a dissent is not precedential and our authority to follow it may
be (as here) severely limited. However, when citing to such an
opinion, the party should indicate that it is a dissent. E.g.,
THE BLUEBOOK, A UNIFORM SYSTEM OF CITATION 10.6.1(a) (17th ed. 2000).
A dissent should never be presented – as applicant has done – as
if it were the opinion of the court (“As it has been judicially
established...,” App. Br. at 10). Inaccurate or misleading
citations waste time and do not assist the Board in resolving a
dispute. See Patent and Trademark Rule 10.89(b)(1); cf. Beaver
v. Grand Prix Karting Ass’n, Inc., 246 F.3d 905, 911 n. 2 (7th
Cir. 2001) (admonishing counsel for relying on precedent that had
been reversed without so indicating).
Serial No. 77902555
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denial of federal registration of a mark does not
prohibit the use of that mark. Although the mark
holder who is denied federal registration will
not receive the benefits conferred on a federal
trademark registrant, the mark holder may and can
continue to use the mark.
Ritchie, 50 USPQ2d at 1028. Rather than supporting
applicant’s argument, the opinion of the court in Ritchie
stands directly in opposition to it.
Second, the Trademark Trial and Appeal Board is an
administrative tribunal, not an Article III court, and we
have no authority to declare provisions of the Trademark
Act unconstitutional. In re Dist. of Columbia, 101 USPQ2d
1588, 1602 (TTAB 2012) (collecting cases). Accordingly,
even if we were inclined to agree with applicant we could
not hold Trademark Act § 2(a) violative of applicant’s
First Amendment rights.
IV. Disparagement
As noted above, in a disparagement case, we first
determine the likely meaning of the mark (or the part of it
alleged to be disparaging). If that meaning refers to
persons or institutions, we consider whether it may be
disparaging to those persons or institutions. Lebanese
Arak, 94 USPQ2d at 1217.
A. Allegedly Disparaging Elements of the Mark
Applicant’s proposed mark comprises the words “CHINA
Serial No. 77902555
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FREE” and a design element. The managing attorney’s
allegations of disparagement refer only to the words.
There is no argument in this case that the design in
applicant’s mark affects the meaning or overall impression
of the words which are alleged to be disparaging.
We note that the examining attorney who initially
handled the case required a disclaimer of the words “CHINA
FREE,” arguing that they are descriptive. Applicant
complied with this requirement.12 App. Resp. (Apr. 2,
2010). Nonetheless, a disclaimer cannot overcome a refusal
to register on the ground that the mark comprises
disparaging matter. Disclaimed matter is not removed from
the mark, but remains part of it, e.g., In re TSI Brands
Inc., 67 USPQ2d 1657, 1661 (TTAB 2002), and a refusal to
register is proper if the applied-for mark is disparaging
in whole or in part, Trademark Act § 2(a) (“Consists of or
comprises ... matter which may disparage...” (emphasis
added)). Moreover, in order for a disclaimer of
unregistrable matter to have the desired effect of allowing
registration of the mark as a whole, the mark must be
12 In making the disclaimer requirement (prior to imposition of
the refusal to register under § 2(a)), the examining attorney
argued that CHINA FREE “is merely descriptive of a feature or
characteristic of the applicant’s goods which are not made in
China.” Ofc. Action (Mar. 26, 2010). In response, applicant
provided the disclaimer without comment.
Serial No. 77902555
15
“otherwise registrable.” Trademark Act § 6(a).
Here, opposer’s mark is alleged to be disparaging in
that it includes the words “CHINA FREE.” Because the
disclaimer does not remove this wording from the mark, the
mark remains subject to the § 2(a) refusal, and (if the
words are disparaging) would not be “otherwise
registrable.” Thus neither the fact that applicant’s mark
includes a non-disparaging design element nor the fact that
applicant has disclaimed the exclusive right to use the
allegedly offending words provides applicant any relief
from the refusal.
B. Likely Meaning of the Mark
There is no dispute on this record as to the immediate
meaning of the mark. As applicant puts it:
The Mark describes a quality of the goods
being offered, but includes a fanciful design
element. The quality described is that the
vitamin and nutritional supplement goods of the
Applicant do[es] not knowingly contain raw
materials or components sourced from any country
named China....
Because Applicant has identified a market
segment that Applicant believes is uncomfortable
purchasing supplements for human consumption that
contains [sic] elements sourced in China,
Applicant’s mark merely expresses a true fact
about its goods.
Resp. to Ofc. Action (May 28, 2010); Managing Atty. Br. at
6 (unnumbered) (“the phrase “CHINA FREE” is used to
Serial No. 77902555
16
describe a product that is not made in China.”); see
discussion of applicant’s website, infra.
CHINA FREE is thus used in applicant’s mark to inform
the prospective purchaser that applicant’s goods contain no
ingredients from China, and that is its likely meaning.13
C. Is the Proposed Mark Disparaging?
Having concluded that the clear meaning of the mark is
that the goods do not contain ingredients from China, it is
readily apparent that the mark thus “refer[s] to [an]
identifiable person[ or] institution,” In re Lebanese Arak
Corp., 94 USPQ2d at 1217, namely China. We therefore
consider “whether that meaning may be disparaging” to such
person or institution. Id.
