Lebanese Arak Corporation

Trademark Trial and Appeal Board

Mar 4, 2010

No. 77072261 (T.T.A.B. Mar. 4, 2010)

Mailed:
March 4, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Lebanese Arak Corporation
________

Serial No. 77072261
_______

Rafi Ourfalian and Benjamin Aydindzhyan of Ourfalian &
Ourfalian for Lebanese Arak Corporation

David S. Miller, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney)1
_______

Before Rogers, Acting Chief Administrative Trademark Judge,
and Seeherman, Quinn, Mermelstein and Wellington,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Lebanese Arak Corporation, a California corporation,
has appealed from the final refusal of the trademark

1 Three different examining attorneys were involved in examining
the application. In the initial Office action, the examining
attorney did not make any substantive refusals, but required that
applicant submit a translation of the mark and explain whether it
had any significance. In the second Office action, the examining
attorney entered a translation of the mark by examiner’s
amendment. The application was then assigned to a second
examining attorney, who made the refusal that is the subject of
this appeal. The application was assigned to Mr. Miller after
the final refusal issued on April 8, 2008.

THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser No. 77072261
2
examining attorney to register KHORAN in standard
characters as a trademark for “alcoholic beverages, namely
wines.” The application was filed on December 27, 2006,
and is based on use in commerce, with a claim of July 1,
2000 as the date of first use and first use in commerce.
By examiner’s amendment, the following translation
statement was entered into the record: The English
translation of the word KHORAN in the mark is ALTAR.
Registration has been refused pursuant to Section 2(a)
of the Trademark Act, 15 U.S.C. § 1052(a), on the ground
that applicant’s mark is disparaging. In particular, it is
the examining attorney’s position that applicant’s mark,
KHORAN, is the phonetic equivalent of “Koran”; that the
Koran2 is the sacred text of Islam; that the Koran forbids
consumption of alcoholic beverages, including wine; and
therefore that the use of KHORAN for wine is disparaging to
the beliefs of Muslims. Before considering the refusal in
more detail, it is useful to review the structure and
development of Section 2(a) of the Act, for it has
influenced the development of the case law on marks
implicating religious or ethnic sensibilities.

2 The record shows that there are various spellings of “Koran.”
Unless specifically noted herein, we will use the spelling
“Koran” in this opinion.
Ser No. 77072261
3
Section 2(a) contains three parts separated by semi-
colons, but encompasses five grounds for possible refusal
of registration. The first part prohibits registration of
“immoral, deceptive, or scandalous matter.” Deceptiveness,
however, is a separate ground for refusal, involving a
different test from that for determining whether a proposed
mark is immoral or scandalous, two terms that are typically
discussed as though basically synonymous. See In re
McGinley, 660 F.2d 481, 211 USPQ 668 n.6 (CCPA 1981). The
second part of Section 2(a) bars registration of a proposed
mark that falsely suggests a non-existent connection, as
well as registration of matter which “may disparage …
persons, living or dead, institutions, beliefs, or national
symbols, or bring them into contempt, or disrepute.”3
Again, this part involves two separate grounds for refusal
- false suggestion of a connection and disparagement – and
two distinct tests.
The structure of Section 2(a), with various refusals
and, therefore, different tests, interwoven into its
various parts, is the result of its legislative
development. In the Trademark Act of 1905, Section 5(a)
was a simple bar against registration of marks comprising

