by Danielle Toaltoan
Partner, Davis Wright Tremaine
Danielle Toaltoan is a partner and intellectual property attorney at Davis Wright Tremaine whose clients range from young startups to large companies. She has handled more than a dozen trademark and copyright infringement cases and has significant experience in trademark prosecution and enforcement. Here, Danielle discusses some of the hurdles of trademarking social justice movements, like Black Lives Matter, and offers guidance to companies that are looking to signal their values to customers.
Trademarks protect the value of names and symbols used in business to designate the source and origin of goods and services. Possession of a federal trademark registration, issued by the United States Patent and Trademark Office (USPTO), is a particularly powerful tool for business owners because it (1) endows business owners with the presumption that they hold exclusive rights to use the mark in connection with certain goods and services and (2) empowers them to prevent others from using the mark in ways that are considered infringing.
Motivated by the rallying cries that have come to define the current movement for racial justice (e.g., "Black Lives Matter," "Black Girl Magic," "Defund the Police") dozens (if not hundreds) of Black-owned businesses have applied for federal trademark registrations to incorporate these slogans or phrases into their businesses' brands for products and services, ranging from hair products, to consulting, to non-profit services, and to educational platforms. Undoubtedly, many of these brand owners want to signify to their customers that their goods and services are designed to promote racial justice and serve the Black community. And customers have been clamoring for exactly this sort of information—consumers want to support Black-owned businesses and identify those businesses that are authentically committed to racial justice. So with this view, trademark registrations incorporating slogans from racial justice movements could help Black-owned businesses build their brands while also helping Black-owned businesses connect with customers interested in supporting them and the values they promote.
But the USPTO has taken an opposite view. It has uniformly refused registrations for any trademark that it deems an "informational social, political, religious, or similar kind of message that merely conveys support of, admiration for, or affiliation with the ideals conveyed by the message." For example, the USPTO held that INVESTING IN AMERICAN JOBS is not registrable for retail store services or promoting public awareness of goods made or assembled by American workers because the mark would be perceived as a phrase "commonly used in the marketplace to convey a particular social and economic informational message." The USPTO's position is that certain slogans and terms associated with social and political movements merely convey an informational message and are not registrable. That is, these terms cannot serve to distinguish the brand of one business from the brand of another business.
The USPTO also likely does not want to be responsible for sorting out what businesses can and should claim trademarks rights to social and political movements, endowing those businesses with powerful trademark rights that can be leveraged to dictate how others use these slogans and phrases in commerce. The USPTO has essentially decided that it will block all applicants that hint at wanting to commercialize aspects of the current racial justice movement rather than try to operate in a messy middle where some businesses are granted trademark rights and others are not.
Of course, this can be an unsatisfying result for Black-owned business owners who want to promote "Black Girl Magic" for clothing and accessories or "Black Wall Street" for cryptocurrency services, for instance. Nonetheless, Black-owned businesses should heed the warning: they will likely not be able to register popular slogans, and it is not worth the application and legal fees to fight the USPTO on this issue. Deciding on how you want to brand your business is one of the most important and creative decisions you can make in the early stages of your business development. It is worth taking that extra time to determine a creative way to signal your brand's values to customers without relying on popular slogans to define your brand.