Marks found to be disparaging may comprise offensive
words – often listed in dictionaries and other references
as vulgar or derogatory. For instance, the marks SQUAW and
SQUAW ONE, sought to be registered for clothing, and retail
store services, were found to be disparaging based on
evidence that Native Americans found the term SQUAW to be
“damaging and offensive, the worst of the worst, an insult
and obscene.” In re Squaw Valley Dev. Co., 80 USPQ2d at
13 The “truth” of the mark’s assertion – i.e., whether the goods
are in fact free of ingredients from China – is not at issue
here, and there is no suggestion in the record that it is
incorrect.
Serial No. 77902555
17
1276 (internal quotation marks omitted). The mark HEEB,
for use in connection with clothing and entertainment
services, was likewise found to be a derogatory reference
to those of the Jewish faith. In re Heeb Media, 89 USPQ2d
at 1076. And in Boston Red Sox Baseball Club L.P. v.
Sherman, 88 USPQ2d 1581 (TTAB 2008), we sustained an
opposition to registration of SEX ROD, for clothing,
finding that “the mark would be viewed as a sexually vulgar
version of the [Boston Red Sox’] symbol and as making an
offensive comment on or about the club.” Id. at 1590 (also
finding the mark scandalous under Trademark Act § 2(a)).
In cases such as these, the mark per se was proven to be
derogatory or disparaging to the referenced individual or
group.
By contrast, CHINA FREE is not alleged to be
disparaging or derogatory in itself; rather it is the
implication of the mark which is at issue. As noted, the
likely meaning of the mark as used on the identified goods
is that the applicant’s vitamin and mineral supplements do
not contain ingredients from China. At first glance, this
would appear to be a simple factual statement merely
describing a characteristic of the identified goods, i.e.,
where they were not made, not much different from
ubiquitous statements of origin, such as “Made in U.S.A.,”
Serial No. 77902555
18
or negative statements of content, such as “sugar free.”
Nonetheless, the managing attorney contends that it is
disparaging, because the statement that the applicant’s
goods do not contain ingredients from China implies that
there is something wrong with ingredients from China; and
by extension that China is accordingly to be held in a dim
view.
In addition to marks which are per se disparaging
(such as HEEB or SQUAW), we have found in some cases that
marks which are not themselves offensive can be disparaging
when used on particular goods. For instance, the marks
MADONNA and MESSIAS, for wine and brandy, SENUSSI, for
cigarettes, and KHORAN for wine, were all found to be
scandalous or disparaging because the use of the marks on
the identified goods was found likely to offend the
religious sensibilities of various groups. In re Riverbank
Canning Co., 95 F.2d 327, 37 USPQ 268, 269 (CCPA 1938)
(1905 Act) (“Of course, the word ‘Madonna’ is not per se
scandalous. We do not understand that appellant contends
that a mark must be scandalous per se to come within the
prohibition of the statute. Every one would concede that
an application to register the name of the Supreme Being as
a trade mark would be properly rejected under the provision
of the statute here under consideration. It is therefore
Serial No. 77902555
19
obvious that, in determining whether a mark ‘consists of or
comprises ... scandalous[14] matter,’ consideration
ordinarily must be given to the goods upon which the mark
is used.”); In re P.J. Valckenberg, GMBH, 122 USPQ 334
(TTAB 1959) (MADONNA); In re Reemtsma Cigarettenfabriken
G.M.B.H., 122 USPQ 339 (TTAB 1959) (“The application of the
name of any religious order or sect to a product whose use
is forbidden to the followers or adherents of such sect or
order is an affront to such persons and tends to disparage
their beliefs. The use of ‘SENUSSI’ on cigarettes,
therefore, would be scandalous within the purview of
Section 2(a) of the Act of 1946 and is not entitled to
registration.”); In re Sociedade Agricola E. Comerical Dos
Vinhos Messias, S.A.R.L., 159 USPQ 275 (TTAB 1968) (“The
word ‘Messias’ is the full equivalent of the word
‘Messiah’.... We do not agree with applicant that to the
American public the word ‘Messiah’ is less definite and
restrictive referring to Jesus Christ than is the word
‘Madonna’ referring to the Virgin Mary.”); In re Lebanese
14 As we explained in Lebanese Arak, for historical reasons,
Riverbank Canning and other older cases involving “marks which
would offend the sensibilities of an ethnic or religious group”
were analyzed under the “scandalous” provisions of Trademark Act
§ 2(a), and the 1905 Act before it. Such marks are now properly
considered as potentially disparaging, Lebanese Arak, 94 USPQ2d
at 1216-17, although we look to the earlier “scandalous” cases as
precedent.
Serial No. 77902555
20
Arak Corp., 94 USPQ2d at 1220 (use of “KHORAN,” the
equivalent of Koran, the sacred text of Islam, on wine,
which is prohibited to adherents of that religion, would be
disparaging to Muslims). Thus, the fact that CHINA FREE is
not alleged to be per se disparaging does not negate the
refusal to register; we must still consider the meaning of
the term in relation to the identified goods to determine
if it would be disparaging to a substantial composite of
the identified group.
The managing attorney contends that
[a] reasonable person of ordinary sensibilities
would consider this reference offensive or
objectionable because the proposed wording “CHINA
FREE” implies that there is something negative
about retail goods made in China. ... The
applicant has not argued otherwise. Instead, the
applicant readily admits ... that it has
“identified a market segment that [it] believes
is uncomfortable purchasing supplements for human
consumption that contains elements sourced in
China.” (emphasis supplied). The applicant
further admits that the proposed mark “expresses
a true fact about its goods.”
