The Volokh Conspiracy
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In Think Rubix, LLC v. Be Woke. Vote, decided Tuesday by Judge Kimberly Jo Mueller (E.D. Cal.), the court rejected plaintiff's trademark claim:
Think Rubix "is a social innovation consultancy firm." Think Rubix uses its WOKE VOTE initiative to "promote public awareness of the need for educating citizens about politics … and encourage greater participation in the political process." This "initiative is primarily aimed at the activation, engagement, and mobilization of historically disengaged voters of color through strategic social media outreach, campus and faith-based outreach, demonstrations, and intense get-out-the-vote mobilization efforts." Id. Defendants' Be Woke. Vote initiative "aim[s] to encourage participation and inspiration of younger generations that are oftentimes disenfranchised … and to create discussions about politics through social media initiatives and in-person events." Each initiative uses a mark featuring its respective name: WOKE VOTE and Be Woke. Vote.
Since August 2017, Think Rubix has used the WOKE VOTE mark as a wordmark and feature in logos and designs. Think Rubix uses the mark "in association with its political and civic engagement services." In 2018, Think Rubix applied for a federal trademark "for a stylized mark incorporating the phrase WOKE VOTE," which the U.S. Patent and Trademark Office approved in June 2019. The trademark … comprises the word "'WOKE' in yellow above the word 'VOTE' in white, all within a circular design in black and yellow." "Within the letter 'O' in 'WOKE' appears a black and yellow background with several raised fists in black with yellow outlining, and the wording 'WOKE VOTE' in white." Think Rubix uses the mark to "market and display its services," and "on apparel and other items." Think Rubix and its "WOKE VOTE initiative have been featured in numerous new[s] stories, printed publications, and online features, and the WOKE VOTE initiative has even been featured in [a] documentary film."
Since launching the Be Woke. Vote initiative in September 2018, defendants have used a Be Woke. Vote logo on a website by the same name, on various social media platforms, and at in-person events. The Be Woke. Vote designs primarily use "the colors black, white, and yellow." Defendants display the "mark in connection with the initiative and its products and services." Defendants use the marks on apparel and to "solicit donations from individuals and organizations who desire to promote political engagement," …
Here, the pleadings, construed in favor of Think Rubix as required, offer plausible allegations that defendants used their mark "in connection with a sale of goods or services." Specifically, the complaint contains allegations that defendants use their mark not only on apparel but also to promote their political engagement efforts, which are similar to those of Think Rubix. However, defendants dispute whether their speech can properly be characterized as "purely commercial," to allow plaintiff's allegations to stick.
"If speech is not "purely commercial"—that is, if it does more than propose a commercial transaction—then it is entitled to full First Amendment protection. "Although the boundary between commercial and noncommercial speech has yet to be clearly delineated, the 'core notion of commercial speech' is that it 'does no more than propose a commercial transaction.'"
The Supreme Court has long held that when a communication, such as a "charitable solicitation does more than inform private economic decisions and is not primarily concerned with providing information about the characteristics and costs of goods and services, it [is] not  dealt with … as a variety of purely commercial speech." Moreover, when speech is "characteristically intertwined with informative and perhaps persuasive speech seeking support for particular causes or for particular views on economic, political or social issues," "it must be treated as a fully protected activity under the First Amendment." Here, on the face of the complaint, defendants' use of Be Woke. Vote is inherently intertwined with their efforts to inform and persuade the public on social and political issues. See Compl. ("Defendants' website and social media pages have prominently displayed the BE WOKE. VOTE mark in connection with the initiative and its products and services"), ("Defendants use the Be Woke Vote Marks to solicit donations from individuals and organizations who desire to promote political engagement"). Therefore, claims one and three fail as a matter of law.
This conclusion is not altered by defendants' sale of merchandise with the Be Woke. Vote mark displayed on it. In Gaudiya Vaishnava Society, the Ninth Circuit reviewed a challenge to a city ordinance purporting to restrict only commercial speech. Five nonprofit organizations challenged San Francisco's ordinance "which regulate[d] the sale of merchandise on public sidewalks by nonprofit groups[.]" In its discussion of categories of speech, the court rejected the argument that "sale of merchandise is nothing more than a commercial transaction and therefore is afforded no constitutional protection." It continued, finding that "an expressive item does not lose its constitutional protections because it is sold rather than given away." Here, while plaintiff has a valid trademark covering the services in which the parties are engaged, the fundamentally noncommercial nature of the services places the defendants' actions within the exception to the Lanham Act. Even if there is a risk of public confusion regarding the two marks, the defendants' speech is nonetheless protected….