Last month, I wrote about trademark profiteering, concluding that attempts to monetize rallying cries by registering them as trademarks almost always fail. The USPTO proved me correct this month, when it denied two separate applications to register marks associated with Eric Garner.
Eric Garner died in New York last year as the result of an unlawful police chokehold. His last words were “I can’t breathe.” The phrases “I can’t breathe” and “Black Lives Matter” became rallying cries for protesters around the country in the wake of his death, and again when a grand jury voted not to indict the police officer who killed him. At the very height of the popularity of these phrases, two parties attempted to register them as trademarks.
The application for BLACK LIVES MATTER was filed on January 12, 2015, about one month after the grand jury voted not to indict. The application was filed by an individual (presumably without the advice of an attorney) who operates a business called Crazy4tShirts. The application covered sweatshirts and t-shirts.
In an Office Action issued on March 18, the Trademark Office wrote: “Registration is refused because the applied-for mark BLACK LIVES MATTER merely conveys an informational social, political, religious, or similar kind of message; it does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.” The Trademark Office further explained that the public “would not perceive the slogan BLACK LIVES MATTER as source-identifying matter that identifies applicant as the source of the goods but rather as an expression of support for anti-violence advocates and civil rights groups. In other words, potential consumers would simply purchase the clothing because they want to support the cause that the slogan represents, not because they believe the slogan indicates source.”
The application for I CAN’T BREATHE was filed on December 17, 2014, just weeks after the grand jury’s decision This application covers hoodies and t-shirts, and was also filed by an individual, not an attorney.
In the Office Action refusing to register this application, the Trademark Office wrote that the mark I CAN’T BREATHE consists of a slogan that falsely suggest a connection with Eric Garner, and explained that the Trademark Act prohibits the registration of a mark that “consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols.” The Trademark Office cited the fact that I CAN’T BREATHE conveys an “informational social, political, religious, or similar kind of message, and does not function as a trademark” as an additional ground for refusing to register the mark.
Although these trademark applicants have 6 months to respond to their respective office actions, I suspect that they won’t, and that the applications will be abandoned in the fall.
The take-aways for would-be trademark profiteers:
– Slogans or terms that merely convey an informational message are not registrable.
– Slogans that are closely identified with and suggest a connection with an individual are not registrable.
– Although not discussed in these decisions, a slogan on a t-shirt may not be registrable if it is merely ornamental and not an indicator of source.
– Make your t-shirts, but skip paying a filing fee to the Trademark Office and make a donation to the cause that you’re purportedly supporting.