Managing Atty. Br. at 8 (citations omitted). In support of
his position, the managing attorney has made of record a
variety of materials from the internet which purportedly
shows that applicant uses its mark “on nutritional
supplements directed to a market segment that is full of
paranoia about the nation of China and products made in
China.” Id.
Serial No. 77902555
21
While agreeing on the meaning of the mark, applicant
sees things in a different light. Applicant argues that
many consumers in the U.S. market have legitimate concerns
about the wholesomeness of certain products from China:
“The motivation for development and marketing of such a
brand arose from the circumstances of heavily publicized
instances of problems with misidentified, adulterated
and/or impure ingredients from China.” App. Br. at 1-2.
In support of its argument, applicant cites materials
attached to its brief. But as discussed above, this
evidence was untimely, and has not been considered.
Nonetheless, the managing attorney’s evidence sheds light
on some of applicant’s argument. This evidence includes
the following information from applicant’s website and
others:15
1. Opurity website. [no date or URL given] (This appears
to be applicant’s own website.16)
15 In all cases, text is emphasized as in the original source.
16 Applicant neither admits nor denies that this is its website.
Resp. to Ofc. Action at 2 (May 28, 2010) (“[T]he Office based its
action, at least in part, on information supposedly gleaned from
the Applicant’s website. Assuming arguendo, that anything within
the website can somehow fairly be construed as
disparagement....”). The bottom of each web page bears the mark
ProSynthesis Laboratories and a copyright notice naming
ProSynthesis as the proprietor. While it seems likely that there
is some relationship between applicant ProSynthesis Laboratories
and Opurity, it is not clear whether the latter is a separate
entity to which applicant’s mark is licensed or merely a
trademark under which applicant does business.
Serial No. 77902555
22
Where most vitamins come from
People might think that companies make their own products, or that at
least they are made in the U.S. All too often that is no longer true. Eight
million shipping containers arrive at the Port of Los Angeles alone, most
of them from China.
A high – and growing – percentage of the vitamins made in the world are
made in China. A full 90% of the world’s Vitamin C is made in China.
Vitamins in China are not generally made by the Chinese division of an
American Company. Rather, they are made by a Chinese company. The
American company is buying critical ingredients from entirely
independent Chinese companies, with all of the risks that entails.
...
Your multivitamin says “Made in USA,” but some of the vitamin
ingredients are made in China.
Everything we know says that it is impossible to make a complete multi-
vitamin multi-mineral supplement ... only from ingredients Made in the
USA. Moreover, we believe all of the major multi-vitamin, multi-mineral
brands, as well as smaller brands, use some vitamins from China, which is
known to have quality problems.
...
How can they say “Made in USA?”
...
We wanted, for our own health and safety, to take a multi-vitamin with
no ingredients from China. As we began to investigate, we became more
and more concerned. First, we believe all standard multi-vitamins sold in
the US use some vitamins, some ingredients, from China. Worse, we
became deeply concerned about the quality and contamination risks of
those ingredients.
...
Serial No. 77902555
23
We WANT to trust the drugs and over-the-counter medicines and
vitamins you buy. [sic] In fact, we NEED to be able to trust them. But
can we?
Every multivitamin is a group of ingredients sourced from around the
world. Our sources are the US, Canada, Western Europe and Japan. Not
China.
[News reports are cited about tainted or
defective Chinese products, including heparin,
foods contaminated with melamine and diethylene
glycol, and defective drywall.]
...
How Bad is it that My Multi-Vitamin ingredients are from China?
It depends on what health risks you are willing to take. And on how
much you know about how Chinese manufacturing usually operates. And
how important it is to save 19 cents a day – because you don’t have to
use the cheap from-China ingredients multi-vitamin. You can use opurity.
Author Ellen Rupert Shell, in her 2009 Book, “Cheap: The High Cost of
Discount Culture” writes:
Substandard and fake goods are so common in China that the Chinese
have an expression, heixin (pronounced hey-sin) to describe those who
make, sell or profit from them. Heixin roughly translates as “black heart.”
...
How do you feel about the Chinese melamine scandal that killed six
Chinese infants, and sickened over 300,000 according to news reports?
How do you feel about the Chinese melamine that killed and sickened
pets in the US?
Does it bother you that the melamine problems are continuing, even into
early 2010?
How do you feel about counterfeit Heparin (a medical blood thinner)
linked to 19 deaths in the United States in 2008? ...
How do you feel about the interiors of homes in the U.S. crumbling due
to Chinese Drywall?
Serial No. 77902555
24
How do you feel about this series of Pulitzer Prize winning articles?
[Describing a series of articles about “how
dangerous and poisonous pharmaceutical
ingredients from China have flowed into the
global market” and a New York Times article about
exploding phones which also noted that the
Chinese government’s own inspections revealed
that “nearly 20 percent of the nation’s food and
consumer products are substandard or tainted...
[and also that] [f]ood is laced with industrial
chemicals, formaldehyde, industrial wax and
dangerous coloring dyes; baby clothes are
contaminated with dangerous chemicals, children’s
snack food is doused with excessive amounts of
preservatives and old food waste is repackaged
and sold as new.]
...
Q: How are opurity™ vitamins different?
A: We make the industry’s first guarantee: No ingredients from China.
It’s been a hard two years to get to where we can actually make that
guarantee. Some vendors asked why we were asking about China when
no other companies were. Some companies wouldn’t make promises, or
vaguely said that they “right-source.” Some companies made promises
but were not judged trustworthy.
