## United States Court of Appeals for the Federal Circuit

2009-1100 (Serial Nos. 78/918,061 and 78/918,500)

IN RE SHINNECOCK SMOKE SHOP

Scott Michael Moore , Moore International Law Office s, of New York, New York, argued for appellant. Thomas V. Shaw , Associate Solicitor, Office of t he Solicitor, United States Patent and Trademark Office, of Alexandria, Virgin ia, argued for the Director of the United States Patent and Trademark Office. With him on the brief were Raymond T. Chen , Solicitor, and Shannon M. Hansen , Associate Solicitor. Of counsel was Christina J. Hieber , Associate Solicitor. Appealed from: United States Patent and Trademark Office Trademark Trial and Appeal Board

## United States Court of Appeals for the Federal Circuit

2009-1100 (Serial Nos. 78/918,061 and 78/918,500)

IN RE SHINNECOCK SMOKE SHOP

Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board

_________ __________________ DECIDED: July 1, 2009

_________ __________________ Before MAYER, CLEVENGER, and SCHALL, Circuit Judges

. CLEVENGER, Circuit Judge

. In June 2006, Jonathan K. Smith (Applicant) , a U.S. citizen and member of the Shinnecock Indian Nation and sole proprieto r of Shinnecock Smoke Shop, filed two trademark applications with t he United States Patent and Trademark Office (USPTO), seeking to register the marks SH INNECOCK BRAND FULL FLAVOR and SHINNECOCK BRAND LIGHTS (Serial Nos. 78/918,061 and 78/918,500 respectively) for cigarettes. Both marks also incl uded the wording "MAD E UNDER SOVEREIGN AUTHORITY." The Trademark Examining Attorney (Exami ning Attorney) refused to register the proposed marks, citing Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), which generally protects against registering marks that falsely suggest a connection to a non-sponsoring entity. Applicant appealed to th e Trademark Trial and Appeal Board (Board) which affirmed because it agree d that the marks falsely s uggested a connection with the non-sponsoring Shinnecock Indi an Nation. The Board al so rejected Applicant's constitutional and treaty-based claims that pertained to his allegations of racial discrimination. Applicant time ly appealed the Board's decision to this court. We have jurisdiction over the appeal pursuant to 28 U.S.C. § 1295(a)(4)(B). We affirm.
I "This court reviews the B oard's legal conclusions de novo , and its factual findings for substantial evidence." In re Pacer Tech. , 338 F.3d 1348, 1349 (Fed. Cir. 2003) (citations omitted). Subst antial evidence is "such rele vant evidence as a reasonable mind might accept as adequate to support a c onclusion." Consol. Edison Co. v. NLRB , 305 U.S. 197, 229 (1983).
II Title 15, section 1052(a) of the U.S. C ode protects against marks that "falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols." Applicant does not contest that the marks fals ely suggest a connection with the Shinnecock Indian Nation. Instead, he challenges the Board's determination that the Shinnecock Indian Nation is a "person[ ], living or dead, [or] in stitution[ ]" under section 1052(a). We affirm t he Board's conclusion that the Shinnecock Indian Nation is an "institution" and thus falls withi n section 1052(a)'s protection. To construe a statute, we beg in with its text and look to the words' plain meaning. Bazalo v. West , 150 F.3d 1380, 1382 (Fed. Cir. 1998). Here, the ordinary meaning of "institution" suggests the term is broad enough to include a self-governing Indian nation.

2009-1100 2See Black's Law Dictionary 813, 1133 (8th ed. 2004) (defin ing "institution" as "[a]n established organization," and defining "organi zation" as a "body of persons . . . formed for a common purpose"). Our construction is al so in line with Boar d precedent that has specifically included Indian tribes under section 1052(a)'s protection in the past, see In re White , 73 USPQ2d 1713, 1718 (T.T.A.B. 2004) (finding that "each federally recognized Apache tribe is necessarily either a juristic person or an institution"), and with the Board's general prac tice of construing the stat ute in question as broadly applicable, see In re Urbano , 51 USPQ2d 1776, 1779 (T.T.A.B. 1999) (finding that SYDNEY 2000, "the entire org anization which comprises the Olympic Games, as a whole, qualifies as an 'insti tution' within the meaning of Se ction 2(a) of the Trademark Act"); In re N. Am. Free Trade Assoc. , 43 USPQ2d 1282, 1285 (T .T.A.B. 1997) (same for the North American Free Tr ade Agreement). We agree with the Board's conclusion that the Shinnecock Indian Nation is an "institution" under section 1052(a). A Applicant offers little subs tantive support for his conten tion that the Shinnecock Indian Nation is not an "institution" under se ction 1052(a). Instead, Applicant contends that the "institution" issue was not raised be low. According to Applicant, the Examining Attorney rejected the marks based on her conc lusion that the Shinnecock Indian Nation falls under the statute' s protection for "persons" and that the Board therefore should not have affirmed the decision based on its "institu tion" determination. We disagree. While the Examining Attorney focused on characterizing the Shinnecock Indian Nation as a "juristic person," she apparently did so based on her understanding that the terms "person," "juristic person," and "insti tution" all have the same meaning under

