THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Mailed:
October 20, 2005
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
INTERNATIONAL ASSOCIATION OF SUFISM
v.
NADER ANGHA
_____
Cancellation No. 92024565
_____
Michael B. Newman, Esq. for International Association of
Sufism.
Joseph D. Lewis of Barnes & Thornburg for Nader Angha.
_____
Before Quinn, Kuhlke and Walsh, Administrative Trademark
Judges.
Opinion by Walsh, Administrative Trademark Judge:
On November 24, 1995, International Association of
Sufism (petitioner) filed a petition to cancel Registration
No. 1652335 owned by Nader Angha (respondent).
The
registration is for the mark MAKTAB TARIGHAT OVEYSSI
SHAHMAGHSOUDI (SCHOOL OF SUFISM), in standard character
form, for “educational and religious publications; namely,
pamphlets, booklets books, manuals and newsletters.”
registration includes the following translation:
The
“The
English translation of the words ‘MAKTAB TARIGHAT’ in the
Cancellation No. 92024565
mark is ‘SCHOOL OF ISLAMIC SUFISM.’”
includes the following disclaimer:
The registration also
“No claim is made to the
exclusive right to use ‘MAKTAB TARIGHAT’ and ‘SCHOOL’ and
‘SUFISM’ apart from the mark as shown.”
The registration
also includes a claim of acquired distinctiveness, in part,
as to the wording “School of Islamic Sufism.”1
The registration issued on July 30, 1991, was renewed
and is active and currently in the first 10-year renewal
term.
The Record
Petitioner indicates that the record in the proceeding
consists of:
the registration file; petitioner’s notice of
reliance covering certain portions of the discovery
deposition of respondent and certain exhibits from the
deposition, and excerpts from 14 publications; respondent’s
testimony on his own behalf; and testimony of five
individuals submitted on behalf of respondent.
Respondent
has not characterized the content of the record, and neither
party has objected to any submission of evidence by the
other party.
In the absence of any objections by either
1
In papers filed March 10, 1989, respondent amended its
underlying application to insert a claim of acquired
distinctiveness. respondent filed a response and a substitute
application at that time. In the response registrant indicated
that it was claiming acquired distinctiveness as to “School of
Islamic Sufism”; in the substitute application registrant claimed
acquired distinctiveness as to “Islamic Sufism” only. The
registration issued with a claim of acquired distinctiveness as
to “School of Islamic Ssufism.” For purposes of this case, we
will recognize the claim in the registration, as issued.
2
Cancellation No. 92024565
party, we will accept all items identified by petitioner as
part of the record and will accord each submission
appropriate weight, if any, in accordance with Trademark
Rule 2.122, 37 C.F.R. § 2.122.
Standing
In the petition, petitioner describes itself as, “a
worldwide membership association of Sufi schools, orders and
students that practice and study Sufism” and adds, “Many of
its members in particular practice and study Islamic
Sufism.”
Petitioner also states in the petition that the
registration, “. . . has placed a cloud on the right of
Petitioner’s member schools and orders to freely (sic) to
identify themselves, where applicable, as “Oveyssi” or
“Shahmaghsoudi . . .”
In its answer respondent asserted an
affirmative defense that petitioner lacked standing, but
respondent has not argued the standing issue in its brief.
Therefore, we conclude that respondent has abandoned its
standing defense, and we further conclude that petitioner
has presented allegations and evidence minimally sufficient
to establish petitioner’s real interest in the case and
standing.2
American Speech-Language-Hearing Assoc. v.
2
With its notice of reliance petitioner has included properly
authenticated letters produced during the discovery deposition of
respondent wherein respondent’s attorneys demand that petitioner
refrain from use of certain elements of respondent’s registered
mark.
3
Cancellation No. 92024565
National Hearing Aid Society, 224 USPQ 798, 801-02 (TTAB
1984).
The Grounds
Petitioner asserts fraud as the ground for
cancellation.
At the outset, we must clarify our
characterization of the ground for cancellation.
In its
brief, under the heading “STATEMENT OF ISSUES,” respondent
states, “The issue presented to the Board is whether
Respondent fraudulently obtained from the United States
Patent & Trademark Office (the ‘Office’) registration of the
trademark MAKTAB TARIGHAT OVEYSSI SHAHMAGHSOUDI (SCHOOL OF
SUFISM)(the ‘Mark’) in reliance upon multiple false and
deceptive statements by Respondent?”
The “Conclusion” to
Petitioner’s brief states, in its entirety, “Petitioner
urges the Board to cancel the registration for the Mark,
because Respondent fraudulently obtained from the Office
registration of the Mark in reliance upon multiple false and
deceptive statements by Respondent.”
