In a recent decision, the United States Court of Appeals for the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board (“Board”) to deny registration of “EVERYBODY VS RACISM” because the “public is unlikely to associate the mark . . . as a source-identifier” of GO & Associates, LLC’s (“GO”) goods and services. In re GO & Assocs., LLC, No. 2022-1961, 2023 U.S. App. LEXIS 30060 (Fed. Cir. Nov. 13, 2023). The Federal Circuit explained that allowing GO to trademark EVERYBODY VS RACISM would undermine trademark law “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.’”

GO sought its trademark for EVERYBODY VS RACISM in connection with tote bags, clothes, and related goods. The examining attorney rejected GO’s application because it located numerous “examples of the mark being used in informational (rather than source-identifying) ways” including by the National Basketball Association, in rap songs, and on other articles of clothing. The Federal Circuit then made short work of GO’s appeal, concluding that whether a mark functions as a trademark is a question of fact and “GO’s challenge on appeal amounts to nothing more than a disagreement with the weight the Board assigned to the conflicting evidence.”

The Federal Circuit also rejected GO’s argument that “[p]er se refusals based on the Informational Matter Doctrine are unconstitutional” because the Board did not make a per se refusal of GO’s mark merely because it contained informational material. Instead, the Board analyzed whether consumers view EVERYBODY VS RACISM as source identifying and considered as relevant evidence that third parties use the mark in an informational manner. The fact that so many third parties use the mark in an informational manner meant that consumers would not view EVERYBODY VS RACISM as source identifying and doomed GO’s application.

Recently, the United States Patent and Trademark Office (“USPTO”) asked the Federal Circuit to reissue its opinion as precedential to “provide guidance and certainty to future applicants regarding the statutory basis for the failure-to-function refusal and its parameters, as well as the evidence relevant to that analysis” and to “reduce the probability of subsequent litigation over the same question.” On January 4, 2024, the Federal Circuit indicated that it was considering the USPTO’s request.