...
Q: Do you expect the quality of ingredients from China to improve over
time?
A: Probably not. The short answer is, “The Tiger Doesn’t Change Its
Stripes.” The reason we say that is that that the quality problems in
China are deep-seated, and often cultural – and cultural items change
slowly, if at all.
2. Phyllis Schlafly, Americans Need China-Free Food,
Worldview Times, posted Aug. 14, 2007
(www.worldviewweekend.com (Sept. 18, 2010)).
Serial No. 77902555
25
This article discusses reports of various problems
with Chinese imports, including lead in toys, melamine
in pet food, diethylene glycol in toothpaste, and
seafood tainted with chemicals. The article alleges
that the problems became so bad that China “execute[d]
its top food and drug regulator,” and that “[i]t would
take a couple of generations and many billions of
dollars to bring Chinese food up to U.S. health and
safety standards. Near1y half of China’s Population
lives without sewage treatment, and the water isn’t
safe, whether from the tap or in sea or pond.”
Following the article are a number of reader comments
echoing the author’s concern (and one comment noting
that the U.S. has had many of its own problems with
food safety).
3. David Flores, Chinese Vitamin and Herb Safety
Questioned, posted Sept. 30, 2010
(www.articlesbase.com (Oct. 3, 2010)).
As the horror stories about Chinese imports get scarier and scarier,
American political leaders are stepping up their rhetoric regarding the
safety of the food and other products that are imported from China.
Sen. Charles “Chuck” Schumer, (D) N.Y., believes American consumers are
in greater danger than initially realized from food and other products
coming in from China. ... “There is no question that too many Chinese
manufacturers and food producers put the bottom line ahead of safety,”
said Schumer. “Agencies regulating the safety of imported goods need to
do more to address this worsening crisis. The fact that every week we
have to frantically pull Chinese goods off store shelves shows that our
safeguards are falling.”
A major concern of the lawmakers is that he [sic] discovery of the toxic
chemical melamine in pet food and powdered milk produced and
imported from China could be the proverbial “tip of an iceberg” of other
tainted products – as of yet undiscovered. And there is some evidence
that fuels this further concern. For instance, the FDA’s Import Refusal
Reports in recent years have consistently shown China as a top violator of
these regulations. ... U.S. officials are demanding, and rightly so, that the
Chinese do more to safeguard the food and drugs they export to
America.
4. Sustainable Food News, Manufacturer Promotes Organic-
Based Supplements and Foods as ‘China-Free,’ posted
Serial No. 77902555
26
July 10, 2007 (www.organicconsumers.org (May 3,
2010)).
This story reports on a purveyor of “whole food
nutritional supplements for consumers and their pets,”
which is “preparing to roll out a ‘China-Free’
label....”
“The reason we keyed in on the China thing was the number of headlines
[about contaminated products linked to Chinese manufacturing], and the
fact that about 80 percent of all Ascorbic acid (Vitamin C) is from China,”
Davis told Sustainable Food News.
(alterations in original).
5. Supplement Maker Touts ‘China Free’ Products, Morning
Edition, National Public Radio (July 12, 2007)
(www.npr.org (May 21, 2010)). From the transcript:
Food for Health International, a supplements maker, started labeling its
... capsules as China Free. The company says most vitamins and
supplements come from China. But it wants to set itself apart.
Okay, since politicians say we shouldn’t depend so much on Chinese food
and safety regulations, one U.S. company is taking matters into its own
hands.
Our last word in business today is China-free products. That’s how the
supplement maker Food for Health International is promoting its
supplements. It has started labeling its ... capsules China-free.
The company says vitamins and supplements from China, [sic] so it wants
to set itself apart, and not just with its products for people. Food for
Health promises that its healthy dog supplements are also China-free. So
even if your dog’s pet food is tainted, you can be pretty sure his vitamin
pills are pure.
6. China-Free Products (website) (china-free-
products.blogspot.com [no date given])
CHINA-FREE
DEFINITION chi-na-free adj. A term proposed for use on food labels to
show that products are not made in China.
Serial No. 77902555
27
CONTEXT In light of recent health and safety scares regarding Chinese-
made food and products, a U.S.-based company called Food for Health
International has announced plans to put “China-free” stickers on its
goods. The subtext: These products won’t make you sick or have harmful
contaminants like melamine.
USAGE Given recent recalls of items from toys to toothpaste, China-free
labeling could catch on, though consumers would do well to remember
that not all products from China are tainted and not all tainted products
are from China.
7. ‘China-free’: Should you promote your ‘Made in USA’
status?, Business Management Daily, posted Oct. 1,
2008 (no URL or date given).
Feeling pressure to join the “China-free” movement? You’re not alone.
Many businesses in recent months have contemplated the issue, driven
by growing consumer concern that some products from China may be
tainted and unsafe. The sentiment comes after large scale toy recalls
over dangerous lead levels and contaminated pet food, toothpaste, fruits
and vegetables and other products hit U.S. shelves this summer.
In response, a Utah-based food and vitamin company decided to label its
products “China-free.” A host of other companies followed suit.
8. Brand Channel, Abe Sauer, Vitamin Brand Sells Itself
As China-Free, (March 17, 2010) (www.brandchannel.com
(May 21, 2010)).
From lead-tainted toys and poisoned milk products to deadly dog food,
the reputation of quality control standards for the “Made in China” brand
has taken a severe beating.