2009-1100 3section 1052(a). As evidence, the two sour ces that the Examini ng Attorney cited in explaining why the Shinneco ck Indian Nation was subject to section 1052(a)'s falsesuggestion protection both suggest such an approach. First, she cited section 1127 which provides, [t]he term "person" and any other wo rd or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this Act includes a juristic person as well as a natural person. The term "juristic person" in cludes a firm, corporation, union, association, or other organization c apable of suing a nd being sued in a court of law. 15 U.S.C. § 1127. The Examining Attorney also cited In re White , a case in which the Board held that "there is nothing in t he language of the statute to suggest that the meaning of 'persons' or 'institutions' is any broader or narrower for one of these grounds for refusal as opposed to another." 73 USPQ2d at 1717. The Examin ing Attorney's approach explains why, despite her repeated references to "juristic persons," she ultimately concluded that "the tribe is a person or institution for purposes of the Trademark Act." 1 It also explains why the Examining Attorney's brief before the Board cited two protectedinstitution cases, In re Urbano , 51 USPQ2d 1776, and In re N. Am. Free Trade Assoc. , 43 USPQ2d 1282, and parent hetically noted that the Boar d's conclusion in each case was that the relevant organization qualified as an "institution." We are also confident that Applican t understood the Examining Attorney's position and was aware that the "institution" issue was in play . Applicant's own brief to

1 We offer no opinion as to whether the Examining Attorney's approach reflects a correct reading of "persons" or "institutions" under section 1052(a), a question beyond the scope of this appeal. We merely acknowledge the issues raised under her approach.

2009-1100 4the Board explained that after the initial rejection, he "filed . . . a request for reconsideration, arguing, among other things, t hat the Tribe is not a person or institution within the meaning of Section 2(a)." Applicant's conc ession betrays his contention that the "institution" issue was not raised below, and we conclude that the board did not err in affirming the rejection based on it s " institution" determination. B As he did before the Boar d, Applicant also argues on appeal that the USPTO's refusal to register his marks, when the USPTO has granted supposedly similar marks also involving Indian tribe names to non-Indians, shows a pattern of racial discrimination in violation of the Du e Process and Equal Protection clau ses of the Fifth Amendment to the United States Constitution. Applicant contends that this alleged racial discrimination also violates the United Stat es' treaty obligations under the United Nations' International Convention on the Elimination of All Forms of Racial Discrimination (CERD). The Board rejected Applicant's allegations, and we agree that they are meritless. There was no due process violation here be cause Applicant "was provided a full opportunity to prosecute [his] applications a nd to appeal the examining attorney's final rejections to the Board." In re Int'l Flavors & Fragrances Inc. , 183 F.3d 1361, 1368 (Fed. Cir. 1999); see also Mathews v. Eldridge , 424 U.S. 319, 349 (1976) (explaining that "[a]ll that is necessary" to satisfy due pr ocess "is that the proc edures be tailored, in light of the decision to be m ade, to 'the capacities and circ umstances of those who are to be heard,' to insure that they are give n a meaningful opportunity to present their case" (quoting Goldberg v. Kelly , 397 U.S. 254, 268–69 ( 1970))). Applicant's allegations regarding simila r marks are irrelevant because each application must be

2009-1100 5considered on its own merits. See In re Boulevard Entm't , 334 F.3d 1336, 1343 (Fed. Cir. 2003). Even if all of the third-party registrations should have been refused registration under section 1052(a), such erro rs do not bind the U SPTO to improperly register Applicant's marks. See id. We likewise reject Applicant's equal-prote ction argument for several reasons. First, allegations of disparate treatment, ev en if accurate, do not diminish the Board's and Examining Attorney's legi timate, nondiscriminatory reasons for denying registration. Even if his allegations were accurate, the mo st Applicant could establish is that the USPTO should have rejected the other marks. It does not follow that the proper remedy for such mischief is to grant Applicant's ma rks in contravention of section 1052(a). Further, Applicant's argument is founded on unsupported assumptions. Applicant assumes that, unlike him, the su ccessful applicants were non-Indians and that this is the reason why his applications were rejected whereas theirs were not. However, as the Board noted, Applicant has made no showing that any of the other registered marks were registered without the consent of the named tribal entities. Further, Applicant ignores subs tantive differences—either in the marks or in their associated goods and services—that might have made the other registrations less suggestive of a false connection. We agree with the Board that "[i]t is entirel y reasonable to assume that these registrations were issued not because the applicants therein were nonIndians, but because the elements of the Section 2(a) refusa l were not or could not be proven by the Office." In re Shinnecock Smoke Shop , 2008 WL 4354159 at *6 (T.T.A.B. Sept. 10, 2008). Applicant's reliance on CERD is likewise unavailing. In addition to Applicant's

2009-1100 62009-1100 7 failure to establish any racial discriminat ion as noted above, Applicant has no private right of action under CE RD, which is not a self-executing treaty. See Johnson v. Quander , 370 F. Supp. 2d 79, 101–102 (D.D.C. 2005) (CERD provisions are not selfexecuting and, thus, do not authorize a private right of action), aff'd , 440 F.3d 489 (D.C. Cir. 2006), cert . denied , 549 U.S. 945 (2006). CONCLUSION For the foregoing reasons, we affirm t he judgment of the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.

AFFIRMED