Activism or Opportunism? Protests Inspire New Trademark Applications
Margo Cruz | June 15, 2020
Recent events such as the global pandemic and the stay-at-home orders that followed led to an onslaught of trademark applications. Despite the hundreds of thousands of deaths in the US, applicants sought to own and capitalize on terms related to the tragedy.
With the most recent round of Black Lives Matter and anti-police brutality protests, we expected similar numbers of applications seeking protection for popular terms. While the protests following the killing of George Floyd and many other victims of police brutality seem like a dangerously good opportunity for trademark opportunism, it has been refreshing to see not only very few opportunistic trademark applications but also applications that indicate businesses supporting the movement.
“I Can’t Breathe”
The most commonly sought trademark related to the protests is for “I Can’t Breathe.” There are many current (and past) applications for the phrase, mostly for t-shirts, hats, and related apparel. The oldest still-pending application for “I CAN’T BREATHE,” by Sean Mitchell of Washington state in 2019, demonstrates the issues with an attempt to trademark such a common slogan. Mr. Mitchell’s application received an office action stating that the applied-for mark indicated a false connection with the estate of Eric Garner. Because of the phrase’s strong association with the killing of Eric Garner, the public is likely to falsely assume a connection between the applicant’s goods and Eric Garner’s estate. Such a false association would be prohibited (TMEP 1203.03) unless Mr. Mitchell has approval from Eric Garner’s estate to trademark the phrase.
The office action on Mr. Mitchell’s application also indicated that registration was refused because “I Can’t Breathe” is an informational slogan (TMEP 1213.05) that does not function as a trademark to indicate the source of the applicant’s goods: it merely conveys support for or affiliation with the ideals conveyed by the message. Mr. Mitchell only has a few weeks left to respond to this office action, so the application may be abandoned. These issues will likely apply to any trademark application for “I Can’t Breathe,” especially because the phrase has regained prominence after Geoge Floyd’s killing under circumstances tragically similar to those of Eric Garner.
One Atlanta filmmaker has filed an application to trademark “I CAN’T BREATHE” for use on t-shirts. Unfortunately, Bettina Horton will likely have a hard time securing the trademark because of the issues listed above, and because of how the phrase is used on the shirts. The designs are likely to garner a “merely decorative” or “ornamental” refusal from the USPTO, because the type of decoration does not serve to identify the source or supplier of the goods (TMEP 1202.03). Ms. Horton has not submitted a specimen to the USPTO yet, but the shirts are shown on her Instagram account. Though Ms. Horton may be unsuccessful in trademarking the phrase, perhaps this is an indication that the phrase and larger movement around Gorge Floyd’s death will play a part in one of her films in future. Ms. Horton’s t-shirts and other projects can be viewed on her Instagram: @bettina_horton.
Another interesting application is a 1B intended-use application for “I CAN’T BREATHE BUT WE CAN VOTE.” The goods and services listed include “providing information regarding political issues, knowing how to vote and knowing how to register to vote.” This mark may have a slightly higher likelihood of success because its goods and services category and its phrasing variation mean it won’t compete with the other “I Can’t Breathe” trademark attempts and risk likelihood of confusion. The USPTO may still argue that this creates a false association with Eric Garner, George Floyd, and others killed by police, and that it is an attempt to trademark an informational slogan or commonly used phrase. However, the applicant could perhaps argue that the applied-for mark creates a different commercial impression as a whole than simply the phrase “I Can’t Breathe,” (TMEP 1207.01(b)) and that it therefore functions as a source identifier for a company seeking to inform people on voting.
While “I Can’t Breathe” was already a commonly used informational slogan against police brutality, “Get Off My Neck” came to prominence in the wake of George Floyd’s death. There are currently four applications for variations of “GET OFF MY NECK,” but applications will likely have the same problems as the “I CAN’T BREATHE” applications, due to their recent prominence as informational slogans. All are 1B applications for clothing-related goods and services, so it remains to be seen what the specimens for these applications will look like.