Now, one brand is exploiting the brand’s sullied image by making the
panic over “China-made” into the pillar of its brand-building strategy; but
is it too much?
Opurity vitamin ads are turning up on various blogs across the web. The
first I saw was on a right-wing political blog. It probably would not have
stood out except that the ad featuring [sic] a horrifying image of a factory
spewing thick pollution into the sky with the eye-popping copy “Don’t
trust your health to China... Warning: Multivitamin companies entrust
your health to vitamin ingredients made in China. Do you....”
Serial No. 77902555
28
... Opurity’s overall messaging is not any less dramatic than its ads:
“China Free Multivitamin Choice” [sic] Opurity is based in Virginia and
positions itself with an alarming tone, warnings and, frequently, CAPS
LOCK. The brand’s ads link to a site that rattles off statistics that implies
the danger of Chinese-made drugs is ... CHINA! ... It is possible that
Opurity’s positioning will appeal to already paranoid customers.
However, the punch-in-the-face volume and fear-mongering core of
Opurity’s positioning probably does the brand a serious disfavor.
Its histrionic positioning will likely lead to diminishing returns and end up
exhausting more rational customers. However, any success the brand
has will immediately be in danger of irrelevancy, because Opurity forgets
to focus on the benefits of its product, defining itself only through the
failings of others. Furthermore, its brand could easily be duplicated.
• Among other responses to this article, Jerome
Krachenfels (allegedly from Opurity) commented
that Opurity was “receptive to the argument
that we are too ... overheated in our tone[,]
... [but] we *do* believe that the issue is
even more serious than our tone.” In support,
Mr. Krachenfels cited reports in the New York
Times and a book titled A Toxic Pipeline, and
noted that even big pharmaceutical companies
have been “burned” by adulterated products from
China.
The managing attorney’s evidence thus supports
applicant’s contention that there is in fact concern among
some United States consumers, politicians of various
stripes, writers (some of whom bill themselves as
particularly knowledgeable about food and drug issues), and
at least some United States producers and purveyors of
vitamins and nutritional supplements. This evidence shows
that there is substantial public concern over issues of the
safety of food and pharmaceuticals imported from China, and
that this concern has some apparent basis in fact.
Serial No. 77902555
29
An investigation of the truth of the matters asserted
in the cited sources is beyond the purview of this decision
and we need not address it. And while we do not hold that
the approach suggested by applicant and others – eschewing
nutritional supplements containing ingredients from China –
is the most rational or effective reaction to any such
concerns, we cannot find on this record that it is wholly
irrational or merely a pretext for animus against China.
The managing attorney points out – with some
justification – that the tone in some of the articles and
other evidence of record is strident, or as one of the
commentators put it in describing what appears to be
applicant’s own website, a bit too “CAPS LOCK.”17 However,
the fact that some internet commentary could be seen as
excessive doesn’t determine whether China would be
disparaged by applicant’s mark. What others have to say
about the general issue of Chinese manufacturing is not
particularly persuasive on the question before us.
On the other hand, applicant’s own website is clearly
relevant to our consideration of the mark at issue, and the
managing attorney has included extensive excerpts in the
17 We note that in online communications, text in all capital
letters is seen by many as the electronic equivalent of shouting.
See Fed. R. Evid. 201(b)(1).
Serial No. 77902555
30
record. This material is relevant to the extent it
reflects applicant’s intent:
Disparagement is essentially a violation of
one’s right of privacy – the right to be “let
alone” from contempt or ridicule. See Carson v.
Here’s Johnny Portable Toilets, Inc., 698 F.2d
831, 218 USPQ 1, 3 (6th Cir. 1983). It has been
defined as the publication of a statement which
the publisher intends to be understood, or which
the recipient reasonably should understand, as
tending “to cast doubt upon the quality of
another’s land, chattles, or intangible things.”
Restatement (Second) of Torts § 629 (1977). The
two elements of such a claim are (1) that the
communication reasonably would be understood as
referring to the plaintiff; and (2) that the
communication is disparaging, that is, would be
considered offensive or objectionable by a
reasonable person of ordinary sensibilities. See
Eagle’s Eye, Inc. v. Ambler Fashion Shop, Inc.,
627 F. Supp. 856, 227 USPQ 1018, 1023 (E.D. Pa.
1985); see also Altman, Callmann Unfair
Competition, 4th ed., § 11.01, et seq.
Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639
(TTAB 1988) (citations revised); see also Boston Red Sox
Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1589-90 (TTAB
2008) (citing Dunkin’ Donuts of Am., Inc. v. Metallurgical
Exoproducts Corp., 840 F.2d 917, 6 USPQ2d 1026 (Fed. Cir.
1988) (evidence of intent relevant to Section 2(a) claim of
disparagement)).
Consistent with some of the managing attorney’s
argument, we find applicant’s website to be rather
strident, one-sided, and somewhat alarmist. Applicant
seems to admit as much, if we are to believe that a comment
Serial No. 77902555
31
posted by “Jerome Krachenfels”18 in response to an article
about applicant’s marketing efforts was indeed posted by a
representative of applicant. See Brand Channel, Abe Sauer,
Vitamin Brand Sells Itself As China-Free, (March 17, 2010).
In response to Mr. Sauer’s criticism of the Opurity
website, Mr. Krachenfels states that Opurity is “receptive
to the argument that we are too ... overheated in our
tone[,] ... [but] we *do* believe that the issue is even
more serious than our tone.” Id. After discussing some of
the issues and citing to books and articles on the topic,
he asks rhetorically, “OK, so how to ‘sound the alarm’
without sounding like an alarmIST? How do you stay on the
positive side of the coin, when what we are offering is a
way to avoid a negative?” Id.
