‘Black Lives Matter’ Wine? Teddy Bears? Trademark Law Shows You Can’t Always ‘Just Do It’

Protesters gather in Chicago on Saturday, May 30, 2020 following the death of George Floyd at the hands of Minneapolis police. There are now several pending attempts to trademark the phrase “Black Lives Matter.” (Hugo Balta / WTTW News)Protesters gather in Chicago on Saturday, May 30, 2020 following the death of George Floyd at the hands of Minneapolis police. There are now several pending attempts to trademark the phrase “Black Lives Matter.” (Hugo Balta / WTTW News)

Black Lives Matter is a burgeoning cultural and political movement — and it appears that people are ready to cash in on it.

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Several applications pending with the United States Patent and Trademark Office filed in June seek to trademark “Black Lives Matter” for use on clothing, footwear, hats and athletic uniforms. Others seek to trademark the phrase for use on jewelry, stickers, binders or mugs.

Another pending application seeks to trademark “Black Lives Matter Academy” for boarding school, ballet school, beauty school, tutoring, charitable services “providing backpacks filled with school supplies to schools, organizations, clubs, religious groups, NGOs, scouts, orphanages, homes for children, rehabs, group homes, foster children, non-profits, youth groups” and education services “providing classes, seminars, workshops, tutoring, and mentoring in the field of middle and high school reform.”

An application recently filed by a resident of Delaware seeks to trademark “Black Lives Matter Moscato” while a Virginia resident is aiming to trademark “Black Lives Matter Bear” for use on stuffed and plush toys.

The $225 baseline fee the applicants had to pay may well be a waste.

“The phrase ‘Black Lives Matter’ is not currently registered and I don’t believe has ever been registered,” said Chicago intellectual property attorney Liz Brodzinski, a shareholder at law firm Banner Witcoff.

The USTPO has rejected previous “Black Lives Matter” trademark attempts.

In October 2017, the agency declined an application by Delaware’s Black Lives Matter Network, Inc. for a trademark of #BLACKLIVESMATTER because the applied-for mark “is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant’s goods and/or services and to identify and distinguish them from others.”

“In this case, the applied-for mark is an informational social, political, religious, or similar kind of message that merely conveys support of, admiration for, or affiliation with the ideals conveyed by the message,” the office gave as its reasoning. “Terms and phrases that merely convey an informational message are not registrable.”

The trademark-examining attorney in that case says a Black Lives Matter conference hosted by Loyola University Chicago “confirms that many parties offer websites promoting public awareness of freedom and justice about the ‘BLACK LIVES MATTER’ subject matter.”

Brodzinski said it’s a rare reason for a rejection.

“It’s actually very interesting,” she said. “I had not previously seen this rejection before.”

Brodzinksi said the point of trademarks is to avoid consumer confusion.

Federal trademark officials “want to make sure that when a trademark is registered and used it doesn’t make consumers confused about the source of whatever the trademark is being used for,” she said. “That obviously inures to the benefit of the trademark holder but it helps consumers feel safe in the marketplace, when they’re getting a certain product with a trademark on it they know what that means.”

Think trademarks for Disney. Ford. McDonald’s. (But not “cartoon,” “automobile” or “burger.”)

“If you have something like Black Lives Matter, that’s different,” Brodzinski said. “If it is information, a political slogan that is not directly affiliated with a specific entity – giving somebody who makes wine or T-shirts a monopoly essentially over using Black Lives Matter, that phrase – it’s not helping consumers.”

Limiting the ability of people to use the phrase Black Lives Matter “takes away from the public discourse,” she said.

Brodzinski said it likely would have been a different story had one specific entity immediately moved to trademark “Black Lives Matter” years ago, when it began to enter the public discourse.

“If it was just one group at the beginning that was using that message, they could at that time have probably received a registration or at least had their application successfully accepted because the examiner at the trademark office would have searched around, found that … it points to this organization when people use it so it’s OK to give them the rights,” she said. “It might have happened. It’s hard to say.”

But now?

“Right now any examiner is going to know that ‘Black Lives Matter’ is all over the place,” she said.

Several related phrases have gotten the green light, among them “Black Lives Will Matter to Them When Black Lives Begin to Matter Too Us,” “Black Lives Matter Too” and “Black Lives Matter to Me,” all for use on apparel. But Brodzinski said these applicants had to disclaim on the record that they did not have the exclusive right to the specific phrase “Black Lives Matter.”

However, even if granted, there’s a time limit, and entities often end up abandoning their trademark bids during the administrative or application process upon initial pushback.

Regardless, Brodzinski said people often misunderstand trademarks.

It’s up to the trademark holder to enforce their rights; a registered trademark does not stop anyone else from using the mark.

It’s up to, say, Disney, Ford and McDonald’s to handle monitoring and enforcement.

“In instances like this the whole point, if everyone is being altruistic, is to support this cause,” Brodzinki said. Enforcing a trademark could be seen as working against the goal of spreading the BLM cause.

Contrast that, Brodzinzki points out, with President Donald Trump’s success trademarking the “Make American Great Again” slogan, which originated with his campaign and is singularly attached to it – even as other “Make America …” phrases are not.

Outside of the federal trademark office, entities can register trademarks with states.

A search of Illinois’ official database shows that the Black Lives Matter-Springfield group succeeded last October in registering its logo — a light gray fist overlaid with a black silhouette of the state capitol above the words – each on its own line – “Black Lives Matter Springfield.”

The group’s Illinois trademark registration runs through fall of 2024, but it’s unclear to what effect.

According to Brodzinski, the group could technically stop others from using the mark via a state lawsuit, but “in a lot of states they don’t have a robust prosecution process.”

Unsuccessful trademark bids don’t mean there will be a halt in Black Lives Matter as a hashtag, or in its use on shirts, baseball caps, art or countless other items.

It’s actually the opposite.

“You don’t need a registration to use something,” Brodzinski said.  

Follow Amanda Vinicky on Twitter: @AmandaVinicky

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