cyckV4

1052(a) 159
(a) Consists of or comprises immoral, deceptive, or scandalous matter;
or matter which may disparage . . . persons, living or dead, institutions,
beliefs, or national symbols, or bring them into contempt,
or disrepute. . . .
15 U.S.C. § 1052(a). In reaching its decision, the TTAB concluded that the registrations
at issue did not comprise “scandalous matter.” That decision has not been appealed and is
not before this Court. The TTAB also conflated the “contempt or disrepute” inquiry with
the “disparage” inquiry. . . . In other words, the TTAB concluded that “the guidelines
enunciated, in connection with determining whether matter in a mark may be disparaging
are equally applicable to determining whether such matter brings ‘persons, living or dead,
institutions, beliefs, or national symbols into contempt or disrepute.’” None of the parties
argue that the TTAB’s decision to treat “disparage” in the same manner as “contempt or
disrepute” was error. Therefore, the Court has not reviewed this legal determination and
in assessing the TTAB’s decision, only reviews whether the marks at issue “may
disparage” Native Americans, which includes whether the marks bring Native Americans
into contempt or disrepute.
Pursuant to section 14 of the Lanham Act “any person who believes that he is or
will be damaged by the registration of a mark” may file a petition to cancel a registration
“[w]ithin five years from the date of the registration of the mark,” or “[a]t any time . . .
if its registration was obtained fraudulently or contrary to the provisions of . . . subsection
(a), (b), or (c) of section 1052 of this title. . . .” 15 U.S.C. § 1064.
2. The TTAB’s Disparagement Conclusion is a Question of Fact
As discussed supra, the TTAB’s findings of fact are reviewed under the substantial
evidence test. However, while the Court is unable to find any helpful precedent on point, it
would appear that, by analogy, there is a dispute in authority as to whether the “ultimate”
question about whether a trademark “may disparage” would be treated as one of fact or one
of law. The parties have not directly addressed this question in their papers. The Federal
Circuit has held that the question of whether a trademark is scandalous under section 2(a) of
the Lanham Act is treated as a question of law. In re Mavety Media Group Ltd., 33 F.3d 1367,
1371 (Fed. Cir. 1994) (“The determination that a mark comprises scandalous matter is a
conclusion of law based upon underlying factual inquiries. . . . Therefore, while we review
the Board’s underlying fact findings for clear error, we review de novo the Board’s ultimate
legal conclusion of scandalousness.”). In making this decision, the Federal Circuit analogized
to cases involving “likelihood of confusion” scenarios.
The Court’s research reveals, however, that the courts of appeals are split over
whether, in the context of “likelihood of confusion” cases, the “ultimate” question as to
whether the trademarks are similar is one of fact or of law. The majority view, that the
question is a pure question of fact, is considered to be “the better view.” Restatement
(Third) of Unfair Competition § 21 cmt. m (1995).
The Court agrees with the majority view. Whether the six trademarks disparage
Native Americans is ultimately a fact-bound conclusion that rests with the fact-finder in
the first instance.
3. The TTAB’s Findings of Fact
The Court’s review of the TTAB’s findings of fact is limited by necessity given the
paucity of actual findings of fact made by the TTAB. Even though it spent fourteen pages
cataloging the evidence in the case, the TTAB made specific findings of fact in only two
areas: (1) linguists testimony, and (2) survey evidence.