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Explore the latest in patent, trademark, and copyright cases on the Merchant & Gould LLP blog. Stay informed with expert insights on intellectual property law updates.

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Recently, the U.S. Court of Appeals for the Federal Circuit designated as precedential its opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1961.OPINION.11-13-2023_2220683.pdf"><em>In re: Go &amp; Associates, LLC</em>, No. 2022-1961 (Jan. 22, 2204)</a>, which affirmed a decision of the Trademark Trial and Appeal Board refusing registration of the mark “EVERBODY VS RACISM” on grounds that the mark failed to function as a source identifier for GO’s goods and services.

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In 2020, GO sought to register “EVERBODY VS RACISM.” The examiner refused to register the mark, finding it did not serve as a source identifier for GO’s goods and services, but was only an “informational, social, political, religious, or similar kind of message that merely conveys support of, or admiration for, or affiliation with the ideals conveyed by the message.” As support, the examiner cited many examples of third-party use of the mark, which were “informational,” rather than source-identifying. GO appealed.

On appeal, the Federal Circuit noted that “[t]he Lanham Act conditions its registrability of any mark on its ability to distinguish an applicant’s goods and services from those of others.” Stated otherwise, “it is a threshold requirement of registrability that the mark ‘identify and distinguish’ the goods and services from those of others, as well as ‘indicate the source’ of those goods and services.” The “source identifier requirement … focuses on how the mark is used in the marketplace and how it is perceived by consumers.” Further, “[w]hether or not a mark functions as a source identifier is a question of fact” reviewed for “substantial evidence.”

Against this legal backdrop, the Court affirmed the refusal to register as supported by substantial evidence, specifically third-party use of the mark to convey an “anti-racist sentiment.” Significantly, GO did not argue that any of these third-party uses were trademark uses attributable to GO. Accordingly, the Court viewed GO’s appeal as “nothing more than a disagreement with the weight the Board assigned to the conflicting evidence.”

Finally, the Court rejected GO’s argument that the application of the “Informational Matter Doctrine” violates the First Amendment and results in per se refusal to register. The Court explained that marks may contain “informational matter, so long as the mark also functions to identify a single commercial source,” citing Nike’s “JUST DO IT” mark and others as examples. There was no per se refusal; instead, the evidence supported the Board’s determination that “EVERBODY VS RACISM” simply did not identify a single commercial source.

CAFC Designates Informational Matter Doctrine Decision Precedential

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