3 The third part of Section 2(a) bars registration of a
misleading geographical indication for wines or spirits.
Ser No. 77072261
4
“immoral or scandalous matter.” Section 5 of the Act of
1905 became Section 2 of The Trademark Act of 1946, and
that act inserted deceptiveness into the existing
provision, added a semi-colon, and appended what is
currently the second part of Section 2(a). The third part
was added by still later amendment.
It is likely a result of the chronological development
of Section 2(a) that the first reported case dealing with a
mark involving religious sensibilities was decided under
the “immoral or scandalous matter” provision, because the
disparagement provision did not then exist. See In re
Riverbank Canning Company, 95 F.2d 327, 37 USPQ 268 (CCPA
1938) (MADONNA for wine held “scandalous”). Further, the
existence of the Riverbank Canning decision influenced a
later case before the Board. See In re Sociedade Agricola
E. Comerical Dos Vinhos Messias, S.A.R.L., 159 USPQ 275
(TTAB 1968) (MESSIAS held unregistrable for wine and
brandy). The Board specifically noted in that case that
the examiner had made the Section 2(a) refusal relying on
the Riverbank Canning case, which may explain the assertion
of a scandalousness refusal rather than a disparagement
refusal, and the Board, too, stated its reliance on the
earlier CCPA case.
Ser No. 77072261
5
Notwithstanding that Riverbank Canning and various
subsequent Board decisions involving religious
sensibilities discussed scandalousness as the ground for
refusal, likely because of the historical development of
Section 2(a), all such decisions clearly contemplated the
beliefs of particular groups of individuals as critical.
See Riverbank Canning, 37 USPQ at 270: “The Virgin Mary
stands as the highest example of the purity of womanhood,
and the entire Christian world pays homage to her as such.
Her representation in great paintings and sculpture arouses
the religious sentiments of all Christians.” See also, In
re Reemtsma Cigarettenfabriken G.m.b.H., 122 USPQ 339 (TTAB
1959), in which the applicant sought to register SENUSSI
for cigarettes. Because Senussi is the name of a Muslim
sect and the tenets of this sect forbid the use of
cigarettes, the Board affirmed the refusal of registration.
The Board stated that “[t]he 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.” Accord, In re Waughtel, 138 USPQ 594 (TTAB
1963), which reversed a refusal to register AMISH (and the
design of a man in Amish clothing) for cigars because “the
use of the mark for cigars and the like is not an affront
Ser No. 77072261
6
to the followers or adherents of said sect and does not, in
any way, tend to disparage their religious or moral
beliefs.” Further, in In re Hines, 31 USPQ2d 1685, 1687
(TTAB 1994), the Board noted that older reported cases
involving Section 2(a) refusals, although they were made on
the Section 2(a) ground of being scandalous, concerned a
perceived offense to religious sensibilities.4
With the Federal Circuit’s decision in In re Mavety
Media Group, 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925 (Fed.
Cir. 1994), it has become clear that the proper ground for
refusing marks which would offend the sensibilities of an
ethnic or religious group is that the matter is disparaging
to the members of that group, rather than that the matter
is offensive or scandalous. In Mavety, the Federal Circuit
held a mark may be found scandalous only if it is offensive
to a substantial composite of the general public. However,
because many ethnic and religious groups constitute small
minorities of the entire U.S. population, marks that are
offensive only to members of such groups could never be
refused under the “scandalous” ground of refusal under

4 On reconsideration of the Hines decision, 32 USPQ2d 1376 (TTAB
1994),the Board did not retreat from its distinction between
cases involving offense to the public at large and those
involving offense to particular religious sensibilities, although
it found the evidence supporting the refusal was lacking and
therefore resolved its doubt in favor of publishing the mark for
opposition.
Ser No. 77072261
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Section 2(a). The focus of the Board in Reemtsma,
Waughtel, the Hines affirmance, and other cases, on whether
the application of a mark to a product would tend to
disparage the beliefs of the followers of a particular
religion, is an explicit acknowledgement that the proper
focus, when religious beliefs or tenets are involved, is on
the group of persons that adhere to those beliefs or
tenets. As a leading commentator has put it:
[The disparagement bar] differs from
the scandalousness provision, foremost
because there is a particular object of
disparagement, i.e., a person, group,
set of beliefs, institution or symbol,
and the statutory bar depends on the
perspective of the object of
disparagement. In contrast, the
scandalousness provision protects the
public as a whole and the effect of the
trademark is judged from the
perspective of the general public.

1 Jerome Gilson et al., Trademark Protection and Practice
§3.04[6][a][i][B], at 3-122 (December 2003).
The Mavety decision did not purport to extend the
Section 2(a) scandalousness analysis to cases involving
religious or ethnic sensibilities.5 Thus, whatever

5 The discussion of Mavety in the reconsideration of the Hines
decision related only to the sufficiency of the evidence and the
Board’s recognition that Mavety dictates that if there is doubt
about the sufficiency of the evidence to support a Section 2(a)
refusal, then that doubt is to be resolved in favor of the
applicant. Nothing in the Board’s grant of reconsideration
signals that it was adopting scandalousness, and the Mavety focus
on reaction of the general public, as the appropriate refusal
Ser No. 77072261
8
inconsistency or uncertainty may have resulted from
Riverbank Canning and subsequent Board decisions, the
ground for a refusal involving a perceived offense to
religious or ethnic sensibilities is now clearly the ground
of disparagement.6
The determination whether a proposed mark is
disparaging requires application of the following 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; and

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.

when religious or ethnic sensibilities are involved. The
statements in the original affirmance differentiating the two
refusals remain good law.
6 We acknowledge that there may be cases in which even
individuals outside the disparaged group would also find use of a
term for a particular product offensive. Therefore, there could
be circumstances in which the use of a particular term could be
found both disparaging to some and scandalous or immoral to the
public at large. For example, there may be non-Muslims who would
find use of KHORAN for wine offensive. We do not reach that
question, however, as we have no evidence bearing on the point,
and our decision is limited to the ground of disparagement.
Ser No. 77072261
9
In re Heeb Media LLC, 89 USPQ2d 1071, 1074 (TTAB 2008); In
re Squaw Valley Development 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), remanded, 415 F.3d 44, 75 USPQ2d
1525 (D.C. Cir. 2005), on remand, 567 F.Supp.2d 46, 87
USPQ2d 1891 (D.D.C. 2008), aff’d 565 F.3d 880, 90 USPQ2d
1593 (DC Cir. 2009).
There is no real dispute that the Office has met the
burden of proving the second part of the test.
Specifically, the examining attorney has submitted a
significant amount of evidence showing that the Koran is
“the sacred text of Islam, considered by Muslims to contain
the revelations of God to Muhammad,”7 and that Islamic
authorities view alcohol as a prohibited substance.
Applicant does not dispute that this is the case.
Applicant’s only argument, with respect to this prong of
the test, is that “whether the mark comprises of [sic]
disparaging matter is to be ascertained from the standpoint
of not necessarily a majority, but a substantial composite
of the general public.” Brief, p. 6. However, the test
quoted by applicant, for which it cites In re Mavety Media

