Shinnecock Smoke Shop

Trademark Trial and Appeal Board

Sep 10, 2008

No. 78918500 (T.T.A.B. Sep. 10, 2008)

Mailed:
Sept. 10, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Shinnecock Smoke Shop
________

Serial No. 78918061
Serial No. 78918500
_______

Scott Michael Moore of Moore International Law Offices,
P.C. for Shinnecock Smoke Shop.

Kathleen de Jonge, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Quinn, Hohein and Grendel, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

The appeals in the two above-captioned applications
are hereby consolidated and shall be decided in this single
opinion.1

1 In this opinion, for the most part we shall refer to
applicant’s “application” and “mark” in the singular. However,
our findings and analysis should be understood to refer to both
of the applications and both of the marks.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. Nos. 78918061 and 78918500
2
The applicant in both applications is Shinnecock Smoke
Shop, a sole proprietorship composed of Jonathan K. Smith,
“a citizen of the United States and on-reservation member
of the Shinnecock Indian Nation.”
In application Serial No. 78918061, filed on June 27,
2006, applicant seeks registration on the Principal
Register of the mark depicted below for “cigarettes” in
Class 34.

The wording in the mark is SHINNECOCK BRAND, FULL FLAVOR,
and MADE UNDER SOVEREIGN AUTHORITY. Applicant has
disclaimed the exclusive right to use BRAND, FULL FLAVOR,
Ser. Nos. 78918061 and 78918500
3
and MADE UNDER SOVEREIGN AUTHORITY apart from the mark as
shown.2
In application Serial No. 78918500, filed on June 28,
2006, applicant seeks registration on the Principal
Register of the mark depicted below for “cigarettes” in
Class 34.

2 The application includes a “Description of Mark” statement
which states:

The mark consists of a RED background with darker RED
swirls. In the center is a BLACK circle outlined in WHITE
broken by a pipe. The pipe is BROWN with a YELLOW bowl and
feathers attached that are BLACK at the top, with RED under
the BLACK on one side and BLUE under the BLACK on the other
side and ending in WHITE tips. In the center of the circle
are a Native American woman with BLACK hair, a BROWN face
and a WHITE dress with PINK and BLUE highlights, and a
Native American man with feathers in his hair, a BROWN
face, and a YELLOW shirt with fringe. RED, BLUE, WHITE and
BLACK appear on the feathers in the man’s hair and in
decorations on the sleeve of his shirt. The woman is
holding a BROWN flower and the man is holding a WHITE pipe.
Between the man and woman is a rising PINK sun with a RED
center and a YELLOW corona behind a WHITE flowering GREEN
tobacco plant against BLACK mountains. The wording in the
mark is WHITE.

The application includes a “Colors Claimed” statement which
states: The color(s) red, green, yellow, brown, blue, black,
white and pink is/are claimed as a feature of the mark.”

Ser. Nos. 78918061 and 78918500
4

The wording in the mark is SHINNECOCK BRAND, LIGHTS, and
MADE UNDER SOVEREIGN AUTHORITY. Applicant has disclaimed
BRAND, LIGHTS, and MADE UNDER SOVEREIGN AUTHORITY apart
from the mark as shown.3

3 The application includes a “Description of Mark” statement
which states:

The mark consists of a YELLOW background with WHITE swirls.
In the center is a BLACK circle broken by a pipe. The pipe
is BROWN with a YELLOW bowl and feathers attached that are
BLACK at the top, with RED under the BLACK on one side and
BLUE under the BLACK on the other side and ending in WHITE
tips. In the center of the circle are a Native American
woman with BLACK hair, a BROWN face and a WHITE dress with
PINK and BLUE highlights, and a Native American man with
feathers in his hair, a BROWN face, and a YELLOW shirt with
fringe. RED, BLUE, WHITE and BLACK appear on the feathers
in the man’s hair and in decorations on the sleeve of his
shirt. The woman is holding a BROWN flower and the man is
holding a WHITE pipe. Between the man and woman is a
rising PINK sun with a RED center and a YELLOW corona
behind a WHITE flowering GREEN tobacco plant against BLACK
mountains. The wording in the mark is BLACK.