Mr. Krachenfels’ comment bears some logic: the
selling point of applicant’s multi-vitamins is that they do
not contain ingredients from China, and in order to sell
them, it is inevitable that applicant must explain why they
are alleged to be better than other multi-vitamins which
are widely-available, apparently at a lower price.
Applicant’s website certainly does that. Applicant minces
no words about what it perceives to be problems with
18 Mr. Krachenfels signed his comment “Jerome/OPURITY (tm)
Vitamins” so we assume he is associated with applicant.
Serial No. 77902555
32
Chinese manufacturing practices, and offers no pretense
about presenting a balanced viewpoint of any success
stories from China’s growing economy.
But what applicant may see as either spreading the
truth about genuine concerns or aggressive marketing, the
managing attorney sees as the heart of the problem:
Purchasers of the applicant’s goods wou1d
certainly make inferences that there is something
negative about vitamins and mineral supplements
made in China. Applicant’s use of the proposed
mark “CHINA FREE” on vitamin and mineral
supplements promotes an unsupported stereotype
that all products originating from China are of
an inferior quality. Given the widespread
availability of such goods in the United States,
this inference is clearly misleading.
While recent events have highlighted that
some Chinese manufacturers do not make quality
products, promoting a stereotype that ALL Chinese
manufacturers make poor quality goods is simply
untrue. To the contrary, one can get a “great
quality product made at a great price” from
China. Simply stated, an incredible amount of
product is made in China. In fact, an icon of
the U.S. automotive industry, General Motors will
have its Buick Lacrosse designed in China. ...
China is a nation with an ancient civilization
dating to 2700 B.C. It is famous for
architectural wonders such as the Great Wall of
China and the Forbidden City. China is well-
known for its contribution to the well-being of
society through its development of traditional
herbs and teas.
Managing Atty. Br. at 10-11 (internal quotation marks and
citations omitted).
Serial No. 77902555
33
While we respect the managing attorney’s position, we
think it goes further than warranted by the evidence in
this record. Nothing on applicant’s website disputes the
fact that China produces a large volume of goods for the
United States market. Indeed, and particularly with
respect to applicant’s goods, applicant’s point is that
“[a] high – and growing – percentage of the vitamins made
in the word are made in China. A full 90% of the world’s
Vitamin C is made in China.” Opurity website.
But contrary to the managing attorney’s argument, we
do not perceive applicant’s message as “promoting a
stereotype that ALL Chinese manufacturers make poor quality
goods....” Rather, applicant merely points out that most
multivitamins include ingredients from China, and that
China has been the source of some well-publicized problems,
in particular, with the occasional production of defective,
tainted, or counterfeit food and pharmaceutical products.
Applicant does not say – as the managing attorney contends
– that “ALL Chinese manufacturers make poor quality goods,”
or even that all Chinese pharmaceuticals are poorly
manufactured. Given the huge volume of goods imported from
China, the problem would be very much larger if all Chinese
goods from all Chinese manufacturers were of poor quality.
Rather, applicant’s point appears to be that in light of
Serial No. 77902555
34
some known incidents (some of which allegedly resulted in
deaths) that consumers should be cautious of – and indeed
avoid – Chinese pharmaceuticals. “Q: How bad is it that
my multi-vitamin ingredients are from China? A: It
depends on what health risks you are willing to take.”
Opurity website (emphasis added; capitalization altered).
If applicant’s reports of Chinese manufacturing
problems are true, they are concerning in themselves. But
it is far from clear from applicant’s website or any other
evidence of record that such problems affect more than a
relatively small percentage of Chinese manufacturing. The
thrust of applicant’s website is instead that regardless of
the actual probability of encountering multivitamins
containing defective Chinese ingredients, it is better to
avoid such a risk by buying applicant’s non-Chinese sourced
product. Applicant’s appeal may indeed be hyperbolic, but
the record indicates that applicant’s position is shared by
others.
Moreover, while applicant clearly takes a dim view of
both Chinese manufacturing and Chinese government
oversight, it is hard to conclude on this record that
applicant’s position is clearly motivated by a dislike of
China. The material on applicant’s website is replete with
references to incidents involving mishaps in the Chinese
Serial No. 77902555
35
pharmaceutical or food industry. Both applicant’s website
and the other materials of record include citations to
sources for this information, including the mainstream
press, statements by U.S. politicians, the United States
Food and Drug Administration, purported experts on food and
pharmaceutical safety, and others. Again, it could be
argued that applicant exaggerates the significance of these
incidents, and that its reaction is more extreme than is
warranted. But applicant does not appear to be alone in
this regard, and there is nothing in this record to suggest
that it has fabricated information merely to cast China in
a bad light.
In this regard, the managing attorney points to
remarks on applicant’s website which he finds to be
particularly offensive:
The applicant’s website even goes so far as to
make a stereotypical claim about Chinese culture.
Making reference to a purported ancient proverb,
“The Tiger Doesn’t Change Its Stripes,” (which
may or may not actually be Chinese in origin),
its website attributes the “quality problems in
China” as being “deep-seated and often
cultural…[.]” This assertion is clearly
offensive and derogatory not only to the nation
of China but also to people of Chinese origin.
Managing Atty. Br. at 9.