These statements, and
the remainder of the brief, which address only the fraud
issue, are sufficient for us to conclude that fraud is the
only ground petitioner has maintained in this proceeding.
References to Other Potential Grounds
For completeness, we will address references in the
petition and petitioner’s brief which potentially identify
additional grounds.
4
Cancellation No. 92024565
In its petition (¶3), petitioner states, “respondent’s
mark is deceptive in that it suggests that its school or
order of Sufism is the only school of Islamic Sufism.”
The
petition (¶4) states further, “Registrant’s mark is
deceptive in that it suggests that its school or order of
Sufism is the only ‘Oveyssi’ school of Sufism and falsely
suggests a connection with Oveys-e Gharan (c. 7th Century).”
The petition (¶5) also states, “Registrant’s mark is
deceptive in that it suggests that its school or order of
Sufism is the only “ShahMaghsoudi” school of Sufism.”
However, petitioner does not argue nor attempt to prove
that MAKTAB TARIGHAT OVEYSSI SHAHMAGHSOUDI (SCHOOL OF
SUFISM) is “deceptive” or “falsely suggests a connection”
within the meaning of Section 2(a) of the Trademark Act, 15
U.S.C. § 1052(a).
In fact, there is no reference to this
statutory section in either the petition or the brief, nor
is there a citation to even a single case in petitioner’s
brief.
Thus, we must look to petitioner’s arguments and
evidence for clarification of the specific legal grounds for
cancellation.
To establish that a mark is “deceptive” a petitioner
must show that the mark misdescribes the goods, that the
relevant public are likely to believe the misrepresentation
and that the misrepresentation will materially affect the
decision to purchase the goods.
5
In re Budge Manufacturing
Cancellation No. 92024565
Co., 8 USPQ2d 1790, 1790 (TTAB 1987).
Petitioner has not
asserted that the mark, or any component of the mark, is
deceptive as applied to the goods identified in the
registration, “educational and religious publications;
namely, pamphlets, booklets, books, manuals and
newsletters.”
Furthermore, petitioner has not presented any
evidence that the relevant public would believe any alleged
misrepresentation, nor any evidence that any such
misrepresentations would materially affect the decision to
purchase the identified goods.
To the extent petitioner even discusses deceptiveness,
petitioner’s apparent point is that the registration would
allegedly deceive people into believing that respondent has
an exclusive right to use individual elements of the mark,
elements it identifies in its petition.
In doing so
petitioner perhaps suggests, however indirectly, that the
mark or portions of the mark are generic or merely
descriptive.
However, neither the petition nor petitioner’s
brief delineate such a claim.
Furthermore, petitioner’s
discussion focuses on individual elements of the mark and
not the mark as a whole in discussing these points.
Likewise, petitioner has failed to assert or
demonstrate a “false connection” under Section 2(a).
In
Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985), the
Board set forth the requirements for maintaining such a
6
Cancellation No. 92024565
claim citing University of Notre Dame du Lac v. J.C. Gourmet
Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983), aff’g 213 USPQ 594 (TTAB 1982).
The Board
stated:
The Board now requires that a plaintiff asserting a
claim that a mark falsely suggests a connection with
persons living or dead, or institutions, demonstrate
(i) that the defendant’s mark is the same or a close
approximation of plaintiff’s previously used name or
identity; (ii) that the mark would be recognized as
such; (iii) that the plaintiff is not connected with
the activities performed by the defendant under the
mark; and (iv) that the plaintiff’s name or identity is
of sufficient fame or reputation that when the
defendant’s mark is used on the goods or services, a
connection with the plaintiff would be presumed.
Id. at 429.
Here, petitioner refers to an alleged false connection
with “Oveys-e Gharan (c. 7th Century).”3
Petitioner has not
made the threshold showing that this name is its “previously
used name or identity.”
Nor has the petitioner met any of
the other requirements to show a false connection.
In sum, petitioner’s evidence and arguments, as
discussed below, focus on allegedly false statements
respondent made to the examining attorney in obtaining the
registration.
Accordingly, the only ground which petitioner
has argued or attempted to prove in this case is fraud and
that is the only ground we have considered here.
3
To the
Petitioner indicates that there are a variety of spellings for
this name including Oveyssi, Oveys, Uwaisi, Uwaysi and al-Waisi,
though neither party has presented explicit, external authority
for this proposition.
7
Cancellation No. 92024565
extent petitioner may have referred to other potential
grounds in its petition, we conclude that petitioner has
either failed to assert and prove the grounds adequately or
abandoned those grounds.
Fraud
A registrant commits fraud by knowingly making a false
statement as to a material fact in conjunction with a
trademark application or registration.
Mister Leonard Inc.
v. Jacques Leonard Couture Inc., 23 USPQ2d 1064, 1065 (TTAB
1992).