7 The American Heritage Dictionary of the English Language, 4th
ed. © 2000.
Ser No. 77072261
10
Group, 33 F.3d at 1371, 31 USPQ2d at 1925 (and which case,
in turn, cites In re McGinley, 660 F.2d at 485, 211 USPQ at
673 (CCPA 1981)), refers to the determination of whether a
mark is scandalous, not disparaging. As previously
discussed, whether a proposed mark is disparaging must be
determined from the standpoint of a substantial composite
of the referenced group. In re Heeb Media LLC, 89 USPQ2d
at 1074.
The evidence submitted by the examining attorney in
the case at hand, which shows that drinking alcohol is
considered unacceptable by Muslims, is sufficient to show
that the use of the name of the sacred text of Islam for a
substance prohibited by that religion, indeed, a substance
prohibited by that very text, would be disparaging to
followers of Islam and their beliefs.8
It is in connection with the first prong of the test,
i.e., the likely meaning of the matter in question, that
the real disagreement exists between applicant and the
examining attorney, and between the majority and the

8 For this reason, we disagree with the suggestion by the dissent
that the ground of disparagement is appropriate only if the mark
per se is disparaging, without regard to the goods or services in
connection with which the mark is used. It is clear that when a
product whose use is forbidden among members of a particular
group face use of a term integral to their beliefs or tenets as a
mark for the forbidden product, the absence of offense
attributable to the term per se does not mitigate the substantial
offense among the group whose belief or tenet is disparaged by
the particular use. See Reemtsma, supra.
Ser No. 77072261
11
dissent. The examining attorney, as noted, takes the
position that applicant’s mark, KHORAN, is the phonetic
equivalent of Koran, while applicant asserts that it is a
different word, namely, an Armenian term with the English
translation of “altar.”
The evidence of record shows that the word “Koran”
comes from Arabic. As a transliterated word, the spelling
in English varies. One article states that “Quran is
spelled as Qur’aan, Koran and commonly as Quran.”
www.articlesbase.com. The American Heritage Dictionary,
supra, lists “Qur’an” as a variant form, and states that
the text is also called “Alcoran.” The examining attorney
has made of record numerous submissions in which the Koran
is referred to by variant spellings. Among these
submissions are several personal postings, in the form of
comments or blogs, as well as web articles, in which Koran
is spelled “Khoran.” See, for example:
There is no true alliance with the
Islamic governments because the Khoran
forbids it. …Read this book and you
will be compelled to also read parts of
the Khoran to see why our government’s
policies are leading us into a terrible
trap.
Publisher’s notes on book Princes of
Islam, website headed “Welcome to
C.T.U. Bookstore,” (Conservative
Theological University),
http://97.66.25.67/bookstore/store.php

Ser No. 77072261
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It is forbidden for muslims [sic] to
hurt or kill anyone, according to the
Khoran.
http://messageboard.rediff.com, (letter
posted on a message board)

He says the surgeons are fine, but the
nurses and those involved in aftercare
view painkillers like they do drugs or
alcohol—against the laws of the Khoran.
Live Journal,
http://zainybrain.livejournal.com
(journal entry by Wendy Wheeler about
her dinner with “Jungle Bob”)

In Prager’s view, allowing Ellison to
be sworn in on the Khoran “will
embolden Islamic extremists and make
new ones….”
“Will Samson, On a Journey of Discovery
Toward God, Society and
Sustainability,” Nov. 28, 2008,
http://willzhead.typepad.com

I cringe [sic] anytime I found a Holy
Bible in the drawer of my hotel rooms.
Why not the Khoran, the Taoism of
Buddha, the Torah?
Comment by gingersoul, Dec. 11, 2006 on
article “Religion finds firm footing in
some offices,” SoulCast,
http://soulcast.com

But this points much more at the human
aspect of interpreting what is in the
Khoran.
Post by Sparky on FaithFreedom.org
website