Ser. Nos. 78918061 and 78918500
5
In each of the applications, the Trademark Examining
Attorney has issued a final refusal to register the mark on
the ground that it falsely suggests a connection with the
Shinnecock Indian Nation (an Indian tribe located near
Southampton, New York), and thus is unregistrable under
Trademark Act Section 2(a), 15 U.S.C. §1052(a).
In each of the applications, applicant has appealed
the final refusal to register. Applicant and the Trademark
Examining Attorney have filed main appeal briefs in each
case.4
After careful consideration of the evidence of record
and the arguments presented, we affirm the refusal to
register in each of the applications.
As noted above, applicant is a member of the
Shinnecock Indian Nation. The record includes a printout
from the tribe’s website (www.shinnecocknation.com), which
states that the Shinnecock Indian Nation is an Indian tribe

The application includes a “Colors Claimed” statement which
states: “The color(s) RED, GREEN, YELLOW, BROWN, BLUE, BLACK,
WHITE and PINK is/are claimed as a feature of the mark.

4 We sustain the Trademark Examining Attorney’s objection to the
evidence (pertaining to a third-party intent-to-use application
(Ser. No. 78972292) to register the mark LUMBEE), submitted by
applicant for the first time with applicant’s appeal brief in
each case. This evidence is untimely and shall be given no
consideration. See Trademark Rule 2.142(d), 37 C.F.R. §2.142(d).
We note that our decision herein would be the same even if we had
considered this untimely evidence.

Ser. Nos. 78918061 and 78918500
6
located on eastern Long Island, New York, and that it “is
among the oldest self-governing tribes of Indians in the
United States and has been a state-recognized tribe for
over 200 years.”
In pertinent part, Trademark Act Section 2(a)
prohibits registration of “matter which may disparage or
falsely suggest a connection with persons, living or dead,
institutions, beliefs, or national symbols, or bring them
into contempt, or disrepute.” More specific to the case
before us, the relevant provision of Section 2(a) is the
prohibition of registration of “matter which may … falsely
suggest a connection with persons, living or dead, [or]
institutions … .” This Section 2(a) basis of refusal of
registration is generally referred to as the “false
suggestion of a connection” refusal.
Under our caselaw, there are four elements to this
refusal. The Office must prove that: (1) the mark is the
same as, or a close approximation of, the name or identity
previously used by another person or institution; (2) the
mark would be recognized as such, in that it points
uniquely and unmistakably to that person or institution;
(3) the person or institution named by the mark is not
connected with the activities performed by applicant under
the mark; and (4) the fame or reputation of the person or
Ser. Nos. 78918061 and 78918500
7
institution is such that, when the mark is used with the
applicant’s goods or services, a connection with the person
or institution would be presumed. See In re White, 73
USPQ2d 1713 (TTAB 2004); In re Sloppy Joe’s International
Inc., 43 USPQ2d 1350 (TTAB 1997).
Initially, we note that Section 2(a) prohibits
registration of a mark which falsely suggests a connection
with “persons, living or dead,” or with “institutions.” We
find that the Shinnecock Indian Nation (the tribe of which
applicant is a member) is an “institution” within the
meaning of Section 2(a). Applicant and the Trademark
Examining Attorney have argued at length on the question of
whether the tribe is a “person” within the meaning of
Section 2(a).5 We need not and do not decide that question,
however, because regardless of whether the tribe is a
“person,” it clearly is an “institution” and thus is
protected under Section 2(a). See In re White, supra,

