William B. Ritchie v. Orenthal James Simpson

170 F.3d 1092, 50 U.S.P.Q. 2d (BNA) 1023, 1999 U.S. App. LEXIS 4153

• Court: Court of Appeals for the Federal Circuit
• Decided: March 15, 1999
• Docket: 97-1371 (Opposition 99,845, 100,431, 101,186 and 101,216)
• Status: Published

Opinions

Opinion for the court filed by Circuit Judge PLAGER. Dissenting opinion filed by Circuit Judge NEWMAN.

PLAGER, Circuit Judge.

Applications for federal registration of the trademarks O.J. SIMPSON, O.J., and THE JUICE were filed on behalf of Orenthal James Simpson for use with a broad range of goods, including figurines, trading cards, sportswear, medallions, coins, and prepaid telephone cards. After the marks were approved by an examiner in the United States Patent and Trademark Office (“PTO”), the marks were published in the Official Gazette in accordance with 15 U.S.C. § 1062(a) (1994).

Pursuant to 15 U.S.C. § 1063 (1994), William B. Ritchie filed oppositions to registration of the three marks, asserting that they are not registrable on either of two statutory grounds: first, that the marks are immoral or scandalous matter and should be denied registration under § 2(a) of the Lanham Act, and second, that one of the marks is primarily merely a surname and thus unregistrable under § 2(e)(4) of the Lanham Act. The Trademark Trial and Appeal Board (“Board”) dismissed the oppositions, holding that Mr. Ritchie did not have standing to oppose the registrations.¹

Because the law as properly understood grants standing in an opposition proceeding to a person in Mr. Ritchie’s position, we reverse the decision of the Board and remand the case for further proceedings.

A.

The question in this case is not whether the marks, O.J. SIMPSON, O.JÍ, and THE JUICE, constitute immoral or scandalous matter, thus precluding their registration under the law. Rather, the issue is the narrower one of whether Mr. Ritchie is entitled to come before the Board and raise that question, that is — whether Mr. Ritchie has “standing” to oppose the registration.

The Board answered the question of Mr. Ritchie’s standing in the negative. That answer is in error for two reasons. First, the controlling precedents of this court, as well as the precedents of the Board, are fidly consistent with recognizing that someone in Mr. Ritchie’s position has standing to oppose a registration on the grounds raised here. Second, this court has recently made clear that the Board, in carrying out its duties under the Lanham Act, may not decide whether a registration is scandalous simply by asserting its own views and values. Instead, the Board has a duty to obtain the views of the affected public. Since Mr. Rit-chie alleges that he is such a person, the Board’s refusal to give him a hearing is inconsistent with its duty.

B. Standing to Oppose a Mark

Under § 2 of the Lanham Act, a trademark that comprises immoral, deceptive, or scandalous matter which may disparage persons or beliefs is not entitled to registration by the PTO:

§ 2. Trademarks registrable on principal register

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—

(a) Consists of or comprises immoral, deceptive, or scandalous 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; ....

15 U.S.C. § 1052(a) (1994). Whether a mark comprises immoral and scandalous matter is to be ascertained in the context of contemporary attitudes, and the relevant viewpoint is not necessarily that of a majority of the general public, but of a “substantial composite.” In re Mavety Media Group Ltd., 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925-26 (Fed.Cir.1994).

This court has made it clear that the officials of the PTO may not readily assume, without more, that they know the views of a substantial composite of the public. See id. In this light, we have commended the practice of resolving the issue of whether a mark comprises scandalous matter by first permitting the mark to pass for publication, and then allowing interested members of a composite of the general public who consider the mark to be scandalous to bring opposition proceedings. See id. at 1374, 33 F.3d 1367, 31 USPQ2d at 1928. By so doing, the PTO avoids the risk of pre-judging public attitudes toward a proposed registration based on ad hoe responses by government officials, while at the same time affording the affected public an opportunity to effectively participate in the question of whether the registration is proper. See id. at 1374, 33 F.3d 1367, 31 USPQ2d at 1928. Thus, the policy behind the procedure for determining whether a mark is scandalous encourages, if not requires, participation by members of the general public who seek to participate through opposition proceedings.