We do not suggest that these uses by individuals show
that “Khoran” is an accepted spelling of “Koran.” However,
the fact that there are recognized variations in the
transliterated spelling of this word, and that some people
Ser No. 77072261
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believe that “Khoran” is an accepted spelling, show that
people viewing the mark KHORAN are likely to understand it
as a variation or misspelling of “Koran.” See In re
Carlson, 91 USPQ2d 1198, 1201 (TTAB 2009) (“We do not mean
to suggest that listings in blogs or even a slang
dictionary show that ‘houzing’ is an accepted alternate
spelling of ‘housing’ or that this spelling is in common
and widespread use. But these uses indicate either that
‘housing’ may be misspelled as ‘houzing’ or that the
writers who deliberately use this spelling view ‘houzing’
as a misspelling or alternate spelling that readers will
immediately understand as ‘housing.’”).
A mere misspelling of a word does not serve to avoid a
finding that it is disparaging. In In re Hines, supra, the
Board did not even discuss the fact that the mark BUDDA
BEACHWEAR and design was a misspelling of Buddha; there was
no suggestion that the misspelling of Buddha avoided the
finding that the mark referred to Buddha. See also, In re
Carlson, 91 USPQ2d at 1200, and cases cited therein (“In
general, a mere misspelling of a word is not sufficient to
change a merely descriptive term into an inherently
distinctive trademark”). The question is whether KHORAN
would be perceived as the word Koran, or whether it would
be understood as a totally different word, i.e., the
Ser No. 77072261
14
Armenian word for “altar”9 or, as the dissent suggests, a
term of unknown meaning.
We find that KHORAN gives the commercial impression
that it is the word Koran, and that the public (other than
Armenian speakers) in general, and Muslim Americans in
particular, would regard the mark as referring to the holy
text of Islam. First, KHORAN can be pronounced identically
to the word “Koran.” Although we note applicant’s argument
that the letter “H” in its mark is not silent, but has a
distinct sound in combination with the letter “K”, it has
long been held that there is no correct pronunciation of a
trademark that is not a recognized English word. Whether
or not KHORAN may be pronounced by an Armenian speaker as
applicant asserts, many Americans, including Muslim
Americans, would pronounce it as “Koran.” This
pronunciation would be particularly troubling if KHORAN
wine were advertised on the radio, where consumers would
not even be aware that applicant’s mark contains an “H.”
Second, because “Koran” has various accepted spellings,
people are likely to regard KHORAN as another variant
spelling, even if not an “official” one. Third, there is

9 No refusal was raised as to whether, if KHORAN were viewed as
“altar,” the mark would be generic, merely descriptive,
deceptively misdescriptive or deceptive as indicating sacramental
wine; therefore, these issues are not before us.

