3 reasons why the ‘White Lives Matter’ pending trademark application will likely be rejected

Author: Dayna Thomas, Esq

Today on Launched & Legal, Dayna Thomas Esq. takes a look at a story circulating that “Kanye West Can’t Sell ‘White Lives Matter’ Shirts Because Two Black Men Own the Trademark.”

When I saw this headline, and as a trademark attorney, I immediately doubted that it was true. So I went to the USPTO database to look up the matter. Turns out that a trademark application for White Lives Matter was FILED by an individual on October 3, 2022, and soon after on October 17, 2022, assigned, meaning transferred, to Civic Cipher LLC. Just knowing that, proved that the headline was incorrect, and the blogs were spreading false information. While I do believe that the intention behind the White Lives Matter trademark application is genuinely rooted in positivity, utilizing the trademark process to achieve the goal is unlikely to be successful. I covered this a bit on my personal Instagram, but I decided to use my own platform, here on Launched and Legal, to educate you all on this matter, strictly as it relates to trademarks. This show will not be about my or your personal opinions, but rather the purpose is to educate you on the trademark process and trademark eligibility. Education can only help, and since it appears that none of the media sources I’ve seen have consulted with a trademark attorney before circulating this story, I am going to shed some light on the matter. In this episode, I am going to explain three reasons why the White Lives Matter trademark application is likely to be rejected.

1. It’s a widely-used message.

• According to Sections 1, 2, 3, and 45 of the Trademark Act, a matter that merely conveys ordinary, familiar, or generally understood concepts or sentiments, as well as social, political, religious, or similar informational messages in common use, would not be perceived as indicating source and thus is not registrable. 
• Messages that are used by a variety of sources to convey social, political, religious, or similar sentiments or ideas are likely to be perceived as an expression of support for or affiliation with, the ideas embodied in the message rather than as a mark that indicates a single source of the goods or services. 
• Furthermore, goods that feature such messages are typically purchased because of the expressive sentiment conveyed by the message and not because they serve as a means for consumers to identify and distinguish the applicant’s goods or services from those of others.
• What does that mean – in normal terms, that means that a phrase that is very popular because it represents a social, political, or religious informational message is not eligible for trademark protection because it does not indicate the source of goods. It merely indicates an idea or movement that consumers align with.
• For example, the proposed mark ONCE A MARINE, ALWAYS A MARINE, for clothing, was found not to function as a mark because the evidence showed that it was a common motto used by, and in support of, the U.S. Marines.  Similarly, the proposed mark NO MORE RINOS!, for various goods, including bumper stickers, signs, and t-shirts, was found not to function as a mark because the evidence showed that consumers were accustomed to seeing this well-known political slogan on these types of goods from various sources.  Additionally, the proposed mark TEAM JESUS for clothing and religious educational and entertainment services was held not to function as a mark because the evidence showed that due to the nature of the phrase, including it being on apparel from many sources, consumers would perceive the wording merely as a well-recognized message of Christian affiliation. 
• It’s very likely that the result will be the same with White Lives Matter. Whether we agree with it or not, the phrase White Lives Matter conveys a social and/or political message that’s in common use. Because there is already widespread use of the phrase to identify support of certain ideas, it’s unlikely that it identifies a single source, but rather, identifies a message. Once this application is assigned to a trademark examiner, it is very likely that he or she will attach loads of evidence and screenshots to prove that White Lives Matter is a commonplace expression or informational slogan – just as they did when people tried to trademark Black Lives Matter. Here’s a fact – there is no trademark registration for just the words Black Lives Matter. Please note that while many have applied for it, zero have received actual trademark registrations. And that’s for the same reason that White Lives Matter is ineligible. Trademarks are used to identify the source of goods or services, and with such common use of the phrase White Lives Matter, it is unlikely that consumers will identify that phrase with just one source. Therefore, according to the Trademark Act, it should not be eligible for trademark registration.

2. The applicants have publicly admitted that they have no intention to use it.

• During a CNN interview on or around November 4, 2022, the applicants of the White Lives Matter trademark admitted that they have no real intention of using the mark. When asked by the interviewer, “What do you plan to do with this trademark of White Lives Matter?,” the response was “Well, at present, we plan to do nothing.” According to Section 1(b) (1) of the Trademark Act, an applicant may file a trademark or service mark application based on a bona fide intention to use a mark in commerce “under circumstances showing the good faith of such person.” In addition, Section 45 of the Trademark Act states that “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”
• Now, the trademark office is going to assume that there’s a bonafide intention to use the mark in commerce by virtue of the application being filed. However, with the CNN interview floating around virtually admitting that the application is merely to reserve a right in the phrase, rather than use it in the ordinary course of trade, if a third party were to challenge the application, I believe that the CNN interview would be remarkable evidence that there was no bonafide intention to use the mark, and that the intention was merely to prevent others from using it. While that intention is noble, that is not the way trademarks work. Trademark protection is reserved for applicants with a bonafide intention to use a mark in commerce and to prevent consumers from brand confusion. Filing for the trademark for White Lives Matter to control its use so it doesn’t fall into the wrong hands, does not fit that criteria.

3. The application is likely to be opposed.

• Now this one for me is just speculation, but I think it’s likely. During the trademark process, IF the application is approved by the trademark examiner, which is unlikely here, the application will proceed to publication. Publication is a period of 30 days during which any member of the public who thinks they’ll be harmed by the registration of the trademark may oppose it. They can file a Notice of Opposition, which starts a legal proceeding with the Trademark Trial and Appeal Board. The filing fee for a notice of opposition is only $600, which is not a huge barrier to those who would want to challenge the application for White Lives Matter. I can only imagine that those who do not agree with this mission will oppose the application – and virtually anyone can oppose. If a notice of opposition is filed, the applicants of the White Lives Matter application must respond and pursue the matter, or else they lose and their application will be deemed abandoned. And guess what, on November 3, 2022, someone else has already submitted a competing trademark application for White Lives Matter, also for clothing. My trademark senses tell me that they plan to challenge the prior-filed pending application by Civic Cipher LLC. There may be many oppositions to defend against, which can be an uphill battle to getting the mark actually registered, and ultimately prevent registration, for both applicants.

Now there can be other barriers to registration of a trademark for White Lives Matter, but these three are glaring. Now to reiterate, the purpose of this episode is not to shame the applicants. I highly respect them and appreciate their bravery to take on something this big. The purpose of this episode is to educate you, the people, so that you can focus your efforts on real change rather than being misled by media headlines. Education is one thing that no one can take away from you – so I encourage you to receive this episode with an open mind.

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