In courts created pursuant to Article III of the United States Constitution, a plaintiff must make out a “case or controversy” between himself and a defendant to have standing. See Warth v. Seldin, 422 U.S. 490, 498-99, 95 S.Ct. 2197, 45 L.Ed.2d 343 (1975). However, “case” and “controversy” restrictions for standing do not apply to matters before administrative agencies and boards, such as the PTO. See, e.g., California Ass’n of Physically Handicapped, Inc. v. FCC, 778 F.2d 823, 826 n. 8 (D.C.Cir.1985) (“The Article III restrictions under which this court operates do not, of course, apply to the FCC. The Commission may choose to allow persons without Article III ‘standing¹ to participate in FCC proceedings.”); Ecee, Inc. v. Federal Energy Regulatory Comm’n, 645 F.2d 339, 349-50 (5th Cir.1981) (“Administrative adjudications, however, are not an article III proceeding to which either the ‘case or controversy’ or prudential standing requirements apply; within their legislative mandates, agencies are free to hear actions brought by parties who might be without standing if the same issues happened to be before a federal court.”); see also 13A Charles A. Wright, Arthur R. Miller, and Edward H. Cooper, Federal Practice and Procedure, § 3531.13, at 80 (1984 & Supp. 1997) (“Administrative agencies are not established under Article III and should not be bound by judicial rules of standing in determining what parties to admit to adjudicatory or rulemaking proceedings, any more than they are bound by other judicial rules of procedure.”).

Thus, the starting point for a standing determination for a litigant before an administrative agency is not Article III, but is the statute that confers standing before that agency. In the case at hand, the starting point for the standing determination of the opposer is § 13 of the Lanham Act, which provides:

Any person who believes that he would be damaged by the registration of a mark upon the principal register may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor....

15 U.S.C. § 1063.

Section 13 of the Lanham Act establishes a broad class of persons who are proper oppo-sers; by its terms the statute only requires that a person have a belief that he would suffer some kind of damage if the mark is registered. However, in addition to meeting the broad requirements of § 13, an opposer must meet two judicially-created requirements in order to have standing — the oppo-ser must have a “real interest” in the proceedings and must have a “reasonable” basis for his belief of damage.

1. The “Real Interest” Test

Since the days of our predecessor court, an opposer has been required to show that he has a “real interest” in the outcome of a proceeding in order to have standing. See, e.g., Universal Oil Prod. Co. v. Rexall Drug & Chem. Co., 59 C.C.P.A. 1120, 463 F.2d 1122, 1123, 174 USPQ 458, 459 (C.C.P.A1972) (“Standing, within the meaning of § 13, is found when the opposer establishes a real interest in the proceeding.” (internal citation omitted)); Tanners’ Council of Am., Inc. v. Gary Indus. Inc., 58 C.C.P.A 1201, 440 F.2d 1404, 1406, 169 USPQ 608, 609 (C.C.P.A.1971) (“[A]n opposition may be filed by anyone having a real interest.”). This “real interest” requirement stems from a policy of preventing “mere intermeddlers” who do not raise a real controversy from bringing oppositions or cancellation proceedings in the PTO. See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1028, 213 USPQ 185, 189 (C.C.P.A.1982); see also Tanners’ Council, 440 F.2d at 1406, 169 USPQ at 609; Singer Mfg. Co. v. Birginal-Bigsby Corp., 50 C.C.P.A. 1380, 319 F.2d 273, 276-77, 138 USPQ 63, 66 (C.C.P.A.1963) (An opposer who was not an intermeddler was permitted to oppose a mark.).² Pursuant to the “real interest” requirement, to have standing an opposer to a registration is required to have a legitimate personal interest in the opposition. See Lipton, 670 F.2d at 1029, 213 USPQ at 189. In other words, the opposer must have a direct and personal stake in the outcome of the opposition.

The Board placed an overly constrictive interpretation on what constitutes a “real interest.” According to the Board, a person may only have a “real interest” if he or she has “a personal interest in the proceeding beyond that of the general public.” Ritchie, 41 USPQ2d at 1861 (emphasis added). The Board supported its interpretation of the “real interest” test by citing Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed.Cir.1987), a case concerning a trade association’s standing to oppose a mark. See Ritchie, 41 USPQ2d at 1861. In Jewelers, 823 F.2d at 492-93, 2 USPQ2d at 2022-23, the “beyond that of the general public” language was paraphrased from languáge from Lipton, 670 F.2d at 1028, 213 USPQ at 188, which itself took out of context language in Sierra Club v. Morton, 405 U.S. 727, 92 S.Ct. 1361, 31 L.Ed.2d 636 (1972).