5 In brief, applicant argues that even though the definition of
“person” set forth in Trademark Act Section 45, 15 U.S.C. §1127,
specifically includes not only natural persons but juristic
persons, the words “persons, living or dead” in Section 2(a), in
context, must be read to refer solely to natural persons and not
juristic persons because only natural persons, not juristic
persons, can be “living or dead.” This argument disregards the
controlling caselaw going back at least as far as the Federal
Circuit’s seminal Section 2(a) decision in The University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). These cases have
repeatedly found that the word “persons” in Section 2(a)
encompasses juristic persons, not just natural persons.
Ser. Nos. 78918061 and 78918500
8
(Apache tribes are “institutions” for purposes of Section
2(a)). If applicant’s mark falsely suggests a connection
with the Shinnecock Indian Nation, an “institution” within
the meaning of Section 2(a), then registration must be
refused. We turn now to the substantive elements of the
refusal.
First, however, we find it to be significant that
applicant, throughout the examination process and in its
appeal brief, has presented absolutely no evidence or
argument with respect to the elements of the Trademark
Examining Attorney’s Section 2(a) “false suggestion of a
connection” refusal. We deem applicant’s failure to even
mention the elements of the refusal as being tantamount to
a concession that the Office has established each of those
elements. However, because the burden of establishing each
of the elements of the refusal is on the Office, we shall
proceed to determine whether the Office has presented
evidence sufficient to support the refusal. We find that
it has.
Under the first element of the refusal, we find that
the mark applicant seeks to register consists of or
comprises matter, namely, the word SHINNECOCK, which is the
same as or a close approximation of the name or identity
previously used by another institution, i.e., the
Ser. Nos. 78918061 and 78918500
9
Shinnecock Indian Nation. The tribe’s website shows that
the tribe identifies itself and repeatedly refers to itself
by the name “Shinnecock Indian Nation” or some other
variation which includes the word “Shinnecock” or
“Shinnecocks.” It is not dispositive that the words
“Indian Nation” included in the tribe’s name do not appear
in applicant’s mark, nor is it dispositive that the mark
includes other wording which is not included in the tribe’s
name. See In re White, 80 USPQ2d 1654, 1658 (TTAB 2006; In
re White, supra, 73 USPQ2d at 1719; In re Urbano, 51 USPQ2d
1776, 1778 (TTAB 1999)(Section 2(a) determination is based
on “the relevant portion” of the applicant’s mark). For
these reasons, we find that the first element of the
Section 2(a) “false suggestion of a connection” refusal has
been established. Again, applicant does not contend
otherwise.
Under the related second element of the refusal, we
find that the word SHINNECOCK in applicant’s mark, in
addition to being the same as or a close approximation of
the tribe’s name or identity, would in fact be recognized
as such in that it points uniquely and unmistakably to the
tribe. The evidence submitted by the Trademark Examining
Attorney with her first and final Office actions includes
printouts of excerpted news articles involving the tribe in
Ser. Nos. 78918061 and 78918500
10
which the tribe always is identified and referred to as
“the Shinnecocks” or some variation thereof. Moreover, on
this record, SHINNECOCK has no other significance than as
the name of the tribe. For these reasons, we find that the
second element of the Section 2(a) “false suggestion of a
connection” refusal has been established. Applicant does
not contend otherwise.
Under the third element of the refusal, we find that
the person or institution named by the mark, i.e., the
Shinnecock tribe, is not connected with the activities
performed by applicant under the mark. Applicant’s mere
membership in the tribe does not suffice; applicant is not
the only member of the tribe. Nor does the tribe’s
awareness of applicant’s activities suffice as the
requisite connection (assuming that such awareness in fact
exists). There must be a specific commercial connection
between applicant and the tribe, evidencing the tribe’s
endorsement or sponsorship of applicant’s sale of
cigarettes. See In re White, supra, 80 USPQ2d at 1660-61.
There is no evidence of the requisite specific commercial
connection in this case. Thus, the third element of the
“false suggestion of a connection” refusal has been
established. Applicant does not contend otherwise.
Ser. Nos. 78918061 and 78918500
11
The fourth and final element of the refusal in this
case requires a showing that the fame or reputation of the
name appropriated by the applicant is such that, when
applicant’s mark is used in connection with applicant’s
goods, purchasers would mistakenly presume that a
commercial connection exists between the named person or
institution and the applicant. This element does not
require a fame analysis like that which might be relevant
to a Section 2(d) likelihood of confusion analysis or a
Section 43(c) dilution analysis. Rather,

…the key is whether the name per se is
unmistakably associated with a particular person
or institution and, as used would point uniquely
to the person or institution. In short, it is
the combination of (1) the name of sufficient
fame or reputation and (2) its use on or in
connection with particular goods or services,
that would point consumers of the goods or
services uniquely to a particular person or
institution.

