In the first Spiderman movie of the superhero era in which we still find ourselves, J. Jonah Jameson believed he thought of a catchy title for the bad guy. To his assistant, he then said the following declarative: “Call the patent office, copyright the name “Green Goblin.” I want a quarter every time someone says it!”
This line demonstrates a mistake made by many, and it isn’t simply that the Library of Congress rather than the United States Patent and Trademark Office registers copyrights. Instead, it illuminates a general misconception that through intellectual property protection, a common phrase can become the exclusive right of one individual or entity. We see this belief personified in trademarks, when an individual or entity seeks to register a common—and arguably public—phrase. Were such a registration to issue, the holder would have a legal presumption of ownership of the phrase and the exclusive right to use the phrase throughout the United States and any U.S. territory on or in connection with the goods/services listed in its trademark registration certificate.
A search of the USPTO’s Trademark Electronic Search System (TESS) reveals that the mark “BLACK LIVES MATTER” has been applied for thirty times. The Office received its first of these applications in January 2015, and its most recent less than ten days ago. Similarly, the mark “I CAN’T BREATHE” was first applied for in December 2014. See U.S. Trademark Application No. 86479784. Since May 29, 2020, the same phrase or slight alterations thereof have been applied for more than ten additional times, while applicants have applied to register the term “ALL LIVES MATTER” or iterations thereof eighteen times.
Unfortunately for the owners of these applications, all of whom have paid a filing fee of at least $225 USD—and in many instances more—most of the applications are unlikely to register. Here is why . . .
These marks and slogan like them face an uphill battle because the marks fail to function as a trademark or service mark. Instead, these marks merely convey a social and political message. See TMEP §1202.04. The primary purposes of any trademark or service mark is (1) to allow merchants to identify their goods or services and distinguish them from goods manufactured or sold by others, and (2) to allow consumers to distinguish between those goods and services when making a selection. See 15 U.S.C. §1127; TMEP §1202. A term MUST be capable of functioning as a trademark or service mark in this manner to be eligible for registration.
Determining whether a term or slogan functions as a trademark or service mark depends on how it would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d at 1229; In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006); TMEP §1202.04. Slogans or terms that merely convey an informational message are not registerable. In re Eagle Crest, Inc., 96 USPQ2d at 1229 (citing In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999)). The more common a term or slogan is, the less likely the public will be to use it to identify only one source. Accordingly, its trademark value diminishes with every use. See TMEP §1202.04. Because terms like “BLACK LIVES MATTER” are commonly used at protests and similar events to show support of a movement, rather than to identify the source provider, the term is unlikely to be perceived by the public as having source-identifying significance.
Public perception is critical. If consumers see your desired trademark used in everyday speech by a multitude of providers, they are unlikely to perceive the slogan as a trademark indicating a good’s origin. Without consumer perception that the term is a mark capable of identifying source, it fails to function as a trademark or service mark and is thus, unlikely to register.
It is also worth noting that this rule does not merely apply to political phrases. In Trademark Application No. 86763753, the trademark examining attorney reviewing the mark “THANKS MOM I TURNED OUT AWESOME” as applied to coffee mugs found it to be incapable of source-identifying significance and refused registration under this same rule. Why? Because a consumer encountering those words on a coffee mug is not going to think “That mug must be from the ‘Thanks Mom I Turned Out Awesome’ brand,” but would simply understand it to be a common adorning phrase. (At least that was my rational at the time). Further, other ubiquitous phrases like “ONCE A MARINE, ALWAYS A MARINE”, “I ♥ DC”, and “PROUDLY MADE IN THE USA” have all been refused registration for conveying messages other than that of source.
In closing remember to be mindful of the message your mark sends. If individuals are literally walking the streets with signs bearing your desired mark—and they are not referencing your company or brand—save your money. Your attempt to register the term will be unsuccessful, and plenty of non-profits besides the USPTO would really enjoy your contribution.
If you have questions about this or any other intellectual property matter, the attorneys of Brackett & Ellis are happy to help.