At USPTO's Request, CAFC Re-designates as Precedential Its EVERYBODY VS RACISM Failure-to-Function Affirmance

At the request of the USPTO under Fed. Cir. R. 32.1(e), the CAFC has re-designated as precedential its opinion in In re GO & Associates, LLC, 90 F4th 1354 (Fed. Cir. 2024) (re-designated as precedential, January 22, 2024). The CAFC upheld the Board's decision [TTABlogged here] affirming a refusal to register the proposed mark EVERBODY 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 source indicator. The appellate court concluded that the Board's determination was supported by substantial evidence. 

The CAFC observed that "[i]f the nature of a proposed mark would not be perceived by consumers as identifying the source of a good or service, it is not registrable," citing TMEP § 1202.04(b) (precluding from trademark protection “informational matter,” such as 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.”). [Hmmm! The TMEP is not the law - ed.].

The court found GO’s challenge to be a mere disagreement with the weight the Board assigned to the conflicting evidence. But the Board "properly considered both GO’s uses and third-party uses when assessing how the public would likely perceive the mark."

GO contested this conclusion by asserting that "[p]er se 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." GO Br. at 8–9 (quoting In re Elster, 26 F.4th 1328, 1331 (Fed. Cir. 2022), cert. granted sub nom. Vidal v. Elster, 143 S. Ct. 2579 (2023)). The court found this argument meritless. It pointed out that in Elster there was no issue as to whether the proposed mark TRUMP TOO SMALL functioned as a source identifier.

What is more, however, is that GO’s constitutional argument is based on a faulty premise: that the Patent and Trademark Office’s (“PTO”) application of the so-called “Informational Matter Doctrine” results in the per se refusal of any mark that contains informational matter, regardless whether or not consumers perceive the mark as source identifying. That is not true. Indeed, one can immediately envision many marks, such as GO’s own example, MAKE AMERICA GREAT AGAIN, that contain informational matter (e.g., widely used slogans), but nevertheless function as source-identifiers.

The court agreed with the TTAB that "[i] If the PTO were to allow the registration of marks that are used by the public in such a way that they cannot be attributed to a single source, the purpose of trademark law would be undermined to the detriment of the public who would be no longer free to express common sentiments without the threat of 'paying a licensing fee to someone who sees an opportunity to co-opt a political message.'"

In sum, "nothing in the Lanham Act prohibits registration of a mark containing informational matter, so long as the mark also functions to identify a single commercial source. "Because EVERYBODY VS RACISM fails to meet that requirement," the court rejected GO's constitutional challenge."

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TTABlogger comment: The Board's opinion is worth reading.

Text Copyright John L. Welch 2023-24.