In Sierra Club, the Supreme Court addressed the issue of whether an interest group that did not allege any injury to its members had standing to prevent a government agency from issuing permits to construct a resort in a national forest. See id. The Sierra Club plaintiffs had brought a test case to ascertain whether environmental organizations could represent the public interest without alleging any particular direct interest by its members in the subject matter of the litigation. The Supreme Court said no.

However, despite its holding that an interest group, as such, did not have standing, the Supreme Court emphasized that the categories of injury that establish standing for an individual plaintiff are not limited to injuries that are distinguishable from those suffered by the public:

The trend of cases arising under the APA and other statutes authorizing judicial review of federal agency action has been toward recognizing that injuries other than economic harm are sufficient to bring a person within the meaning of the statutory language, and toward discarding the notion that an injury that is widely shared is ipso facto not an injury sufficient to provide the basis far judicial review.

Sierra Club, 405 U.S. at 738, 92 S.Ct. 1361 (emphasis added). Furthermore, the Court .noted that the fact that particular interests are shared by the many rather than the few does not make them less deserving of legal protection through the judicial process. See id. at 734, 92 S.Ct. 1361. Thus, instead of requiring a party to distinguish his injury from that of a large section of the public, the Court only required that the party seeking review must, himself, be among the injured. See id. at 735, 738, 92 S.Ct. 1361.

Clearly, the phrase in Lipton that suggests a requirement of establishing an interest different from that of the general public is contrary to the Supreme Court’s view expressed in Sierra Club, which discourages such a comparison. Furthermore, although the “beyond that of the general public” test for interest level was mentioned in passing in Lipton, our predecessor court did not actually compare the interest of the petitioner to that of the general public. See Lipton, 670 F.2d at 1028-30, 213 USPQ at 189-90. Instead, our predecessor court discussed the importance of showing a “legitimate personal interest” for establishing standing and emphasized that the Lanham Act grants standing to a broad class of people. Id. at 1028-29, 670 F.2d 1024, 213 USPQ at 189.

Similarly, in Jewelers this court mentioned the personal interest “beyond that of the general public” test, but did not apply it. See Jewelers, 823 F.2d at 493-494,2 USPQ2d at 2023-24. Instead, this court emphasized that to demonstrate a “real interest,” an opposer must show a direct injury to himself. See id. at 493, 823 F.2d 490, 2 USPQ2d at 2023-24. Thus, the personal interest “beyond that of the general public” test was merely mentioned in the dicta of Jewelers and Upton, but was not actually applied in those cases.

The dissent cites additional cases all of which simply repeat in various contexts the recognized requirement that standing in a Lanham Act opposition requires a real interest. For instance, the dissent cites United Shoe Mach. Corp. v. Campo Shoe Mach. Corp., a case in which the court phrased the real interest test as requiring that the oppo-ser “must have a greater interest than a member of the general public who by such registration suffers no invasion of his rights and privileges.” 56 F.2d 292, 295, 19 C.C.P.A 1009 (C.C.P.A.1932) (emphasis added). As the United Shoe case illustrates, the statement that an opposer must have an interest greater than the general public meant exactly that - simply being a member of the general public, with no particular interest in or without alleging any interest that might be affected by the registration, was insufficient. The statements in these cases, mostly dicta since the cases typically involved direct commercial interests, merely repeat what was already written.

In no case has this court ever held that one must have a specific commercial interest, not shared by the general public, in order to have standing as an opposer. Nor have we ever held that being a member of a group with many members is itself disqualifying. The crux of the matter is not how many others share one’s belief that one will be damaged by the registration, but whether that belief is reasonable and reflects a real interest in the issue. See 15 U.S.C. § 1063.

