Classifications and Practice
Commissioner for Trademarks
P.O. Box 1451
Alexandria, Virginia 22313-1451
We submit this Letter of Protest on behalf of an unincorporated association of Hasidic Jews, members of the â€œBobovâ€ community, headquartered and located primarily in New York State. We respectfully suggest that this Letter of Protest sets forth a prima facie basis for refusal of registration of the above-referenced alleged trademarks, such that publication for opposition without consideration of the issues raised herein would constitute clear error by the PTO.
These applications relate to four alleged trademarks: (a) â€œBOBOV,â€ (b) â€œADâ€™MOR Mâ€™BOBOV,â€ (c) â€œAVâ€™DAK BOBOV,â€ and (d) â€œBOBOVER REBBE.â€ We submit that the foregoing proposed marks are descriptive, incapable of acquiring secondary meaning, and, therefore, unregistrable.
The word â€œBOBOVâ€ is derived from the origins of the â€œBobov Hasidicâ€ community in the town of Bobova, Poland (found at http://en.wikipedia.org/wiki/Bobov, June 21, 2006). In fact, â€œBOBOVâ€ is merely the Yiddish rendering of â€œBobova.â€ We urge the Administrator to decline registration of â€œBOBOVâ€ because â€œBOBOV,â€ the name of the Hasidic dynasty in question and the main element of the majority of the referenced applications, is an unregistrable descriptive term. It has not acquired, and cannot acquire, distinctiveness, given that it describes adherents to a religious way of life and members of a faith community and does not identify a single source of goods or services.
In this regard, and as referenced in the enclosed information, we note that â€œBobover Hasidimâ€ are, by definition, members of the Bobov community. â€œBobover Hasidimâ€ may, during times when there is only one leader of the Bobov Hasidim, mean a follower of that leader, but this need not necessarily be the case. Now, for example, it is not the case, as the Bobover community has been divided into two groups since March 2005, each following a different leader. Yet, all the former followers of the unitary leadership remain, quite literally, â€œBobover Hasidim,â€ or, as they are referred to colloquially, â€œBobovers.â€
Another usage of the term â€œBOBOVâ€ is as a noun, describing â€œBoboversâ€ in the plural. A contemporary example is found in the factual situation described in the enclosed New York Times article, dated March 26, 2005, excerpted here:
The article goes on to make varied descriptive use of the word â€œBOBOV, â€œ without distinguishing as to which claimant to the Bobov leadership the use of the term would follow, to wit:
These usages demonstrate that, like â€œSatmar Hasidimâ€ and â€œAlexander Hasidim,â€ the term â€œBobov Hasidimâ€ is meant to refer to the community of persons associated with â€œBobov,â€ just as the word â€œBOBOVâ€ itself lends similar descriptive meaning to institutions, customs, and other concomitant elements of a given Hasidic groupâ€™s way of life. Indeed, dictionaries utilize these terms as descriptions, not as source-identifying trademarks, as well. Thus, the American Heritage® Dictionary of the English Language defines the term â€œLubavitcherâ€ as â€œA member of a Hasidic community founded in Russia in the late 18th century that stresses the importance of religious study.â€ (See enclosed.) There is no reference in the definition to a â€œsingle source,â€ a particular leader or institution (and indeed Lubavitch Hasidim have split more than once), nor to membership in any particular entity amenable to trademark ownership. Rather, the word defines â€œa . . . community.â€
For this reason, â€œBOBOV,â€ a descriptive, non-distinct term which defines members of the Bobov Hasidic community, should not and cannot be registered as a trademark by any particular person, institution, group, or sub-group within or without the Bobov community. Indeed, while the customs of Bobover Hasidim are not at all a religion separate from so-called ultra-orthodox Judaism as practiced by many non-Bobovers, the rule enunciated by Professor McCarthy at § 9.7 of his definitive trademarks treatise, that â€œThe name of a religion may become an unprotectable generic name of any religion that follows certain principles,â€ clearly applies here, merely substituting â€œsub-group within a religionâ€ for the word â€œreligion.â€
The Acronym Applications
All 25 â€œBOBOVâ€ applications referenced above incorporate the term â€œBOBOV.â€ Nine of them consist only of that term alone. Five of the referenced applications (78622413, â€˜405, â€˜400, â€˜390, and â€˜385), however, add the title â€œAVâ€™DAKâ€ to the term â€œBOBOVâ€ (â€œAVâ€™DAK BOBOVâ€). Similarly, another five (78622375, â€˜367, â€˜364, â€˜358, and â€˜346) add the title â€œADâ€™MORâ€ (â€œADâ€™MOR Mâ€™BOBOVâ€), and yet another five (78622456, â€˜446, â€˜438, â€˜428, and â€˜420) add the title â€œREBBEâ€ (â€œBOBOVER REBBEâ€). We submit that registration should not be granted to these proposed marks because they are descriptive religious titles and are neither amenable to trademark protection nor to secondary meaning.
