The Federal Circuit affirmed the Trademark Trial and Appeal Board (hereinafter “the Board”) decision to refuse registration of the marks, SHINNECOCK BRAND FULL FLAVOR and SHINNECOCK BRAND LIGHTS, for cigarettes on the ground that the marks falsely suggested a connection with the Shinnecock Indian Nation, which falls within the meaning of “institution” under 15 U.S.C. § 1052(a).

The Applicant, Jonathan K. Smith, a U.S. citizen and member of the Shinnecock Indian Nation and sole proprietor of Shinnecock Smoke Shop, filed two trademark applications with the United States Patent and Trademark Office (USPTO), seeking to register the marks. The Trademark Examining Attorney refused to register the proposed marks under 15 U.S.C. § 1052(a) as falsely suggest a connection to a non-sponsoring entity. 15 U.S.C. § 1052(a) protects against marks that "falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols." On appeal, Smith did not contest the false suggestion of a connection to the Shinnecock Indian Nation. He instead argued that the Shinnecock Indian Nation is not an “institution” under Section 2(a) of the Lanham Act.

 
Smith also alleged that the denial of his marks and the grant of supposedly similar marks showed racial discrimination that violated the Due Process and Equal Protection clauses of the Fifth Amendment to the United States Constitution and the United States’ treaty obligations under the United Nations’ International Convention on the Elimination of All Forms of Racial Discrimination.

 
In construing the statute, the Federal Circuit looked at the plain meaning of the word “institution” and construed it to mean “an established organization,” where an “organization” is a “body of persons…formed for a common purpose.” Black’s Law Dictionary 813, 1133 (8th ed. 2004). The Federal Circuit also relied on prior Board precedent that included Indian tribes under the protection of Section 2(a). Both of these considerations led the Federal Circuit to conclude that the Shinnecock Indian Nation is an “institution” under Section 2(a).

 
Smith also alleged that the Examining Attorney failed to argue that the Shinnecock Indian Nation was not an “institution,” and only argued that it was not a “person” under Section 2(a). The Federal Circuit disagreed and ruled that even though the Examining Attorney focused on characterizing the Shinnecock Indian Nation as a “juristic person,” the terms “person”, “juristic person”, and “institution” all have the same meaning under 15 U.S.C. § 1052(a). Further, the Federal Circuit, citing the Smith’s own brief, believed that the he understood the Examining Attorney's position and was aware that the term "institution" was at issue.

 
With regard to the Smith’s contention that the refusal to register his marks showed a pattern of racial discrimination in violation of the Due Process and Equal Protection clauses of the Fifth Amendment to the United States Constitution, the Federal Circuit held that since Smith was provided a full opportunity to prosecute his application and appeal the rejection, there was no due process violation and the allegations were without merit. The court posited that even if Smith’s allegations of discrimination were true, the Board’s and Examining Attorney’s reasons for denying the registration were still legitimate, since the marks did suggest a false connection to the Shinnecock Indian Nation. Finally, Smith’s arguments that other marks with references to Indian tribes were improperly registered were unsupported assumptions, as the marks had entirely reasonable explanations for their legitimate registration.