The Board itself has recognized that standing may be granted to members of a group who make up more than half of the general population. In Bromberg v. Carmel Self Service, Inc., 198 USPQ 176 (Trademark Tr. & App. Bd.1978), the Board granted standing to two persons who were members of the largest segment of the general public, women. The registration at issue was for the mark, ONLY A BREAST IN THE MOUTH IS BETTER THAN A LEG IN THE HAND, for restaurant services. See id. at 177. Two women, members of the general public, brought an opposition on the ground that they believed that they would be damaged and defamed by the registration of the mark. See id. The opposers alleged that the mark disparaged women as a class, and filed affidavits from various women’s groups in support. See id.

Over the registrant’s objection, the oppo-sers were granted standing. The Board noted that neither the statutes nor the Board’s practice permitted class actions. See id. at 178. Although women as a class could not bring an opposition, an individual member of the group or a group of individuals could bring such an action. See id. The two women were held to be within the zone of those with a real interest in the registration. See id. at 179.

In his notice of opposition against the marks at issue, Mr. Ritchie alleged, inter alia, that he would be damaged by the registration of the marks because the marks disparage his values, especially those values relating to his family. In addition, in his notice of opposition, Mr. Ritchie described himself as a “family man” who believes that the “sanctity of marriage requires a husband and wife who love and nurture one another,” and as a member of a group that could be potentially damaged by marks that allegedly are synonymous with wife-beater and wife-murderer. Furthermore, Mr. Ritchie alleged that the marks are scandalous because they would “attempt to justify physical violence against women.”

It would be inconsistent to deny standing to persons in a situation similar to that in Bromberg who happen to be members of a different general group, on the grounds that their concerns are widely shared. The Board erred by requiring the opposer in this case to somehow show that his interest is not shared by any substantial part of the general population. On the contrary, the purpose of the opposition proceeding is to establish what a substantial composite of the general public believes. The limitation placed upon standing in this case by the Board undermines this very purpose.

For purposes of ruling on a motion to dismiss for want of standing, a reviewing court must accept as true all well-pled and material allegations of the complaint, and must construe the complaint in favor of the complaining party. See Jewelers, 823 F.2d at 492, 2 USPQ2d at 2022; Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 1320, 217 USPQ 641, 644 (Fed.Cir.1983). Therefore, we must accept as true Mr. Ritchie’s belief in a loving and nurturing relationship between husband and wife and the allegation that the marks are synonymous with wife-beater and wife-murderer. Given those assumptions, the potential injury sustained by Mr. Ritchie if the mark is registered is the disparagement of his alleged belief in a loving and nurturing relationship between husband and wife. Thus, Mr. Ritchie, himself, would suffer an injury — disparagement.

We hold that Mr. Ritchie has a real interest, a personal stake, in the outcome of the proceeding and is more than a mere in-termeddler and that the fact that his concerns are shared by a large number of people, perhaps even the vast majority of the American public, is in no sense a disqualification of his right to oppose the registration.

2. “Reasonable” Belief of Damage

With regard to the question of belief of damage, the Board in Bromberg, after finding that the opposers otherwise had standing, simply concluded that: “Section 13 requires only that an opposer believe that it would be damaged. Establishing such damage is a matter for proof.” Bromberg, 198 USPQ at 179. However, our precedents suggest something more — that the “belief of damage” required by § 13 of the Lanham Act is more than a subjective belief. See Universal Oil, 463 F.2d at 1124, 174 USPQ at 459-60. The belief must have a “reasonable basis in fact.” Id.

For standing purposes, the reasonableness of an opposer’s basis for his belief of damage may be shown in several ways. For instance, if an opposer alleges that he possesses a trait or characteristic that is clearly and directly implicated by the proposed trademark, the requisite level of “reasonableness” may be shown. Thus, women, all of whom possessed the traits which were asserted to have been brought into disrepute by the mark at issue in the Bromberg case, ONLY A BREAST IN THE MOUTH IS BETTER THAN A LEG IN THE HAND, would by definition establish the reasonableness of their belief of damage. Similarly, Native Americans who possessed the trait which was directly implicated in the proposed mark, REDSKINS, as was the case in Harjo v. Pro Football Inc., 30 USPQ2d 1828 (Trademark Tr. & App. Bd.1994), would also establish the reasonableness of their belief of damage. Thus, one method of establishing the reasonableness of belief of damage for purposes of standing is for the opposer to allege he possesses a trait or characteristic that is clearly and directly implicated in the proposed mark.

