Friday, April 22, 2022

"EVERYBODY VS RACISM" Fails to Function as a Source Indicator for Bags, Clothing, and Public Interest Services, Says TTAB

The Board upheld a refusal to register the proposed mark EVERYBODY VS RACISM for tote bags and various clothing items, and for the services 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," finding that the phrase fails to function as a mark under Sections 1, 2, 3, and 45 of the Trademark Act. The Board ruled that the proposed mark "would be perceived by consumers as a widely used social and political message and therefore merely informational in nature, as opposed to a source indicator of Applicant's goods and services." In re GO & Associates, LLC, Serial No. 88944728 (April 20, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Board considered applicant's specimens of use (one of which is shown above), third-party uses of the phrase on website and social media, in editorials, YouTube videos, and media stories, and in song titles and podcasts. This "anti-racism sentiment is reflected in some of the information provided in connection with [those] items or in the opinion pieces."

Applicant argued that there was no evidence that EVERYBODY VS RACISM is a "widely spread and popularly used informational phrase," and that Examining Attorney Andrea Hack's evidence was "mixed." It asserted that due to its extensive policing efforts, the public never saw the phrase as a common slogan, and to the extent that it did, it no longer does.

The Examining Attorney contended that the phrase is in widespread use as a political or social justice informational message, that "fits well on tshirts and protest signs." "[A]s shown by the evidence of record . . . consumers will gravitate toward the message as an informational battle cry."

The Board agreed with the Examining Attorney that the phrase "is commonly used in an ornamental manner on clothing items, tote bags, and other retail items sold by third-parties to convey an anti-racist sentiment. It has also been used for the same purpose in opinion pieces, music, podcasts and YouTube videos, and by organizations (websites) that support efforts to eradicate racism."

As to the mixed record argument, the Board noted that applicant did not identify any trademark uses by third parties. The entirety of the evidence showed non-trademark use to consistently convey an informational, non-racist message. Indeed, the applicant's manner of use of the phrase reinforces its meaning as an informational statement or message.

Applicant’s specimens of use for Classes 18 and 25 consist of photographs of t-shirts and sweatshirts and a tote bag, each displaying Applicant’s proposed mark in large, prominent lettering across the front or center of each item. The placement, size, and dominance of the wording emblazoned on Applicant’s goods are consistent with informational (or ornamental), non-trademark use and more consistent with the conveying of an informational message than with signifying a brand or source indicator.

As to applicant's services, again the Board found that the phrase conveys the information that applicant supports anti-racism efforts, as confirmed by applicant's "mission statement:"

Everybody vs. Racism is a movement to Eradicate Racism. In partnership with everybody including communities, organizations, the private and public sector; we want to create, support and collaborate to provide services and programs that eliminate systemic racism for all regardless of their race, creed or color.

Applicant's use of the "TM" symbol adjacent the phrase was of no significance, and as to it policing and search engine optimization efforts, the Board noted that "[a]nalytic results as to the popularity of a particular search term is not proof of consumer perception that EVERYBODY VS RACISM functions as a trademark or service mark," and policing efforts "have little bearing upon the analysis of the understanding by the public of the term sought to be registered."

Finally, applicant asserted that the failure-to-function ground for refusal must be “strictly construed” and should no longer be a complete bar to registration, just as the Office no longer refuses scandalous and immoral marks. The Board responded that "[t]o the extent Applicant is making a constitutional argument, we have no authority to consider it."

As to any suggestion that the frequency of use of the phrase has diminished, the Board found the examining attorney's remarks to be apt:

Just as the sentiment that “thoughts and prayers” should be sent to victims of gun violence are cyclical, with the sentiment being expressed in the wake of mass shootings, the phrase “EVERYBODY VS RACISM” is cyclical. It has, and will continue, to be used in the wake of widely publicized racist incidents. Sadly, it is unlikely that the George Floyd killing will be the last racially inspired killing of a black man in this country. Sadly, there will likely be another incident before too long that will re-ignite the public’s passion and inspire people to again express their desire for a unified attack against racism. Sadly, the need to be able to express that one believes everyone should be against racism will arise again. Those who wish to be able to express that sentiment should be free to do so without paying a licensing fee to someone who sees an opportunity to co-opt a political message by filing for a registration for that message.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: I also think everybody should be able to use TRUMP TOO SMALL as an informational message. 

Text Copyright John L. Welch 2022.


At 9:23 AM, Anonymous Anonymous said...

Let's not get political John. Trump 2024..oops

At 1:04 PM, Blogger Valerie N said...

Interesting commentary from the examining attorney (and kudos for the same)

At 1:24 PM, Anonymous Anonymous said...

In addition to TESS searches, it is wise to Google the slogan before filing the application to see the extent of the use of the slogan on other items. There is a concern that I have though. Though the examining attorney could produce websites where the slogan was used on different items, in podcasts, songs, etc., shouldn't the amount of buyers and/or listeners factor into the analysis too? What if no one purchased a T-shirt or no one listened to the podcast or songs? In other words, they are available on the Internet, but no one ever visited this website, podcast or song. Guess I am asking for proof of widespread use to include the amount of visitors and/or sales rather than just resting on its availability on the Internet.

At 9:50 AM, Blogger John L. Welch said...

I'm not being political. I would say the same thing about BIDEN TOO SMALL.

At 2:31 AM, Anonymous BDR said...

It is also wise to Google the website of your client. Is there more than one GO & Associates, LLC?


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