Thus the statement in question:
(1) must be false;
(2) must be made with knowledge that it is false; and (3) it
must be material.
Id.
A party asserting fraud also faces a
steep evidentiary burden:
“It thus appears that the very
nature of the charge of fraud requires that it be proven ‘to
the hilt’ with clear and convincing evidence.
There is no
room for speculation, inference or surmise and, obviously,
any doubt must be resolved against the charging party.”
Smith International Inc. v. Olin Corp., 209 USPQ 1033, 1044
(TTAB 1981).
In asserting fraud, petitioner first states, “In a
telephone communication on November 16, 1990 between
Respondent’s attorney and the Office Examiner concerning the
mark’s (sic) application for registration, Petitioner’s
(sic) attorney ‘explained that there are numerous “Sufism”
sects & that this applicant is the head of the only sect
8
Cancellation No. 92024565
that practices Islamic Sufism.’ (Emphasis added).”
Petitioner then adds, “To the contrary, there are at least
hundreds of sects of Sufism worldwide that practice Islamic
Sufism and are considered to be schools of Islamic Sufism.
Respondent’s sect is far from the only sect that practices
Islamic Sufism.”
Petitioner does not refer to any evidence to support
its claim that respondent’s explanation is false.
Petitioner did not take any testimony.
Consequently, there
is no testimony or other admissible evidence even as to the
petitioner’s own activities which purport to prove the
statement false.
Furthermore, even if we had evidence that
this explanation was not true, we have no basis to conclude
that registrant himself believed the explanation to be
false.
That is, we have no basis to conclude that
respondent was not sincere in his belief that his sect is
the only sect which practices Islamic Sufism.
Respondent’s
own testimony provides evidence of his sincere belief in the
truth of the explanation he offered.
Also, petitioner’s
assertion relates to the “worldwide” situation without
indicating what the status is in the United States.
More importantly, any statement relating to the
practice of a particular belief system, by its very nature,
is one which is highly subjective.
There is no objective
evidence of record which clearly contradicts respondent’s
9
Cancellation No. 92024565
explanation.
Lastly we have no basis to conclude that this
statement was material.
of the mark.
“Islamic Sufism” is but one element
It is covered by the claim of acquired
distinctiveness for “School of Islamic Sufism.”
There is no
indication that this statement was material in the examining
attorney’s decision to approve the application.
Accordingly, we conclude that petitioner has failed to
establish fraud based on this statement.
Next petitioner asserts that respondent’s statement
that “’Oveyssi’ ‘refers to Oveys of Gharan, a founder of
this spiritual school of thought.’” is fraudulent.
Petitioner states further, ”But scholars and commentators on
Sufism have uniformly maintained that Oveys never founded a
school or order of Sufism and no one at the time of Oveys
named a school or order after Oveys.
A school identified as
“Oweyssi,” “Uwaissi,” or “Uwaysi” means that the school is a
particular style or form of Sufi school or spiritual path
based on the receipt of spiritual guidance or instruction
from an invisible or physically absent Teacher.”
Petitioner refers to 11 exhibits attached to its notice
of reliance by letter designation in support of this
proposition without saying precisely where in those 11
documents the support resides.
We have reviewed those
documents and can find no basis in the documents to conclude
that respondent has committed fraud.
10
In his testimony
Cancellation No. 92024565
respondent asserts an apparent sincere belief that his sect
traces its lineage to Oveys of Gharan.
The testimony of
respondent’s five other witnesses generally confirms this
position.
Again, petitioner appears to be splitting hairs in
areas, spirituality and religion, where reasonable minds can
and do differ.
Indeed, this is the rule not the exception.
We previously indicated that petitioner has failed in any
attempt to assert a “false connection” with Oweyssi.
We
must also conclude that petitioner has likewise failed to
show any fraud based on respondent’s explanation of the
significance of Oweyssi as used in the mark.
There is no
statement with regard to Oweyssi which is objectively false;
there is no evidence of an intent to deceive; and there is
no evidence that respondent’s statement here was material.
Next petitioner asserts that, “respondent falsely and
deceptively states that ‘ShahMaghsoudi’ refers to the
current master of this school of thought.”
Petitioner
indicates that the named individual had died in 1980, before
the application was filed.4
However, in the telephone
record, dated November 16, 1990, to which petitioner
4
Petitioner also appears to argue here that there are several
schools of Sufism throughout the world that follow the
Shahmaghsoudi school of thought. As noted above, these arguments
suggest a challenge to respondent’s exclusive right to use
SHAHMAGHSOUDI, a claim petitioner has neither explicitly asserted
nor attempted to prove.