George Floyd and Black Lives Matter
Unfortunately, some opportunistic trademark applications in the United States and abroad may be inevitable. An application to trademark “GEORGE FLOYD” was filed by Munemo (“Muni”) Mushonga, for “production and distribution of television shows and movies.” It seems as though Mr. Mushonga has been receiving a lot of flack recently for his application because his bio has been removed from his executive search company’s website, Istaffing, LLC. There appears to be no known connection between Mr. Mushonga and the estate of George Floyd. According to TMZ, Mr. Mushonga declined to comment on the application to trademark “GEORGE FLOYD” and what it would be used for. On June 12th, Mr. Mushonga filed a Request for Express Abandonment.
There have been many applications for a “BLACK LIVES MATTER” trademark, as recently as last week and going back as far as 2015. Many older applications are already dead, but applications will likely receive at least an “informational slogan” refusal, as discussed above.
Controversy over the Black Lives Matter Global Network Foundation, Inc. (“GNF”) and the Black Lives Matter Foundation has brewed lately, but only the GNF appears to have attempted to trademark the phrase. The GNF is the organization associated with blacklivesmatter.com. Back in 2017 (a little over a week after the GNF incorporated) an applicant named Black Lives Matter Network, Inc.* applied to trademark “BLACK LIVES MATTER,” “BLACK LIVES MATTER NETWORK,” and “#BLACKLIVESMATTER.” All three trademark applications were abandoned by Black Lives Matter Network, Inc. after “informational slogan” office actions.
*Note: The address listed on the trademark applications was the same as that of the GNF, but that same address is also home to over 300,000 other corporations that use CT Corporation’s Delaware registered agent services.
Attempts to trademark “BLACK LIVES MATTER” and “I CAN’T BREATHE” have also been made in the U.K. by Georgios Demetriou. Apparently, Mr. Demetriou intends to collect royalties from the use of the term and use the proceeds to fund a charity for disadvantaged children. Mr. Demetriou has also stated, “Once I’ve got the trademarks, the charity will be run effectively like a business, and we will see who is saying the right things – we don’t want people just arranging protests for the sake of it. We want to engineer processes that will generate the right publicity, such as signed petitions and turning up at 10 Downing Street.” This sort of desire to police and control protests, of course, runs contrary to the nature of the protests themselves.
U.S. trademarks expert Erik Pelton has called applications to trademark “I CAN’T BREATHE” “reprehensible” and pointed out that they are likely to fail. Trademarking commonly used phrases and informational slogans is probably difficult for good reason–if people could secure the exclusive right to use a phrase already used by a social movement, that might allow them to regulate the movement itself.
Some applications seemingly related to the protests suggest people are motivated to effect change. These include applications for marks like “OVERCOMING RACISM” for providing anti-racism training and workshops for organizations, “STOP THE KILLIN” for connecting philanthropists with nonprofit organizations in the fields of violence and trauma prevention, among others things, and “ALL PEOPLES HUMAN RIGHTS” for legal aid services. There are also multiple applications for “EVERYBODY/EVERYONE VS. RACISM,” one of which intends to sell apparel and promote public interest and awareness of the need for “racial reconciliation and encouraging people to know their neighbor and affect change in their own sphere of influence.”
Interestingly, “RATE MY COP” has been re-applied for after a 2007 application for the mark was abandoned. Rate my Cop is a website for providing information which includes “user posted ratings, reviews, and recommendations on police officers, detectives and police stations and offices…” The website was started by Gino Sesto and Rebecca Costell in 2008, but was shut down in 2015.
The “other side” of protests against police violence has not been absent from the trademarking space, either. Applications related to “all lives” and police protection are still being filed. In fact, the Massachusetts Coalition of Police Union has applied to trademark “MCOP,” for Labor unions, associations, and lobbying services “promoting the interests of police” including in the field of legislation.
While trademarks don’t necessarily paint a picture of a whole social movement, they can serve as an interesting indicator. Perhaps some of the business ideas attached to these trademarks are the first of many positive changes to come.