Free Speech

Some Potentially Racially Offensive Terms Can't Be Trademarked—Because They're Too Common, Not Because They're Racially Offensive

The Trademark Trial and Appeal Board rejects the mark “Nigga” for clothing, because it’s so commonly used by others that it doesn’t serve to identify the applicant’s products (logic that equally applies to "Team Jesus," "Texas Love," and "God Bless the USA").

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According to this 2017 Forward story (Erica Snow) (and see also this NPR story [Ailsa Chang]),

[Steve Maynard, who] used to work for the USPTO [U.S. Patent and Trademark Office] … [is] on a mission—quite possibly quixotic—to thwart bigots by using that experience. He's applied to trademark both the swastika and the word "nigga."

The swastika, he said, "is a symbol that needs to be taken seriously, and not sold for $10 at a rally for everyone to have. They would have to buy them through us, and we would charge a high rate, and if they didn't buy them through us, we would have the right to go in and confiscate merchandise and just frustrate their purpose," he said….

Maynard has a similar strategy regarding the word "nigga."

He wants to "turn that word from hate into hope" by selling T-shirts bearing it.

But in In re Snowflake Enterprises, LLC, decided June 24 but just uploaded to Westlaw, the Trademark Trial and Appeal Board said no to the trademark registration; this means Maynard can't get exclusive rights to "nigga," though he can of course still use the word on clothing:

Snowflake Enterprises, LLC … seeks registration on the Principal Register of the proposed standard character mark NIGGA for "Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Bottoms as clothing; Head wraps; Headbands for clothing; Hoodies; Hoods; Jackets; Jerseys; Shifts as clothing; Tops as clothing; Wristbands as clothing" …. The Examining Attorney has refused registration of Applicant's proposed mark … on the ground that Applicant's proposed mark fails to function as a mark for the goods identified in the application because the proposed mark is a commonplace term widely used by a variety of sources that merely conveys an ordinary, familiar, and well-recognized concept or sentiment…. We affirm ….

Applicant claims that in Matal v. Tam, the Supreme Court "knew and accepted that this mark would register," because the Court "had before it the express proposition that this specific mark could and would register as functioning as a trademark if the mark 'THE SLANTS' was allowed to register," and because the parties and the numerous amici curiae discussed the possible registration of "'nigger' and its derivatives" to "illustrate minority groups re-appropriating terms considered disparaging, transforming slurs into empowering speech." …

[But] Tam and Iancu v. Brunetti prohibit the USPTO from refusing to register a proposed mark consisting of a racial epithet on the basis of any scandalous, offensive or disparaging connotations it may possess, if it is otherwise eligible for registration under the statute…. [N]either Tam nor Brunetti requires the USPTO to register a term simply because it is a racial epithet if it is otherwise unregistrable under any other provisions of the statute.

Applicant's core arguments that "a common racial epithet, because it has an expressive component, does function as a trademark and must register," and that "common racial slurs contain expressive content and therefore function as trademarks," get it backwards. In Tam, the mark THE SLANTS was in use in connection with the applicant's band, and there was no dispute that THE SLANTS functioned as a mark, or any discussion of third-party uses of the words in connection with entertainment services or otherwise that might have suggested that THE SLANTS did not signify a single source of such services….

Applicant's proposed mark NIGGA happens to be a racial epithet, but it was not refused registration because it is a racial epithet or because of any views that it may express. It was refused because it is a commonly understood word that is so commonly used by others in connection with clothing that consumers will not perceive it as a means to distinguish Applicant's clothing from clothing offered by others and to identify Applicant as the sole source of clothing bearing the word NIGGA. The evidence shows that NIGGA does not function as a mark for the goods and therefore cannot be registered….