While we cannot fully explore applicant’s intent on
this record, it is not clear to us that these comments were
Serial No. 77902555
36
intended to be anything but warnings about what applicant
alleges to be serious problems in Chinese manufacturing.
The comment appears on applicant’s website as follows:
Q: Do you expect the quality of ingredients from
China to improve over time?
A: Probably not. The short answer is, “The Tiger
Doesn’t Change its Stripes”. The reason we say
that is that the quality problems in China are
deep-seated and often cultural – and cultural
items change slowly, if at all.
The managing attorney opines that the “tiger” aphorism
may be Chinese in origin. The managing attorney apparently
takes this statement to be one about the very nature of
Chinese people, rather than applicant’s observation about
the current state of Chinese manufacturing and the
prospects for change. Again, it is not clear that this was
applicant’s intent. While the reference to “deep-seated
and often cultural” quality problems in China might
possibly refer to some perceived defect in the character of
the Chinese people, it could just as well be a reference to
problems in the culture of some manufacturers in a rapidly
developing economy (i.e., the “corporate culture”), and
applicant’s perception that the Chinese government is
currently unable to regulate manufacturers so as to provide
Serial No. 77902555
37
reasonable assurance of safety for products such as
ingredients for multi-vitamins.19
In sum, we find that applicant and some others hold
strong feelings about the risks allegedly posed by certain
products manufactured in China. But we cannot find clear
evidence on this record that applicant’s motivation is to
disparage China.
As discussed, the specific question in considering the
second prong of the disparagement analysis is whether the
meaning of the mark – i.e., that applicant’s nutritional
supplements contain no ingredients from China – “may be
disparaging to a substantial composite of the referenced
group.” We have determined that the “referenced group” in
this case is the nation of China.
We find little or nothing in this record that would
shed light on whether China would find CHINA FREE as used
on nutritional supplements to be disparaging. Unlike some
other cases, in which we have relied to some extent on
dictionary definitions describing a term as “vulgar,” e.g.,
Boulevard Entm’t, 67 USPQ2d at 1478, or “derogatory,” e.g.,
19 Of course, one might easily point out that such criticisms are
not unique to China. There has been no shortage of writers
vilifying the corporate culture of some sectors of the United
States economy in the wake of some well-publicized corporate
scandals.
Serial No. 77902555
38
Heeb Media, 89 USPQ2d at 1076, we have no such evidence in
this case. The managing attorney, noting the dictionary
evidence of record argues that
[t]he term “FREE” is defined as “relieved from or
lacking something and especially something
unpleasant or burdensome
– often used
in combination ....” MERRIAM-WEBSTER
ONLINE DICTIONARY www.merriam-webster.com/dictionary/
free (May 21, 2010). Therefore, the phrase
“CHINA FREE” is used to describe a product that
is not made in China. It is used to try to
placate people’s fears about buying a certain
product because it is “lacking something
unpleasant or burdensome.” Id. Therefore,
consumers reasonably would understand that the
wording “CHINA FREE” in the proposed mark refers
to the disparaged party, i.e.[,] in the People’s
Republic of China. A reasonable person of
ordinary sensibilities would consider this
reference offensive or objectionable because the
proposed wording “CHINA FREE” implies that there
is something negative about retail goods made in
China.
Managing Atty. Br. at 5 (citation revised).
As noted, it is undisputed that the term CHINA FREE
refers in this case to the fact that applicant’s products
do not contain ingredients from China. The cited
dictionary definition reveals that one possible
interpretation of the term is that applicant’s goods
“lack[] ... something unpleasant or burdensome.” And the
internet evidence does demonstrate that many consumers view
Chinese food and pharmaceutical products with suspicion due
to publicized reports of contamination, adulteration and
Serial No. 77902555
39
similar problems. Thus one could conclude that “[a]
reasonable person of ordinary sensibilities would consider
... “CHINA FREE” [to] impl[y] that there is something
negative about retail goods made in China,” although that
is not the only possible conclusion.
Even if we accept the managing attorney’s proposition,
however, it demonstrates only that CHINA FREE says
“something negative about retail goods made in China.”
(emphasis added). By contrast, the issue in this case is
whether the mark disparages China itself, not goods
produced there. To the extent that the managing attorney
relies on any inherent disparaging meaning in the mark, we
note that he has not offered any evidence which tends to
suggest that China would consider the mark disparaging.
Any such finding on our part would be based entirely on
speculation.
We are not naïve, and we suspect that China may not
like applicant’s proposed mark, which may enable purchasers
to choose nutritional supplements without ingredients from
that country.20 But there is likely a difference between
what one may not like and what is disparaging under the
20 We hasten to add, however, that a refusal to register would do
nothing to prevent applicant from using these words or others to
convey the same information.
Serial No. 77902555
40
Trademark Act. But in any event, our opinion (or that of
the managing attorney) is of little relevance. It is no
substitute for evidence of the views of the referenced
person or group, or at least some evidence from which those
views might be reasonably inferred. As the Federal Circuit
noted, “[E]ven if the members of this panel personally find
the mark BLACK TAIL disgustingly scandalous, the legal
conclusion that a trademark comprises scandalous matter
must derive from the perspective of the substantial
composite.” In re Mavety Media Group Ltd., 33 F.3d 1367,
31 USPQ2d 1923, 1926 (Fed. Cir. 1994). As the Board put
it:
Although the Court in In re Mavety Media Group
Ltd. was discussing the public reaction to a
scandalous mark, and the present case involves a
mark that may disparage a religion or religious
figure, the principles expressed by the Court
still apply. Thus ... it is imperative that the
Board be careful to avoid interposing its own
judgment for that of Buddhists.