In re White, supra, 73 USPQ2d at 1720 (emphasis in
original).
We find in this case that the fame and reputation of
the Shinnecock tribe is such, and the nature of applicant’s
particular goods (cigarettes) is such, that applicant’s use
of its SHINNECOCK mark on cigarettes will lead purchasers
Ser. Nos. 78918061 and 78918500
12
to mistakenly presume that a commercial connection exists
between the tribe and applicant and applicant’s cigarettes.
First, we find that the Shinnecock Indian Nation and
its Shinnecock name are well-known, especially to residents
in the geographic area (eastern Long Island) occupied by
the tribe and to visitors to the reservation and
surrounding area. The tribe’s website informs readers that
“[t]he Shinnecock Nation is among the oldest self-governing
tribes in the United States and has been a state-recognized
tribe for over 200 years.” The tribe’s reservation is
located adjacent to the town of Southampton on Long Island.
The evidence of record includes excerpts and abstracts from
news articles (including articles from The New York Times)
which specifically refer to and discuss the Shinnecocks by
name. The Tribe’s website shows that, since 1946, the
tribe has conducted an annual Powwow event which now “hosts
thousands of visitors.” Superpages.com identifies
Shinnecock Indian Outpost as a “Southampton, NY
Attraction”: “This funky shop sells tax-free cigarettes,
American Indian crafts, clothes, and glassware.”
Second, we find that applicant’s particular goods,
cigarettes, are such that use of the name SHINNECOCK in
connection therewith will lead purchasers to mistakenly
Ser. Nos. 78918061 and 78918500
13
presume the existence of a commercial connection between
applicant’s cigarettes and the Shinnecock tribe.
The record shows that Indian tribes, in general, are
known to manufacture and market cigarettes. The record
includes printouts of the Internet websites of two Native
American cigarette retailers, “Black Hawk Tobacco” and
“Smokin Joes.” The Black Hawk Tobacco website informs the
public that “[w]e are a Native American owned and operated
company located on Sovereign Native American land selling
Native American made tobacco products to Native Americans
and Non-Native Americans. Because we are located on the
Sovereign Agua Caliente Reservation we can legally sell our
native American made cigarettes and tobacco products
nation-wide.” The Smokin Joes website offers “[p]ure
Indian Cigarettes and all Natural Indian Cigarettes. We
also sell the highest quality Native American Brand
cigarettes, Native American made Cigarettes, Reservation
Cigarettes and More. We are the #1 on-line Indian
Cigarette Source.” The website also informs purchasers
that Smokin Joes sells “Indian Cigarettes straight from the
Indian cigarette reservations.”
Not only are cigarette purchasers aware that Native
American tribes in general manufacture and market
cigarettes, they are aware that Shinnecock Indians in
Ser. Nos. 78918061 and 78918500
14
particular are involved in the marketing of cigarettes.
The Shinnecocks operate nine smoke shops on Long Island,
including three on the reservation. An article in the
March 11, 2000 New York Daily News informs readers:

NEW YORK – There are other ways to save money
on cigarettes than buying them illegally from a
smuggler. One of them is to drive out to the
Shinnecock Indian Reservation in Southampton,
where cigarettes cost about $3 a pack and $28.50
a carton. They’re tax-free and legal. Off the
reservation, cigarettes on Long Island go for as
much as $5 a pack and $41 a carton.
On his way to make a cigarette purchase,
Joseph Sgroi, 46, said he didn’t mind driving
more than an hour from his home in Long Beach, to
the reservation to buy three cartons. “You can’t
beat the prices,” he said.
As a result of last week’s big jump in the
state tax on cigarettes, more smokers like Sgroi
are flocking to the reservation’s three Montauk
Highway smoke shops. The Shinnecock Nation is
one of nine tribes in New York state with Indian
sovereignty. As such, state tax laws aren’t
enforceable on their land.