Within the past several years alone, the Board has affirmed failure-to-function refusals involving proposed marks expressing a wide range of sentiments, including (1) GOD BLESS THE USA, an invocation that has surely crossed the lips of millions of Americans as well as those of Presidents of both political parties, who have regularly uttered it at the end of speeches, because it was displayed "not as a source indicator, but as an expression of patriotism, affection, or affiliation with the United States of America"; (2) TEXAS LOVE, which served to "convey[ ] support for, or affiliation or affinity with, the State of Texas," a sentiment undoubtedly shared by millions of residents of the country's second-most populous state, "rather than [to function] as a mark signifying a particular source of hats and shirts"; (3) TEAM JESUS, "a commonplace message of Christian affiliation," an affiliation shared by many millions of Americans, because "consumers will not perceive the widely-used message TEAM JESUS as distinguishing Applicant's goods and services in commerce and indicating their source," and (4) INVESTING IN AMERICAN JOBS, a statement "to convey support for American-made goods," because it "would not be recognized as indicating source." See also Peace Love World Live (the "phrase 'I LOVE YOU' conveys a term of endearment" and thus "consumers will not perceive I LOVE YOU appearing on bracelets as pointing uniquely to Applicant as a single source.") …

{Applicant argues that a "refusal of the mark NIGGA deprives African-Americans from reclaiming a commonly offensive racial slur." Applicant does not explain, however, why it alone is entitled to act as the vicarious avenger for African-Americans, to the exclusion of all others, including those who already appear to be using the word on clothing for the purpose of reclaiming it. Nor does Applicant explain why it must receive a registration to reclaim the slur given the existence of the third-party uses and the fact that a refusal to register "does not prevent [A]pplicant from using [NIGGA] on its merchandise or from advertising that merchandise through any advertising message of its choosing."} …

The USPTO's registration of other offensive or racially tinged terms, on the basis of records and circumstances that are not before us in this case, does not bind either the Examining Attorney or us. Cf. Texas With Love (rejecting applicant's reliance on prior registrations because they did not reveal, inter alia, "how the marks are used in connection with the registrants' goods and services; whether third parties use the same or similar marks, and, if so, how; whether the marks convey particular meanings or commercial impressions, and if so what those meanings or impressions are," and that "without that information, there is no support for Applicant's contention that the refusal of its application was rendered in a situation that is "contextually identical" to the circumstances leading to the allowance of these other registrations[]"). While we recognize that consistency in examination "'is highly desirable,' … consistency in examination is not itself a substantive rule of trademark law, and a desire for consistency with the decisions of prior examining attorneys must yield to proper determinations under the Trademark Act and rules.'"

In any event, "[w]e do not believe that our decision here is inconsistent with the registration of the third-party marks cited by Applicant, but to the extent that it is, it is the decision required under the statute on the record before us." We reject Applicant's disparate treatment and examination inconsistency claims as legally and factually meritless….

There is no constitutional right under the Supreme Court's decision in Tam or otherwise to register a racial epithet merely because of its offensive and expressive nature. The record shows that "nigga" is a commonly understood slang term in the United States English vernacular that refers to Black persons either negatively or (in the view of some persons) positively, depending on context, and that it has been widely used in an ornamental fashion on clothing offered by multiple third parties.

We find, based on the ample evidence in this record, that NIGGA does not function to identify Applicant as the sole source of clothing bearing the word …, and we further hold that the refusal to register did not violate the First Amendment because it did not discriminate against the message conveyed by the proposed mark….

Makes sense to me. The same analysis, I assume, would apply to the swastika.

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  1. Don’t you actually have to actively use a trademark to keep it?

    1. I mean, if you want to sell clothing with the word “nigga” you can apply for a trademark. I believe this person wanted to sell a bunch of stuff with the word.

      Which he can still of course do, he just can’t exclude others from doing the same thing. Which seems to make sense.

      1. Oh I see, I thought he was going to sit on it but he actually wants to sell or license swastika and nigga merchandise in the name of antiracism? I mean the people this sort of excuse is targeted toward are dumb but dumb enough to fall for this?

        1. I believe, reading between the lines, that part of his plan is to make the price so high that no one will buy any of his products. Or at least raise the price for unwelcome customers.

          1. Are you generally allowed to squat on trademarks like this especially if you openly announce that its your intention? Can I just hoover up a bunch of marks that Disney would like to merchandise and to cover my butt open up a online etsy with tshirts selling for a billion dollars each that I have no actual stock of and boast how I’m sticking it to them? Seems like it would be turning the system to the exact opposite direction of its intended purpose.

            1. Beats me. I wonder about the idea of selling the same merchandise at different prices to different customers like this. Amazon is notorious for randomly changing prices to see how it affects sales; but random is different from explicitly customers based on their politics, and the Amazon price differences are nowhere near what this guy’s scheme would have to be. The whole thing smells like something that only someone who sneers at business as contemptible capitalist nonsense could think up.