11
Cancellation No. 92024565
referred previously, the following explanation from
respondent is recounted, “’Shahmaghsoudi’ did not literally
refer to a living individual.
Putting an ‘i’ on the end of
the name means ‘in the way of.’
By analogy, it would be
like referring to ‘Moses’ as ‘Moses-like’ or in the way of
Moses.”
In his testimony in the case respondent, Nader
Angha, states that Shahmaghsoud is his father and
predecessor as leader of the sect identified by the MAKTAB
TARIGHAT OVEYSSI SHAHMAGHSOUDI (SCHOOL OF SUFISM) mark.
Petitioner does not dispute this fact.
Respondent’s five
witnesses also provide general confirmation of respondent’s
position here.
Accordingly, we conclude that respondent has not
committed fraud with regard to any representations as to the
significance of SHAHMAGHSOUDI.
There is no basis in the
record for us to conclude that respondent’s representations
were false, nor intentionally false, nor material to the
approval of the application.
Lastly, petitioner asserts that respondent committed
fraud by stating that “’tarighat’ directly translates into
‘Sufism.’”
Petitioner explains, “’Tarighat’ is an Arabic
word that literally means ‘path’ or ‘way.’ (See Notice of
Reliance, Exhibits B, D and M)
In a religious or spiritual
context, ‘tarighat’ identifies a particular style or method
12
Cancellation No. 92024565
of a spiritual school or order.
‘Tarighat’ does not mean or
directly translate into ‘Sufism.’”
As noted above, the registration includes the following
translation:
“The English translation of the words ‘MAKTAB
TARIGHAT’ in the mark is ‘SCHOOL OF ISLAMIC SUFISM.’”
We
note further that “MAKTAB TARIGHAT” is disclaimed in the
registration.
On the basis of the disclaimer alone we
conclude that any representations regarding its meaning
could not have been material to the approval of the
application.
Furthermore, the exhibits petitioner references in
support of its position are, at best, ambiguous on the issue
of the accuracy of the translation.
In fact, the referenced
sources may be construed as supporting respondent’s
translation.
For example, Exhibit D, West African Sufi,
states the following in the explanation of the meaning of
“tariqa’ (apparently the equivalent of TARIGHAT):
“The
Arabic word for Sufi order is tariqa, meaning ‘path’ or
‘way.’”
In Exhibit M, The Concise Encyclopedia of Islam,
the discussion of “Tariqah” (apparently another spelling)
ties the term to Sufism.
Lastly, Exhibit B, The Gnosis
Archive, Gnostic Studies on the Web, likewise links TARIQAH
and Sufism.
It begins as follows: “I. TARIQAH. . . . in
Islam ‘the spiritual path,’ also Tasawwuf “Sufism” or
13
Cancellation No. 92024565
‘esotericism’ . . . “5
On the basis of this evidence, we
cannot conclude that the translation respondent provided is
false, nor that respondent provided a false translation
knowingly.
We have already noted that the translation of
this disclaimed term was not material to the approval of the
application.
Accordingly, we conclude that respondent did
not commit fraud in providing the translation of TARIGHAT.
To sum up, in cases where the Board has found fraud
there is generally objective evidence that the statement in
question is false.
Often the registrant admits that the
statement is false, or the record otherwise objectively
establishes that the relevant statement is false.
See,
e.g., Torres v. Cantine Torresella S.r.L., 808 F.2d 46, 1
USPQ2d 1483, 1484-85 (Fed. Cir. 1986); Medinol Ltd. v. Neuro
Vasx Inc., 67 USPQ2d 1205, 1209 (TTAB 2003); First
International Services Corp. v. Chuckles Inc., 5 USPQ2d
1628, 1636 (TTAB 1988).
Here we do not have anything
remotely approaching that kind of objective clarity.
Rather, on this record the allegedly false statements are
5
This document appears to be a copy of a printout from an
Internet web page not related to any printed publication. There
is no testimony to establish its authenticity or reliability.
Consequently, we conclude that this exhibit is not a selfauthenticating printed publication, nor has registrant provided
any independent basis on which to determine its reliability.
Accordingly, we have not accorded it any weight in our decision.
See Raccioppi v. Apogee, Inc., 47 USPQ2d 1368, 1370-71 (TTAB
1998). If we had considered it, it would not be helpful to
petitioner.
14
Cancellation No. 92024565
uniformly credible and made in good faith.
They relate to
highly subjective subject matter which lends itself to
varied interpretations.
The allegedly false statements are
also not material to the approval of the entire mark for
publication and registration.
Therefore, we conclude that
petitioner has failed in all instances to show fraud under
the rigorous standards which apply.
See Smith International
Inc. v. Olin Corp., 209 USPQ at 1044.
Decision:
The petition to cancel is dismissed.
15
