In a non-precedential decision1 the Federal Circuit upheld the Trademark Trial and Appeal Board’s (“TTAB”) decision2 affirming that the mark “Everybody vs Racism” is not registrable as it fails to function as a trademark.
As a threshold requirement of registrability, a mark must be able to “identify and distinguish” the goods and services of the applicant from others and “indicate the source” of those goods and services.3 In determining whether a mark functions as a source identifier, the court must focus on how the mark is used in the marketplace and how it is perceived by consumers. Generally, a mark that merely conveys information or a familiar sentiment is unlikely to be perceived by consumers as a source identifier for a particular applicant’s goods and/or services.
GO & Associates, LLC (“GO”) applied to register the mark “Everybody vs Racism” for goods including tote bags, t-shirts, hoodies, tops, bottoms, and headwear, and services comprised of “promoting public interest and awareness of the need for racial reconciliation and encouraging people to know their neighbor and then affect change in their own sphere of influence.”4
The “Everybody vs Racism” mark was refused registration by the United States Patent and Trademark Office (“USPTO”) on the grounds that it was merely “an informational social, political, religious, or similar kind of message” and thus failed to function as a source identifier for GO’s goods and/or services.5 In support of the refusal, the trademark examiner cited dozens of examples of the mark being used in informational ways, including by referees in the National Basketball Association, titles of rap songs, podcasts, church sermons, and YouTube videos, and on various articles of clothing.6
The trademark examiner and TTAB were unpersuaded by GO’s arguments that it uses the mark as a source-identifier while the third party uses identified by the examiner were “merely ornamental” and not trademark use.7 GO also pointed to search engine optimization evidence to allegedly show the mark was “almost never used or searched” before GO began using it in May 2020 and moreover, GO’s successful policing of the mark during the summer of 2020 is what led to a “significant drop in searches.”8 This was unavailing as the trademark examiner and TTAB noted the public use of the mark aligned with the general timeline of the “heated anti-racism protests throughout the nation in the wake of the George Floyd killing.”9
Accordingly, the TTAB upheld the trademark examiners refusal to register the “Everybody vs Racism” mark as allowing such registration “would seriously impeded the heartfelt need of citizens of the country to express that everybody should be against racism.”10
On appeal, the Federal Circuit held that the TTAB’s decision regarding the mark’s failure to function as a source identifier was supported by substantial evidence and thus was affirmed.11 The Court added that since the TTAB properly weighed sufficient evidence regarding how consumers will view the mark, it would not reweigh the evidence as that “is not the role of this court.”12 GO then attempted to raise a constitutional challenge arguing that “[p]er se refusals” of registration based on a finding that the mark merely conveys an informational message, is “content-based discrimination” in violation of the First Amendment.13
Denying GO’s constitutional argument, the Federal Circuit noted that the refusal based on a mark consisting of an informational message was not “per se” but dependent on whether consumers would still perceive the mark as source identifying.14 As such, there is nothing that prohibits a mark containing informational matter from registering, so long as the mark also function to identify a single source of the claimed goods and/or services, which “Everybody vs Racism” fails to do in this case.
The Federal Circuit’s decision is an example of the balancing act between granting exclusivity over a mark to act as an indicator of source, and maintaining freedom for the public to support important causes and societal issues.
The key takeaway is that entrepreneurs and established entities should not adopt trending slogans related to social movements as these terms are not capable of acquiring meaning as a source indicator and therefore cannot function as trademarks or Service marks. While it may be tempting to use a term that is trending as part of a social movement, it will not be possible to have exclusivity over the term and therefore use and profitability will ultimately be short-lived.
Although less relevant, this case also highlights the importance of proper policing efforts by trademark owners. Widespread use by third parties of a mark, especially widespread use that is informational rather than trademark use, will cause the mark to lose its ability to function as a source identifier. Whether a brand owner would be able to properly police the use (of a mark which later becomes a slogan for a social movement) remains to be seen.