Ser No. 77072261
15
evidence that people do use “Khoran” as a spelling for
“Koran.” Fourth, there is no evidence that people other
than those who speak and understand Armenian are likely to
recognize “Khoran” as the Armenian word for “altar.” In
particular, there is no evidence that Muslim Americans
would be aware of the Armenian meaning of the word.
In determining the first prong of the disparagement
test, the dissent states that one must look to the meaning
of applicant’s mark from the standpoint of the general
public, rather than that of Muslim Americans. For the
reasons discussed above, in this case whether we consider
how the mark would be perceived by Muslim Americans or the
public in general, the result would be the same. However,
we cannot agree with the dissent that we must consider the
mark only from the standpoint of the public at large. We
can envision situations in which, for example, a term or
symbol would be clearly understood by members of a
religious group as being significant in their worship, but
would not be known or understood by the public at large.
We cannot conclude that the prohibition against
registration of disparaging marks would ignore such
situations. The Reemtsma case is an example of this; it is
unlikely that, at the time registration for the mark
Ser No. 77072261
16
SENUSSI was sought, the public in general was aware that
Senussi was the name of a Muslim sect.
This is not to say that a term that otherwise might be
considered disparaging could not also have such a well-
known alternative meaning that, as used in connection with
particular goods or services, that alternative meaning
would be found to be the applicable one. For example, in
In re Over Our Heads Inc., 16 USPQ2d 1653 (TTAB 1990), the
Board found that the mark MOONIES and design (with naked
buttocks substituted for the letters “O”) used for a doll
that moons would be perceived as indicating that the doll
moons, rather than as a reference to members of The
Unification Church. Here, however, the Armenian meaning of
KHORAN would not be known to the vast majority of Americans
and, as discussed, they would view KHORAN as the equivalent
of Koran.
Citing In re Heeb Media, LLC, the dissent notes that
KHORAN should not be considered in the abstract but in
connection with the goods. We agree, and have not reached
our conclusion based on an analysis of the mark in the
abstract. However, we cannot limit our consideration of
the mark to prospective purchasers of wine. Because wine
is a consumer product and is sold to the general public in
retail establishments stocking many types of products, and
Ser No. 77072261
17
because the identification of goods in the application
includes no limitations as to channels of trade in which
the goods are sold or advertised, we must assume that
Muslim Americans would be exposed to the sale and
advertising of the product even if they do not actually buy
or consume wine. We note, in regard to this point
regarding exposure to the products, the article in
“Capitalism Magazine,” www.capmag.com, which explained the
affront perceived by Muslim-American taxi drivers servicing
the Minneapolis airport who were not purchasers of alcohol
but were faced with passengers who possessed visible
packages of duty free alcohol.
The dissent has noted that the first examining
attorney “did not assert a refusal to register under
Section 2(a),” and that this examining attorney accepted
the meaning of the mark put forth by applicant. As noted
in footnote 1, the first two Office actions were by one
examining attorney, with the first action requiring that
the mark be translated as “altar” and the second action
being an examiner’s amendment reflecting applicant’s
compliance with that requirement. In any event, the fact
that one examining attorney was either not aware that
KHORAN could be perceived as KORAN, or was influenced by
Ser No. 77072261
18
the words “Armenian Wine” that appear prominently on the
wine bottle specimen label, is essentially irrelevant.
If applicant were to obtain a registration for its
mark it would not be limited to use of the mark in
conjunction with this trade dress, or in conjunction with
the words “Armenian Wine,” or to any particular rendition
now in use. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842 (Fed. Cir. 2000); see also Trademark Rule
2.52(a), 37 C.F.R. § 2.52(a). Further, applicant could use
the mark with any type of wine, and would not have to
identify its goods as being Armenian wine. Thus, it cannot
be assumed that, because they would have additional
information from applicant’s trade dress, consumers would
understand the mark as an Armenian word, rather than as the
equivalent of “Koran.” And, as discussed above, the wine
could be advertised on the radio, where there would be no
visual cues that the mark is meant to be an Armenian word.
The dissent also contends that the public would not
view KHORAN as the word “Koran” because the Koran prohibits
the use of alcohol. However, this argument actually
supports the position that KHORAN would be perceived as
Koran because it presupposes that those seeing KHORAN on a
bottle of wine will recognize it as the phonetic equivalent
of “Koran.” It is only after such recognition that,
Ser No. 77072261
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according to the dissent, consumers would reason that
KHORAN could not be a reference to the “Koran” because of
that text’s prohibition against the use of alcohol.
Moreover, this argument by the dissent seems to be the
equivalent of saying that because the term is so
disparaging to Muslims and their beliefs, no one would
believe that the term could reference the Koran. While
some people might not believe that a producer of wine would
choose to use the name of the holy text of Islam in a
disparaging manner, they still would understand KHORAN as
“Koran.” For the reasons we have already discussed,
including that KHORAN and “Koran” can be pronounced
identically, and that there are variations in how “Koran”
is spelled, the public is likely to view KHORAN as “Koran,”
even though they consider it to be a disparaging use.
As for the dissent’s comment that there is no apparent
intent by applicant to disparage Muslims or Islam, such
intent is not necessary in order to find that the mark
does, in fact, disparage them or their beliefs. See In re
Heeb Media LLC, 89 USPQ2d at 1077: “The fact that
applicant has good intentions with its use of the term does
Ser No. 77072261
20
not obviate the fact that a substantial composite of the
referenced group find the term objectionable.”10
Accordingly, we conclude that Muslims would find the
mark KHORAN used for wine as disparaging to themselves,
their religion and their beliefs.
We have considered applicant’s arguments based on the
fact that, on reconsideration, the Board in In re Hines
reversed the refusal of registration of BUDDA BEACHWEAR and
the design of a Buddha and vacated its earlier decision
affirming such refusal(see discussion at footnotes 4 and
5). The Board did so in that case because there was no
evidence in the record that Buddhists would find the mark
disparaging, and in light of the Federal Circuit’s decision
in the Mavety case, the Board’s concern was to avoid
interposing its own judgment for that of Buddhists. This
was sufficient to raise doubt as to whether the mark was
disparaging, and in accordance with Board policy, the Board
resolved that doubt in favor of publication of the mark for
opposition.

10 Although the dissent would treat the lack of an overt intent to
disparage as a factor to be considered in the analysis of the
refusal, we note that, in general, lack of a bad intent, or put
another way, innocent adoption, does not avoid a refusal of
registration. For example, lack of an intent to cause confusion
does not avoid a refusal of registration under Section 2(d) of
the Act.
Ser No. 77072261
21
In the present case, however, we have a very different
situation. The record is replete with evidence that
alcohol, including wine, is prohibited by the tenets of
Islam. Therefore, the Board is not in a position in which
it is interposing its own judgment for that of Muslims.
Because we have no doubt both that KHORAN would be
recognized as the name of the holy text of Islam, and that
the use of this term for wine would be disparaging to the
religion and beliefs of Muslim Americans, the Mavety
principle of resolving doubt in favor of publication does
not come into play. In re MBNA Am. Bank, 340 F.3d 1328, 67
USPQ2d 1778 (Fed. Cir. 2003)
Decision: The refusal of registration is affirmed.