An article in the July 14, 2004 Providence Journal (RI)
informs readers that “The Shinnecocks operate nine smoke
shops on Long Island…” An article in the November 6, 2006
edition of The New York Times informs readers that “The
tax-free sale of steeply discounted cigarettes keeps the
Shinnecock Indians alive…”.
Based on these and other news articles in the record,
we find that cigarette purchasers are aware that the
Ser. Nos. 78918061 and 78918500
15
Shinnecocks market cigarettes, and that upon encountering
cigarettes sold under applicant’s SHINNECOCK mark they
would mistakenly presume the existence of a commercial
connection between applicant’s cigarettes and the
Shinnecock tribe.
Additionally, there is other wording in applicant’s
mark that would do nothing but reinforce and exacerbate
purchasers’ mistaken presumption that a commercial
connection exists between applicant’s cigarettes and the
Shinnecock tribe. Specifically, the wording MADE UNDER
SOVEREIGN AUTHORITY, when used in connection with the name
SHINNECOCK, obviously would be understood by purchasers to
mean that applicant’s cigarettes are authorized, endorsed
or approved by the Shinnecock tribe. Applicant has stated
(in response to the Trademark Examining Attorney’s inquiry
in her first Office action) that the words SOVEREIGN
AUTHORITY in the mark are intended to refer to God.
However, the evidence of record clearly establishes that,
when used in connection with Indian tribes, the word
SOVEREIGN has a particular meaning and significance,
referring to the sovereign status of the tribal nations
under the laws and Constitution of the United States.
Thus, even if applicant subjectively intends the words
SOVEREIGN AUTHORITY to refer to God, that is not the
Ser. Nos. 78918061 and 78918500
16
meaning that purchasers will attribute to the words when
used in connection with applicant’s cigarettes.
For all of these reasons, we find that the fourth
element of the Section 2(a) refusal has been established.
Applicant does not contend otherwise.
Because all four elements of the refusal have been
established, we conclude that applicant’s mark falsely
suggests a connection with the Shinnecock Indian Nation,
and that the refusal of registration under Section 2(a) is
entirely warranted.
As noted above, applicant has presented no evidence or
argument with respect to the substantive elements of the
Section 2(a) refusal. Instead, applicant has argued at
length that the Office’s refusal to register the mark is
based on racial discrimination, i.e., because applicant is
a Native American. According to applicant, this racial
discrimination violates applicant’s constitutional due
process and equal protection rights under the Fifth
Amendment of the United States Constitution. Applicant
also argues that this alleged racial discrimination by the
Office, an agency of the United States, violates the United
States’ obligations under the United Nations’ International
Convention on the Elimination of All Forms of Racial
Discrimination (CERD).
Ser. Nos. 78918061 and 78918500
17
Applicant bases his racial discrimination claims on
the fact that the Office in the past has issued, to non-
Indians, registrations of marks consisting of or comprising
the names of Indian Tribes or Indian historical personages.
Applicant has submitted copies of the following extant
third-party registrations:
- Reg. No. 1447929, of the mark SHINNECOCK HILLS GOLF
CLUB for country club and restaurant services;
- Reg. No. 2739914, of the mark 1891 SHINNECOCK for
golf clothing and equipment;
- Reg. No. 1663757, of the mark CHEROKEE for cutlery;
- Reg. No. 2706122, of the mark CHEROKEE for sunrooms,
doors, etc.;
- Reg. No. 2881671, of the mark CHEROKEE for horse
trailers;
- Reg. No. 0908927, of the mark CHEROKEE BRAND for
piano wire;
- Reg. No. 2912969, of the mark APACHE for bicycles;
- Reg. No. 0773714, of the mark CHIPPEWA for boots and
shoes;
- Reg. No. 2417630, of the mark TUSCARORA for cigars;
- Reg. No. 2396499, of the mark CAYUGA for fishing
reels;
- Reg. No. 2274143, of the mark GERONIMO for tobacco
leaves;
- Reg. No. 2629289, of the mark GERONIMO for tires;
- Reg. No. 2968623, of the mark CRAZY HORSE for
cigarettes; and
- Reg. No. 2548215, of the mark SACAGAWEA for
commemorative coins.
- Applicant also cites to Reg. No. 2827776, of the
mark SENECA for cigarettes, which issued to the Sac and Fox
nation, not the Seneca tribe.

Applicant has not proven, but we shall assume
arguendo, that the owners of these registrations are non-
Ser. Nos. 78918061 and 78918500
18
Indians and/or that the registrations were issued without
the consent of the tribal entities named in the marks.
Comparing his application to these third-party
registrations, applicant argues that “[i]n the present
case, registration is refused for a mark using the name of
an Indian tribe. The only difference is on the facts,
where the present applicant is an Indian. There is
absolutely no legal basis for this discriminatory
treatment.” (Brief at 12; emphasis in original.)
This argument is unpersuasive. The fact that
applicant is a Native American clearly is not the only
factual difference between applicant’s application and the
third-party registrations. Rather, each of the third-party
registrations covers marks and/or goods which are not the
same as applicant’s. As might be expected in view of
applicant’s failure to even mention the substantive
elements of the Section 2(a) “false suggestion of a
connection” refusal at issue in this case, applicant’s
racial discrimination argument completely disregards the
substantive elements of the refusal. It is entirely
reasonable to assume that these registrations were issued
not because the applicants therein were non-Indians, but
rather because the elements of the Section 2(a) refusal
were not or could not be proven by the Office.
Ser. Nos. 78918061 and 78918500
19
In particular, applicant disregards the fourth
element’s requirement that the refusal must be based on a
consideration of the fame of the name of the person or
institution depicted in the mark as applied to the goods or
services identified in the application or registration.
Otherwise, the effect of the Section 2(a) refusal would be
the grant of an impermissible right in gross to the entity
named in the mark. See University of Notre Dame du Lac v.
J.C. Gourmet Food Imports Co., supra, 217 USPQ at 509.
Except for the four third-party registrations which cover
tobacco products (discussed below), the goods and services
identified in each of the third-party registrations
(including the two SHINNECOCK third-party registrations),
on their face, do not appear to be the types of goods or
services (e.g., piano wire and bicycles) that purchasers
necessarily would associate with the named Indian tribes or
personages. Purchasers therefore would not expect or
mistakenly presume that there was any commercial connection
between the named tribes and the applicants or their goods.
Absent proof of such a mistaken presumption of a
connection, the Section 2(a) “false suggestion of a
connection” refusal could not be maintained by the Office,
regardless of the applicant’s race.
Ser. Nos. 78918061 and 78918500
20
Four of the third-party registrations cited by
applicant do indeed cover the same goods as those
identified in applicant’s application, i.e., tobacco
products. They are registrations of the marks TUSCARORA
for cigars, GERONIMO for tobacco leaves, CRAZY HORSE for
cigarettes, and SENECA for cigarettes. Even as to these
registrations, the race of the applicant is not the only
fact distinguishing applicant’s application from the
registrations. Obviously, the registered marks and
applicant’s mark are different as well. It is likely that
the reason these registrations were issued was that the
Office failed to locate evidence sufficient to establish
all four of the elements of the “false suggestion of a
connection” refusal.
More fundamentally, even if all of the third-party
registrations cited by applicant were issued
inappropriately and should have been refused registration
under Section 2(a), such errors by the Office would not
justify the issuance of a registration to applicant in this
case, where all of the elements of the Section 2(a) refusal
clearly have been established. Although consistency in
examination is the Office’s goal, every application must be
considered on its own merits. See In re Nett Designs, 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). Nor does the
Ser. Nos. 78918061 and 78918500
21
fact that registration to applicant has been refused
notwithstanding the issuance of these other registrations
constitute a denial of applicant’s constitutional rights to
due process and equal protection. As our primary reviewing
court has previously stated:

The fact that, whether because of administrative
error or otherwise, some marks have been
registered even though they may be in violation
of the governing statutory standard does not mean
that the agency must forgo applying that standard
in all other cases. The TTAB’s decision in this
case therefore does not violate the
constitutional principles that Boulevard invokes.

In re Boulevard Entertainment Inc., 334 F.3d 1336, 67
USPQ2d 1475, 1480 (Fed. Cir. 2003). See also In re
Litehouse Inc., 82 USPQ2d 1471 (TTAB 2007).
For all of these reasons, we find that applicant’s
Fifth Amendment due process and equal protection arguments
based on the Office’s alleged racial discrimination against
applicant are unsupported by the facts and that they are
unavailable in any event under In re Boulevard
Entertainment Inc., supra.
Applicant’s reliance on The Convention on the
Elimination of All Forms of Racial Discrimination (CERD),
ratified by the United States in 1994, likewise is
unavailing. First, as noted above, applicant has failed as
Ser. Nos. 78918061 and 78918500
22
a factual matter to establish that the Office’s refusal to
register applicant’s mark is based on racial
discrimination, as contemplated in the CERD or otherwise.
Rather, we find that the refusal is based on the Office’s
proper application of the provisions of Section 2(a) of the
Trademark Act.
In any event and more fundamentally, applicant’s
reliance on the CERD is unavailing because the CERD is not
a self-executing treaty which affords applicant an
independent or direct cause of action here.6 The United
States Senate’s 1994 ratification of the Convention
expressly declared: “The Senate’s advice and consent is
subject to the following declaration: That the United
States declares that the provisions of the Convention are
not self-executing.” The non-self-executing nature of the
CERD has been specifically affirmed by the courts. See,
e.g., Johnson v. Quander, 370 F.Supp.2d 79, 101-102 (D.D.C.
2005)(CERD provisions are not self-executing and thus do
not authorize a private right of action under the CERD),
aff’d 440 F.3d 489 (D.C. Cir.), cert. denied, 127 S.Ct. 103
(2006).

6 Applicant is incorrect in arguing that the United States Senate
is not entitled to declare that a treaty is not self-executing.
See generally In re Rath, 402 F.3d 1207, 74 USPQ2d 1174 (Fed.
Cir. 2005)(Paris Convention not self-executing).

Ser. Nos. 78918061 and 78918500
23
Based on these authorities, we find that the CERD is
not self-executing, and that it affords applicant no
independent basis for challenging the Office’s refusal to
register applicant’s mark.
In summary, we find that the Office has established
all four elements of the Section 2(a) “false suggestion of
a connection” refusal and that Section 2(a) therefore bars
registration of applicant’s marks. We also find that
applicant’s claims of racial discrimination under the U.S.
Constitution and under the CERD are without merit.

Decision: The refusal to register is affirmed with
respect to each of the applications.