â€œBOBOV,â€ as explained above, is the Yiddish-language derivative of the name of the city in Poland called â€œBobovaâ€ (in Polish), and is a descriptive term not admitting of registration.
The title â€œAVâ€™DAKâ€ is the English transliteration of a Hebrew-language acronym for a title of a Rabbinic functionary, â€œAv Beis Din, Kâ€™hal,â€ meaning the Chief Justice (literally, Head of Court) of the community/congregation (in this case, of Bobov). As such, it is a Hebrew-language common noun which refers to the chief judicial officer in a community/congregation who is charged with the responsibility of interpreting and administering the tenets of Jewish law in the community/congregation and overseeing a range of other and related religious functions.
Likewise, the title â€œADâ€™MORâ€ is also the English transliteration of a Hebrew-language acronym for another title of a Rabbinic functionary, â€œAdoneinu, Moreinu vâ€™Rabbeinu,â€ meaning, literally, Our Master, Our Teacher, and Our Rabbi. As such, it, too, is a Hebrew-language common noun which refers to, and is associated exclusively with, the head of a community/congregation within the Hasidic branch of the Jewish religious world and denotes a spiritual leader of followers and who personifies great qualities of piety, spirituality, and learning.
Similarly, an alternative appellation for a leader of a Hasidic group (i.e., â€œADâ€™MORâ€), in both the Hebrew and Yiddish languages, is â€œREBBE,â€ and this term, therefore, is an exact English translation.
The terms â€œAVâ€™DAK BOBOV,â€ â€œADâ€™MOR Mâ€™BOBOV,â€ and â€œBOBOVER REBBEâ€ are merely composite phrases which signify and constitute religious titles and functions associated with the religious leaders of the Bobov community and which are no more susceptible to trademark protection than are the descriptive, titular acronyms standing alone.
Attached are a number of articles that discuss these common, descriptive usages, demonstrating that these acronyms have achieved usage in Hebrew as common nouns, specifically titles used for persons. The two Hebrew-language acronyms describe, respectively, any chief judge or any Hasidic rebbe. Being simply descriptive, they cannot in any way add to the descriptive nature of the â€œBOBOVâ€ device itself, any more than the English titles â€œChief Judge,â€ â€œGrand Rabbi,â€ â€œKing,â€ â€œQueen,â€ or â€œPrinceâ€ are amenable to trademark protection or secondary meaning. Quite obviously, the same applies to the title â€œREBBEâ€ itself.
Registration of the proposed marks also should be refused for constitutional reasons. As is evident from the attached articles, the Bobov community has been subject to a schism since March 2005, and all issues between the two groups involved in the schism are currently the subject of proceedings in a Jewish court of law (Beth Din), which is charged with determining all matters in issue, including entitlement to use of the terms which are the subjects of this Letter. Indeed, issues such as these are inherently and quintessentially religious in nature and are only capable of being determined by a religious tribunal. We submit that the Administrator should be loath to permit the Patent and Trademark Office to become embroiled in an internecine controversy that is, in essence, a religious dispute with constitutional overtones.
Given the foregoing, it is submitted as well that the applications should be refused registration because the entire Bobov controversy is enmeshed in First Amendment complications. It is well established that the trade names of religious organizations may be granted trademark protection. TE-TE-MA Truth Foundationâ€”Family of URI, Inc. v. World Church of Creator, 297 F.3d 662 (7th Cir. 2002), cert. denied, 537 U.S. 1111 (2003). Courts deciding subsidiary issues that merely coincide with intramural religious disputes may do so despite the coexistence of such disputes, as long as they are ultimately applying nothing more than â€œâ€™neutral principlesâ€™ of secular law without undue entanglement in issues of religious doctrine.â€ Merkos L’inyonei Chinuch, Inc. v. Otsar Sifrei Lubavitch, Inc., 312 F.3d 94 (2nd Cir. 2002).