Recognizing that marks may be offensive to a substantial composite of the public even if they do not implicate particular traits or characteristics, another means that may be used to demonstrate the reasonableness of the opposer’s belief of damage is to allege that others also share the same belief of harm from the proposed trademark. For standing purposes, the facts asserted by an opposer need not prove his case on the merits, but should be sufficient to show that the opposer is not alone in his belief of damage, i.e., the belief is not simply the opposer’s subjective view. This evidence may be in the form of surveys or petitions. In addition, affidavits from public interest groups representing people who allegedly share the damage caused by the mark may also supply this objective evidence.

In the case at hand, Mr. Ritchie alleges that the marks possess a connotation such that the marks are offensive to him as a Christian, family man. With regard to evidence of a trait or characteristic that is clearly and directly implicated by the marks at issue, we do not see that as the same kind of immutable trait or characteristic similar to that of women or Native Americans. Therefore, in order to show reasonableness of his belief of damage, Mr. Ritchie must allege other facts establishing that his belief is other than subjective.

In his notice of opposition, at paragraph eight, Mr. Ritchie alleges that he has obtained petitions signed by people from all over the United States who agree with him that the marks at issue are scandalous, denigrate their values, encourage spousal abuse and minimize the problem of domestic violence. Again, for purposes of the motion to dismiss on the pleadings for lack of standing, we accept as true all well-pled allegations. Those allegations are more than sufficient to establish that he has objective proof that he is not alone in believing that he would be damaged if the marks were registered. Therefore, Mr. Ritchie’s belief of damage, for purposes of the motion, has a reasonable basis in fact.

The dissent misconstrues the issue as being one of the morals of the applicant. Mr. Simpson’s morals are not the issue in this proceeding. The ultimate question the PTO must decide is whether the use of O.J. SIMPSON, O.J., and THE JUICE on a broad range of goods in the public market place “comprises immoral, deceptive, or scandalous matter which may disparage ... beliefs ... or bring them into ... disrepute.”³ See 15 U.S.C. § 1052(a). This is a question of public perception, not private morals or even private conduct. Since the issue is one of public perception, the perception of a “substantial composite” of the public, and since Mr. Ritchie properly alleges both a real interest and a reasonable shared belief on behalf of himself and others, the dissent’s repeated concern with what may be seen as the personal offensiveness of Mr. Simpson is beside the point.

The dissent also expresses at some length concerns about Mr. Simpson’s First Amendment rights. The dissent fails to understand that the 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.

Be that as it may, the Constitutional issue has not been raised or considered below, nor has it been briefed or argued before this court. Congress has chosen to draw a line making certain offensive trademarks non-registrable under federal law. Until such time as the constitutionality of these Lanham Act provisions is challenged and found wanting, our job is to apply the law as it is written.

Mr. Ritchie’s pleadings demonstrate the required “real interest” in the outcome of the opposition, and that his “belief of damage” has a reasonable basis in fact. Thus, it was erroneous to dismiss Mr. Ritchie’s opposition. Of course, a petitioner’s allegations alone do not conclusively establish standing. If challenged, the facts alleged which establish standing are part of the petitioner’s case, and, as we said in Lipton, must be affirmatively proved. Lipton, 670 F.2d at 1028.

CONCLUSION

We reverse the Board’s decision to dismiss Mr. Ritchie’s opposition and remand the case for further proceedings.

COSTS.

Each party to bear its own costs.

REVERSED AND REMANDED.

1 . Ritchie v. Simpson, 41 USPQ2d 1859, 1996 WL 806680 (Trademark Tr. & App. Bd.1997).

2 . Although the specific issue in Lipton was a standing determination for a cancellation proceeding pursuant to § 14 of the Lanham Act, due to the linguistic and functional similarities between the opposition and cancellation provisions, respectively §§ 13 and 14 of the Lanham Act, we construe the requirements of those two sections of the Lanham Act consistently. See Young v. AGB Corp., 152 F.3d 1377, 1380, 47 USPQ2d 1752, 1755 (Fed.Cir.1998).

3 . Mr. Ritchie has also raised the question of whether one of the marks is primarily a surname, and thus unregistrable.