The Volokh Conspiracy
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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").
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.