Here, however, the PTO is not being asked in any way to decide who owns a given Bobov-associated building, institution, or charity fund. It is simply being asked to decide, based on the thin submissions of the applicant here, â€œWho is â€˜AVâ€™DAK BOBOV,â€™ who is â€˜ADâ€™MOR Mâ€™BOBOV,â€™ and who is the â€˜BOBOVER REBBE?â€™â€ and, more generally, who is entitled to the name â€œBOBOV,â€ and, therefore, ultimately, who is a â€œBOBOVER.â€ Again, quoting Professor McCarthy, â€œit may be an encroachment on religious freedom for a court to deprive a party of trademark rights because it did not conform to certain religious tenets.â€ Id. at 9-18. The PTO should simply not allow itself to be put in the position of enforcer for one side in an internal dispute as to leadership â€“ one which, moreover, is only capable of being decided by a religious tribunal applying religious law – placing dissenting members of an ancient religious group at risk of serious statutory penalties and massive legal fees merely to describe themselves as what they are: Hasidim of â€œBOBOV.â€
The situation presently before the PTO recalls, and has strong analogies in, a dispute over the succession of the late Skolyer Rebbe, following his passing in 1979. In litigation in the Federal District Court, arising under the New York Religious Corporations Law and the New York General Business Law (Congregation Beth Yitzchok v. Briskman, 566 F. Supp. 555 (E.D.N.Y. 1983)), the Court was, as in this case, confronted with issues that were inextricably intertwined with, and dependent upon, the question of who was the successor to the Skolyer Rebbe. As Judge McLaughlin put it:
Such an examination in this case leads ineluctably to the conclusion that resolution of the allegations in the complaint first demands that I determine the proper succession to the post of Skolyer Rebbe. As tempting as that invitation may be, it does not appear to be the proper role of a federal court.
Nor, we would add, is it the role of the Administrator for Trademarks to determine the analogous questions in the case of Bobov. A fortiori, when all the relevant questions are presently being decided in the only tribunal that is capable of deciding them, namely a Jewish court of law (Beth Din). In the Skolyer case, Judge McLaughlin dismissed the proceedings for want of justiciability. The same conclusion should be applied, by analogy, in this instance.
The constitutional principles, underscoring the inadmissibility of involvement in inherently religious issues, were reiterated just a matter of months ago, by the Appellate Division of the Second Department, Supreme Court of New York, in the Matter of Congregation Yetev Lev Dâ€™Satmar, Inc., 2006 NY Slip Op. 05627 (enclosed).
Finally, we submit that the development of the law regarding the use of the names of American Indian tribes as trademarks is instructive herein and further demonstrates why the applications must be refused registration. The Indian Arts and Crafts Act, 25 U.S.C. §§ 305 et seq., forbids selling a good â€œin a manner that falsely suggests it is . . . an Indian product.â€ § 305e(a). The constitutionality of this narrow, remedial legislation, meant to protect consumers at large as well as Native Americans, was recently upheld by the Seventh Circuit Court of Appeals in Native American Arts, Inc. v. The Waldron Corporation, — F.3d —, 2005 WL 475357 (March 2, 2005) (7th Cir.). Significantly, however, Congress saw fit to pass specific legislation authorizing the PTO to address the special situation of Indian tribes, recognizing that the Lanham Act itself did not equip the PTO to enforce false advertising principles regarding Indian tribes â€“ even though the government maintains an official registry of Indian tribes. Needless to say, the U.S. government does not, and constitutionally could not, maintain a list of Hasidic sects by which it could step in to enforce â€œHasidic genuinenessâ€ in the provision of goods and services provided by Hasidic groups.
Even regarding the genuineness of Indian goods, the Lanham Act could not serve as an enforcement mechanism. Congress recognized the need for a special legislative mandate. Yet, in essence, what the applicant here seeks is to make the PTO precisely what Congress recognized it could not be in the case of the Indian tribes: An arbiter of genuineness as to ethnic, cultural, or religious claims. The constitutional barriers to such a scenario are themselves ample reason to deny registration.
An alternative basis for refusal, or at least suspension, of registration is the aforementioned fact that there is now pending litigation in the Supreme Court of the State of New York, Kings County, Index No 12509/05, and, concomitantly, in a Jewish court of law (Beth Din) involving the competing Bobov groups. The existence of this litigation is obviously relevant to the right of the applicant to register the marks in the applications that are the subject of this Letter of Protest because among the subjects of the litigation is who has the right to the very titles which are the proposed marks for which applicant has applied herein.
On May 13, 2005, a hearing was held before the Honorable Herbert Kramer, at which time the parties stipulated to resolve all disputes pertaining to who has the right to the title of Grand Rabbi of Bobov in a Beth Din. (See p. 3 of the May 13, 2005, transcript, a copy of which is attached hereto.) In fact, the parties currently are involved in Beth Din proceedings to decide, inter alia, who has the right to the aforementioned titles, which are the subjects of this Letter, and Judge Kramer has retained ultimate jurisdiction over the matter pursuant to New York Civil Practice Law and Rules Article 75. (See transcript at pp. 9-10.) Accordingly, the pending litigation in New York and in the Beth Din directly affects the applicantâ€™s right to register the marks herein, and, therefore, the registration should be refused or, at least, the application suspended.
For the foregoing reasons, it is respectfully submitted that the Administrator should deny registration to the referenced applications.
Very truly yours,
Ronald D. Coleman