              1. Yeah I mean, I doubt this strategy would have been remotely successful even if it gets past the common use argument, but it didn’t so its a moot point.

                Like, there is a temple by me that has swastikas everywhere, and I would love to see how badly that would go if this guy tried to sue them.

    2. Don’t you actually have to actively use a trademark to keep it?

      Yes. Or to be slightly more precise, if you don’t use a mark then it isn’t a trademark.

      1. Actually, you lose your rights if you don’t use the mark. Even if it was a valid mark for decades, if you stop using it, it is lost. That is termed abandonment.

  2. No comment on Pres. Trump’s big class action complaint, but the opportunity to publish a vile racial slur appears to have been — as usual — irresistible . . .

    1. You can tell Artie has never been around black people from his uninformed comment. Bigot.

    2. If the Volokh lawyer was African-American, it would no longer be such, even though this is a discussion in a legal context?

      Use is ok or wrong depending on the genetic code of the speaker, irrelevant to the discussion of the word, or intended connotation (racist slur, or cool if slightly shocking cachet of the young and rap)?

      Interesting.

    3. Professor Volokh can speak for himself. But the obvious difference is that the Trump complaint is pure political theater. Commenting on it would be like commenting on a ruling of Judge Judy.

      This decision has legal significance — Matel v. Tam did not do away with the usual trademark rules, just the one regarding offensive or scandalous marks. That’s the TTAB position, anyway. Sounds right to me as TM lawyer.

      The record shows that “nigga” is a commonly understood slang term in the United States English vernacular that refers to Black persons either negatively or (in the view of some persons) positively, depending on context, and that it has been widely used in an ornamental fashion on clothing offered by multiple third parties.

      The fact that the term has been “widely used” on clothing (and hence approaches descriptive status) suggests that it is less offensive than some have made out.

      The applicant’s approach here is misguided, and pretty astounding given that he used to be an examiner at the PTO. His goal seems to be to obtain a government granted monopoly on offensive words, and stop their usage. Trademark law was not designed for that. Even if he got a registration, he would not be able to accomplish what he wants to.

      1. Even if he got a registration, he would not be able to accomplish what he wants to.

        Why not? I ask seriously, as a non-lawyer. Is it because he would actually have to use the trademark himself?

        1. OK. You gave me a soap box.

          Trademarks are a way of distinguishing goods or services of one source from another. That is why a trademark must be capable of making that distinction — termed “distinctive” in trademark law. If the mark does not distinguish one’s goods or services, it is not a mark. That is why generic words cannot be trademarks.

          Even when one has a mark, it is only uses by others that create a “likelihood of confusion or deception” that infringe the mark. Other uses are not infringements. As the Supreme Court stated almost 100 years ago: “When the mark is used in a way that does not deceive the public, we see no such sanctity in the word as to prevent its being used to tell the truth. It is not taboo.”
          Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924).

          There are many use of offensive words that would never create confusion as to who is the source of the product. If a KKK member made up T-shirts that said “Kill all N—-s,” would anyone think that the product is made by this applicant? As opposed to expressing a vile political view?

          That’s my point. Trademark law is designed for commercial actors to allow them to differentiate their goods or services in the marketplace. Very hard to use that to police political or cultural discourse.

          1. BTW, before I give up my soap box, whether a term is “distinctive” or not is judged relative to the goods or services. Is the term APPLE a valid trademark? You cannot answer that question without knowing the goods or services. If you want to sell computers and mobile phones, yes. If you want to sell apples, no, it’s generic.

            1. Didn’t Apple records (the Beatles’ label) unsuccessfully try to sue Jobs and company for trademark infringement?

              I’m wondering whether it would have mattered if at the time there was Apple’s current level of involvement in the music business….

              1. Yes, they did. Part of a “likelihood of confusion” analysis is not only how close the trademarks are, but how close the goods are. If the goods are very different, then consumers will not be confused.

                You can read some of the history of that litigation here:

                https://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer

              2. The sued four times, and whether it was ever “unsuccessfully” is a matter of definition, given each time the litigation was ended with a settlement. The fourth and final time reportedly included a $500 million payout to the Beatles/their heirs for a transfer of the trademark, which is pretty good for a “loss”.