Mermelstein and Wellington, Administrative Trademark
Judges, dissenting:

We respectfully dissent from the decision of the
majority that the examining attorney has sustained the
burden of demonstrating that the mark KHORAN, used for
wine, is disparaging to Muslims. In particular, we believe
the majority has misapplied the disparagement test and we
disagree with their determination as to what is the likely
meaning of KHORAN.
At the outset, we note that the Board has acknowledged
previously that decisions as to whether a mark is
Ser No. 77072261
22
scandalous or disparaging can be difficult ones and, at
least with respect to ex parte cases, it is preferable to
resolve doubts in favor of the applicant:
[T]he guidelines for determining whether a mark is
scandalous or disparaging are ‘somewhat vague’ and the
‘determination [of whether] a mark is scandalous [or
disparaging] is necessarily a highly subjective one.’
In re Hershey, 6 USPQ2d 1470, 1471 (TTAB 1988).
Because the guidelines are somewhat vague and because
the determination is so highly subjective, 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 Over Our Heads Inc., 16 USPQ2d 1653 (TTAB 1990)(Board
resolved doubt regarding the scandalous nature of the mark
MOONIES in favor of publication). In In re Mavety Media
Group Ltd., 33 F.3d 1367, 1374, 31 USPQ2d 1923, 1928 (Fed.
Cir. 1994), the Court of Appeals for the Federal Circuit,
our primary reviewing court, expressly approved of the
Board’s approach in In re Over Our Heads Inc. to resolve
doubt in applicant’s favor with the knowledge that any
person who believes he would be damaged by registration of
the mark may bring an opposition or cancellation
proceeding. We have significant doubt in this case as to
whether, based on the current record, applicant’s mark is
Ser No. 77072261
23
disparaging of Muslims and we think the better course is to
allow the mark to be published for opposition.
The majority has properly set forth the two prongs of
the disparagement test; however, we strongly disagree with
the majority’s application of the first prong of the test.
Specifically, we dispute the majority’s contention that the
determination of “what is the likely meaning of the matter
in question” should be made from the perspective of the
disparaged group. Rather, we believe the Board must look
to the general population of the United States and how they
will understand applicant’s mark when it is being used in
connection with the identified goods or services, in this
case wine. It is only after we determine the likely
meaning of applicant’s mark that we consider the second
prong which is from the standpoint of the purported
disparaged group, i.e., “whether that meaning may be
disparaging to a substantial composite of the referenced
group.” In its decision, the majority appears to have
conflated the two prongs and made both determinations from
the standpoint of the purported disparaged group, in this
case Muslims. We believe this approach is incorrect
inasmuch as the test, as enunciated by the majority itself
and used by the Board for many years, does not support such
an interpretation. Moreover, by considering only the
Ser No. 77072261
24
purported disparaged group in determining the likely
meaning of a mark would essentially be “loading the deck”
for purposes of any disparagement test and will lead to
cases where a proposed mark will be found disparaging
despite the fact that most Americans attribute a different
and inoffensive meaning to that mark.
The majority’s interpretation is also a significant
departure from our application of the disparagement test.
We are unaware of any other cases where the Board has
limited the analysis of the likely meaning of a mark by
deciding how only the alleged disparaged group would
understand the mark. To the contrary, our determination of
the likely meaning of an applicant’s mark appears to have
always been from the standpoint of the general public
encountering the mark in connection with the identified
goods or services. For example, in In re Over Our Heads
Inc., 16 USPQ2d 1653 (TTAB 1990) (involving the mark
MOONIES, with the two “O” letters forming a caricature of a
naked buttocks), the Board noted that the term “Moonie(s)”
is a reference to a member of The Unification Church, but
also took into consideration several other possible
meanings of the term, including the act of exposing one’s
buttocks. Ultimately, the Board decided “[w]e believe that
applicant’s mark MOONIES – with its naked buttocks design
Ser No. 77072261
25
and spelled without emphasizing the letter “m” – would,
when used on a doll, most likely be perceived as indicating
that the doll “moons,” and would not be perceived as
referencing members of The Unification Church.” 16 USPQ2d
at 1654. Noticeably absent in this decision is any
consideration of how members of the alleged disparaged
group themselves would perceive the mark. Clearly, had the
Board considered the likely meaning of the mark only from
the standpoint of members of The Unification Church, the
outcome in that case would likely have been different.
In addition to our dispute with the majority’s
application of the first prong of the disparagement test,
we further disagree with the majority because we believe
that most persons encountering applicant’s mark on wine
will not attribute any specific meaning to the mark.
Rather, we find it more likely that the general public will
perceive the mark as designating the source of the goods,
rather than see the mark as a misspelling of the word
“Koran.”
We have considered all of the evidence submitted
during prosecution of the application, including the
submissions showing the Koran being referred to by
different spellings. Among these are several references in
comments or blogs, in which Koran is spelled “Khoran.” At
Ser No. 77072261
26
the same time, we note that the spelling “Khoran” is not
identified in any of the dictionary evidence of record as
one of the usual or accepted spellings for Koran. Rather,
the evidence merely indicates that “Khoran” has been used
by several persons, possibly as a misspelling of Koran.
And, as to the examining attorney’s argument that
applicant’s mark is the phonetic equivalent of “Koran,” we
have often stated that there is no correct pronunciation of
a trademark when the term is not a recognizable English
word. See In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227
(CCPA 1969) and Interlego AG v. Abrams/Gentile Entm’t Inc.,
63 USPQ2d 1862 (TTAB 2002). Here, applicant’s mark begins
with the uncommon consonant combination “Kh,” which may
increase any possible confusion as to the pronunciation.
Nevertheless, it is quite reasonable to assume that
applicant’s mark will, at least for some, be pronounced the
same as or similar to “Koran.”
Also of relevance, there is evidence of record
supporting applicant’s contention that the term “Khoran”
means “altar” in Armenian.11 This evidence includes:

11 The evidence was actually submitted by the initial examining
attorney who did not assert a refusal to register under Section
2(a), but merely required applicant to submit the following
translation of the mark, “The English translation of the word
KHORAN in the mark is ALTAR.” We note that the examining
attorney further required applicant to furnish “advertisements or
promotional materials for the goods”; information regarding
Ser No. 77072261
27
The Armenian Orthodox Church publishes
its official periodical, KHORAN
(Altar), in Armenian, Greek and
English.
www.armenianprelacy.com

The Armenian Church...A Badark
Glossary...
Khoran ----Altar
www.armenianchurch.net

The Armenian word for the altar is
Khoran, which means the tent or
tabernacle where the Ark of the
Covenant was placed, symbolizing the
presence of God...
www.hyeetch.nareg.com

Again, in making the determination as to the likely
meaning of applicant’s mark, we believe the Board should
consider how the general public, not just the alleged
disparaged group, will perceive the mark. Furthermore, the
likely meaning of the mark is not considered in a vacuum,
but in the context of the identified goods, in this case,
wine, as well as the way the mark is used in the
marketplace. See Heeb Media LLC, 89 USPQ2d at 1074 (the
“likely meaning” of an applicant’s mark is determined by
“taking into account the nature of the goods and services
and the manner in which it is used in the marketplace”).
In this regard, the only real evidence of the mark being
used in connection with wine is applicant’s specimen of

whether the mark “has any significance in the alcoholic beverages
trade or industry” or whether the mark “has any geographical
significance, or any meaning in a foreign language....”

Ser No. 77072261
28
use. Although applicant’s particular method of use of its
mark is only relevant to the extent that it shows one of
many possible uses of the mark on or in connection with
wine, we note that there is nothing in the way applicant
uses its mark (as show in the specimen of use) which would
suggest any connection to Islam or its holy text.
There is no dispute that Islamic authorities view
alcoholic beverages, such as wine, as prohibited based on
the Koran and the record is replete with evidence
establishing this. To the extent that the mark should be
considered in the wine marketplace, we find this
prohibition on alcoholic beverages as a factor that may
decrease the likelihood that anyone from the general
public, at least those familiar with the prohibition, would
understand applicant’s mark as a reference to the Koran.
It would be counterintuitive for such persons to associate
applicant’s mark with the holy text prohibiting the goods
being sold under the mark.12 We must also bear in mind that

12 The majority misconstrues such reasoning as the "equivalent of
saying that because the term is so disparaging to Muslims and
their beliefs, no one would believe that the term could reference
the Koran." We are well aware that the crux of the examining
attorney’s argument is that because applicant’s mark is being
used on wine and that alcoholic beverages are forbidden by the
Koran, Muslims will perceive the mark as disparaging.
Nevertheless, and for sake of clarity, we point out that our
determination as to the likely meaning of applicant's mark is not
made under the premise that the term "Koran" is a disparaging
term; indeed, to operate under such a premise would be premature
Ser No. 77072261
29
the evidence showing the spelling “Khoran” to identify the
Koran, was in the context of religion. Thus, that evidence
was presumably limited to those who are more likely
predisposed to perceiving that term as a reference to the
Koran. Put differently, the examining attorney’s evidence
shows “Khoran” being used by a few individuals to reference
the Koran, but it is unclear how well-recognized this
spelling would be out of the context of religion because it
is not a widely-accepted spelling for the Islamic holy
text.
Considering the evidence of record, we believe that
when applicant’s KHORAN mark is heard or seen in connection
with wine, it is more likely that the general public will
not attach any particular meaning to the mark.
Accordingly, we do not believe that the first part of the
disparagement test has been satisfied by the Office and we
would reverse the refusal of registration on that basis.

