Federal Circuit cements threshold between sentiment and source identification in registration refusal

Addressing whether ‘everybody vs racism’ was registrable, the US Court of Appeals for the Federal Circuit has affirmed the TTAB’s final refusal to register the mark because it failed to function as a source identifier (GO & Associates LLC, case 22/1961, 22 January 2024, Lourie, Reyna, Hughes, JJ).

Case details

On 2 June 2020, GO & Associates filed a trademark application seeking registration on the principal register for ‘everybody vs racism’. The mark was supposed to identify GO’s goods and services as “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”.

In a non-final office action, the examining attorney refused to register the mark, asserting that it failed to function as a source identifier for GO’s goods and services. They noted that the mark “merely convey[ed] support of, admiration for, or affiliation with the ideals conveyed by the message”.

The examiner presented examples of the mark’s use in informative settings, such as:

• by referees in the National Basketball Association;
• in YouTube videos;
• on clothing; and
• in titles of rap songs, podcasts and church sermons.

Although GO presented evidence that the mark had hardly been used or searched for prior to its use in May 2020, the examining attorney proceeded to reject the application.

The examiner found that “the ornamental uses of the mark only reinforced the fact that consumers would likely view the mark as a sentiment rather than a source”. They also noted that the applicant’s first use of the mark coincided with the “general timeline of the heated anti-racism protests throughout the nation in the wake of the George Floyd killing”. GO appealed to the TTAB.

The appeal

The board affirmed the examiner’s refusal to register the mark, finding:

that the record as a whole show[ed] wide use of the proposed mark in a non-trademark manner to consistently convey an informational, anti-racist message to the public, as opposed to a source identifier of GO’s goods and services.

GO appealed to the Federal Circuit.

Affirming the board’s decision, the Federal Circuit emphasised that for the issuance of a mark under the Lanham Act, it must identify its source to the public and distinguish that source from others.

The court noted that whether a mark is source-identifying depends on “how the mark is used in the marketplace and how consumers perceive it”. In particular, the USPTO prohibits registering marks that it calls “informational matter”. This doctrine applies to “slogans, terms, and phrases used by the public to convey familiar sentiments, because consumers are unlikely to perceive the matter as a trademark or service mark for any goods and services”.

Key findings

Reviewing the TTAB’s findings for substantial evidence, the court found that the board properly weighed the evidence of substantial use of ‘everybody vs racism’ in music, podcasts and YouTube videos and by organisations that fight racism. GO did not attempt to contest that any of these third-party uses were trademark uses attributable to GO.

GO also argued that “refusals based on the Informational Matter Doctrine are unconstitutional because they involve [] content-based discrimination that is not justified by either a compelling or substantial government interest”. The Federal Circuit rejected this argument, stating that a mark containing informational matter is not rejected per se. As long as a mark identifies a commercial source, it will not be rejected under the informational matter doctrine.