                1. If I remember, the issue was that Apple (the computer company) was starting to expand into the music industry where Apple (the music company) held a trademark. I thought the Beatles and their heirs had a pretty good case, and apparently Apple computers thought so too.

                  On the current case, the decision to deny the trademark is dead on. He’ll have to find a may to alter it to make it unique to him.

                  1. If I remember correctly in the original case Apple Corp v Apple Computer it was determined they were in such different businesses that there was little chance of confusion. Later when Apple Computer started selling music things changed.

                    1. That’s how I remember it too.

                  2. “He’ll have to find a may to alter it to make it unique to him.”

                    If his intention was to use the trademark the way trademarks are intended to be used – to market some product – this would be easy. You use a distinctive font, and add other visual elements to make your generic word distinctive. For instance, bend the word into an arc. Now you have a logo to put on your product that is not easy to confuse with generic uses of the word.

                    But not only do you have to actually be selling the product with that trademarked logo to keep your trademark, but it only protects the logo. Other marketers can’t use graphics that look too much like your logo to identify their products, but they can use the word in any form that won’t be confused with yours.

        2. Yes, he would have to use the mark himself.

          But also, marks must be used to designate the source of goods or services. Just because one has a registration for a particular mark does not mean that others couldn’t put it on a t-shirt. (Let alone on other materials for which he doesn’t have a registration.)

    4. Artie, thos is just moreleftist lawfare on our nation. It furtherd the interest of the Chinese Commie Party, as you are, of course.

      Eugene is boring and annoying with trivia and nitpicking sibjects. He bypasses big cases. I agree. The judge in the Trump cases dismisses on first pleading, he needs a visit.

      1. You should see a psychiatrist. I believe there are drugs today that can help your condition.

        1. You should see a 5th grade teacher. That is 4th grade rhetoric.

  3. I’ve done some TM work, and this sounds very reasonable. Keep in mind that he isn’t completely out of luck. He can use it to identify a good or service, once he can show that he has established secondary meaning with the Mark he can go back to them and try again.

  4. Good luck with that. You can’t really trademark a rainbow, either.
    About that swastika:
    The swastika symbol, 卐 (right-facing or clockwise) or 卍 (left-facing, counterclockwise, or sauwastika), is an ancient religious icon in the cultures of Eurasia. It is used as a symbol of divinity and spirituality in Indian religions, including Hinduism, Buddhism and Jainism.
    In the Western world, it was a symbol of auspiciousness and good luck until the 1930s.
    It would be like trademarking the cross symbol to thwart Christians.

    1. It was also used by the Air Force of Finland from 1918 to 1944.

      1. I have an old (over a hundred years old) collection of Rudyard Kipling poems where he used a swastika. He stopped doing that later on because someone else was using the swastika for other purposes.

  5. Common words can’t be trademarked, Microsoft tried to make the claim for “Windows” the were headed to losing it in the US. They also tried in Europe and seem to be having better success there. Eventually the litigation petered out.

    1. Well, no, common words can be trademarked; just look at Apple, a common word and a trademark.

      Rather, words used generically to designate the kind of product being sold are really hard to trademark. The use of the English word “windows” in computing for display areas on a computer screen predates the 1983 announcement of, or 1985 release of, the product Microsoft Windows, a system for displaying and managing such windows, and has been continuously used in the generic since then.

      In many other languages, the English word “windows” doesn’t get used to describe display regions of a computer screen, and thus potentially can be trademarked.

      1. In many other languages, the English word “windows” doesn’t get used to describe display regions of a computer screen, and thus potentially can be trademarked.

        I can’t speak to other countries’ trademark law, but that’s not the way it would work in the U.S. Generally speaking (yes, there are some exceptions), if an English word is merely descriptive, you can’t just use a foreign translation of it to serve as a trademark.

  6. Look, nobody is to trademark anything until I blow this whistle, understand? Even, and I want to make this perfectly clear, even if they do say “NIGGA.”

  7. One thing to bear in mind here is that there’s a difference between trademarking the word or symbol, and trademarking a design that contains the word or symbol.

    I would assume that these symbols and words could be used within a broader trademark. For instance, I would think N.W.A. would be able to trademark the spelled out version of their name.

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