and unfair to applicant because we would be starting our analysis
by assuming that a term which is similar to applicant's mark is
disparaging, rather than reach that conclusion as a result of our
analysis. Moreover, as we note, there is no evidence in the
record showing the term "Koran" has ever been used by anyone in a
disparaging manner in connection with wine or otherwise. Thus,
when considering how applicant's mark will be understood when
used on wine, we merely find that that those who are familiar
with the Islamic prohibition on alcoholic beverages may be less
likely to associate applicant's mark with the holy scriptures of
Islam.
Ser No. 77072261
30
Inasmuch as we would find that the office has not
satisfied the first prong of the disparagement test, we see
no need to discuss the second part of the test, namely, if
the meaning of applicant’s mark is also a reference to
Muslims and, if so, would it be considered disparaging to a
substantial composite of Muslims. We would be remiss if we
did not further point out that this case essentially
involves an applicant seeking to register a mark that has a
plausible and innocuous meaning, as provided by applicant
and accepted by the first examining attorney, i.e., the
mark is the transliteration of the Armenian term for
“altar.” However, registration is being refused because
the Office believes that the mark is likely to be
understood as a misspelling of “Koran,” which is also a
transliteration and, when used on wine, the mark is
disparaging to Muslims. There is no dispute that the term
“Koran”, by itself and as defined, has no disparaging
meaning or connotation. Moreover, there is absolutely no
evidence in the record showing that applicant or anyone
else has ever used the term “Koran” in a disparaging manner
in connection with wine (or otherwise).13 This case is

13 While we are keenly aware that any resulting registration will
not prevent applicant from changing its advertising or trade
dress, we are satisfied on this record that there is no readily
apparent intention to disparage Muslims or Islam resulting from
the method of display of KHORAN by applicant, nor is there any
Ser No. 77072261
31
somewhat novel because the Office contends that applicant’s
mark takes on a disparaging connotation when used in
connection with wine. This is unlike other disparagement
cases where, at the very least, the marks themselves
arguably conveyed a negative connotation and were therefore
considered to be disparaging. And, in previous cases with
very similar factual scenarios to the matter before us, the
asserted refusal was based under Section 2(a)’s prohibition
against marks containing “scandalous matter,” rather than
the separate and distinct prohibition against “disparaging”
marks.14 This is not a distinction without a difference

overt connection or reference to Islam or the Koran. And, while
the lack of an overt intention to disparage is admittedly not
dispositive, we nonetheless believe it a factor to be considered
in determining the likely impression of the mark.
14 A review of prior Section 2(a) decisions reveals that those
cases with facts most analogous to the matter before us involved
the “scandalous matter” ground for refusal rather than
“disparagement”; in particular, we looked at several cases that
dealt with marks with religious terms that by themselves were not
objectionable, but were refused registration based on a perceived
offense to religious sensibilities due to the nature of the
identified goods. See, e.g., In re Riverbank Canning Co., 95
F.2d 327, 37 USPQ 268, 270 (CCPA 1938)(MADONNA for wine held
“scandalous”); In re Reemtsma Cigarettenfabriken G.m.b.H., 122
USPQ 339 (TTAB 1959)(SENUSSI for cigarettes held “scandalous”
(“Senussi” being the name of a Muslim sect whose adherents are
forbidden the use of cigarettes)); and In re Sociedade Agricola
E. Comerical Dos Vinhos Messias, S.A.R.L., 159 USPQ 275 (TTAB
1968)(MESSIAS for wine and brandy held scandalous). This line of
cases may be distinguished from other cases, such as our decision
in In re Hines where it was the mark itself that was essentially
at issue. In re Hines, 31 USPQ2d 1685 (TTAB 1994), opinion
vacated on reconsideration, 32 USPQ USPQ2d 1376 (TTAB 1994). In
that initial decision (since vacated for other reasons), we
affirmed the disparagement refusal essentially because the mark’s
“depiction of the religious founder [Buddha] in tree-emblazoned
Ser No. 77072261
32
because, as the majority points out, the tests for
determination are clearly different, including whether the
mark is scandalous based on the perceptions of a
substantial composite of the general population or whether
the mark is disparaging to a substantial composite of the
referenced group. Compare, e.g., Mavety, 31 USPQ2d at 1926
(scandalous), with In re Squaw Valley Dev. Co., 80 USPQ2d
1264, 1267 (TTAB 2006) (disparaging).
In any event, we believe that there is significant
doubt as to whether or not the general public is even
likely to equate applicant’s mark, when considered in the
context of wine, with the Islamic holy text. We would
rather choose to resolve this doubt by allowing the mark to
be published for opposition, bearing in mind that any
decision in an ex parte appeal is without prejudice to any
opposition or cancellation which may be filed where the

casual wear, strictly for commercial purposes, is disparaging.”
Id. at 1688. We are not saying a rule has been established that
dictates when either a “scandalous” or “disparaging” refusal is
appropriate, but merely pointing out that what appear to be the
most analogous cases, while older, they involved a scandalous
refusal.
The majority, on the other hand, discusses many of the same
cases and comes to the conclusion that “the ground for refusal
involving a perceived offense to religious or ethnic
sensibilities is now clearly the ground of disparagement.” We
remain unconvinced that the case law leads to such a rule or that
a rule is even necessary.

Ser No. 77072261
33
parties will have an opportunity to fully develop an
evidentiary record and argue the issue.