In re Hines, 32 USPQ2d 1376, 1377 (TTAB 1994) (reversing
refusal of BUDDA BEACHWEAR and design as disparaging); see
Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600, 1608
(TTAB 1999) (“We would also add that opposers have provided
no evidence, beyond the dictionary definitions themselves,
that women in general, or African American women in
Serial No. 77902555
41
particular, believe themselves to be disparaged by the use
of BLACK TAIL.”).
We are, of course, aware that the Office is limited in
the resources it may bring to bear during ex parte
examination. While the Office cannot, for instance,
conduct surveys21 in support of a refusal such as the one at
issue here, other evidence may exist which provides a
reasonable predicate for an ex parte determination of the
meaning of the mark to “a substantial composite of the
referenced group,” or in this case, to the referenced
person. A number of such indirect sources were of record
in In re Squaw Valley Dev. Co., 80 USPQ2d at 1272-75. That
record comprised three dictionary definitions, variously
noting that “squaw” is “offensive,” “–usu. used
disparagingly,” and that the term “had developed multiple
derogatory associations”; several state resolutions and
statutes defining “squaw” as an offensive term and
replacing its use in place names; statements “attributed to
... Native American activists and of legislators who share
the views of such activists,” including statements
regarding the specific SQUAW VALLEY marks at issue; and a
number of articles indicating that many Native Americans
21 While not required in a Board proceeding, a well-conducted
survey can be highly probative.
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found both “squaw” and place names incorporating that term
to be highly derogatory. See also In re Heeb Media, 89
USPQ2d at 1072 (relying on various publications and on
dictionary evidence defining HEEB as a derogatory term for
a Jew).
By contrast, the best evidence in this case in support
of a finding that CHINA FREE is disparaging to China may be
the definition of “free” as meaning, inter alia, “relieved
from or lacking something and especially something
unpleasant or burdensome.” But unlike the definitions
which were submitted in cases such as In re Squaw Valley
and In re Heeb Media, there is no indication that this term
is in itself considered to be derogatory, offensive, or
disparaging.22 While we do not rule out the possibility
22 We note, however, that even a dictionary definition indicating
that a term is derogatory or offensive may not be sufficient
where the term has both offensive and inoffensive meanings:
Even if a standard dictionary definition and its
editorial label of vulgar usage show that a
substantial composite of the general public would
consider the word to be scandalous, we still would
hold that based solely on the dictionary sources, the
Board erred in this particular case in concluding that
the mark BLACK TAIL comprises scandalous matter. ...
[I]n addition to the vulgar definitions ..., the
standard dictionaries cited ... in this case also set
forth non-vulgar definitions ... that are equally
applicable.... [T]he Board, without more, erred in
concluding that in the context of the [goods,] the
substantial composite of the general public would
necessarily attach to the mark ... the vulgar meaning
..., rather than the admittedly non-vulgar meaning....
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that the term might be used here with the intent to slight
China or that it might be perceived by China in such a way,
it is also possible that it is not. As the Federal Circuit
has emphasized, the touchstone of disparagement is the
meaning of the mark to the referenced group. See In re
Mavety Media Group, 31 USPQ2d at 1926. And whatever we may
think of applicant’s mark, the opinion of the Office or of
this Board is no substitute for evidence (direct or
indirect) of the opinion of the relevant individual or
group. See id; In re Hines, 32 USPQ2d at 1377.
V. Conclusion
We have fully considered all of the argument and
evidence of record, including any matters which we have not
specifically discussed.
This is a difficult case, and not entirely free from
doubt. Nonetheless, we conclude that the evidence of
record does not support the refusal of registration under
Trademark Act § 2(a). As we have noted in the past,
In the absence of evidence as to which of these
definitions the substantial composite would choose,
the PTO failed to meet its burden of proving that
Mavety’s mark is within the scope of Section 1052(a)
prohibition.
In re Mavety Media Group Ltd., 31 USPQ2d at 1928 (reversing
refusal to register BLACK TAIL for adult magazines as
scandalous).
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we are inclined to resolve doubts on the issue of
whether a mark is scandalous or disparaging in
favor of applicant and pass the mark for
publication with the knowledge that if a group
does find the mark to be scandalous or
disparaging, an opposition proceeding can be
brought and a more complete record can be
established.
In re In Over Our Heads Inc., 16 USPQ2d 1653, 1654-55 (TTAB
1990); In re Mavety Media Group, 31 USPQ2d at 1928 (“We ...
commend the practice adopted by the Board in another case
to resolve the issue whether a mark comprises scandalous
matter under Section 1052(a) in favor of [the] applicant
and pass the mark for publication with the knowledge that
if a group does find the mark to be scandalous ..., an
opposition proceeding can be brought and a more complete
record can be established.” (internal quotation marks
omitted)).
We add that our decision does not constitute
endorsement or approval of the mark but merely recognizes
that the Trademark Act presumes that a mark should be
approved for publication in the absence of appropriate
evidence that it is not registrable. We note that our
decision is without prejudice to any inter partes
proceeding which might be filed by an aggrieved party. It
is possible that we would reach a different result on a
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more complete record such as may be adduced in an inter
partes proceeding.
Decision: The refusal to register under Trademark Act
§ 2(a) is reversed.
