On January 22, 2024, the Federal Circuit re-designated In re GO & Associates, LLC, No. 2022-1961, — F.4th — (Fed. Cir. Nov. 14, 2023) as precedential, as requested by the USPTO under Fed. Cir. R. 32.1(e).

The Federal Circuit had affirmed a refusal to register the proposed mark EVERBODY VS RACISM for failure to function as a source-indicating trademark. The trademark application had identified tote bags and various clothing items, as well as the services of "promoting public interest and awareness of the need for racial reconciliation and encouraging people to know their neighbor and then affect change in their own sphere of influence."

The fundamental purpose of a trademark or service mark is to identify and distinguish the source of a particular good or service. If the PTO were to allow the registration of marks that are used by the public in such a way that they cannot be attributed to a single source, the purpose of trademark law would be undermined to the detriment of the public who would be no longer free to express common sentiments without the threat of “paying a licensing fee to someone who sees an opportunity to co-opt a political message.”

The now-precedential decision also cited D.C. One Wholesaler, Inc. v. Chien, 120 U.S.P.Q.2d 1710 (T.T.A.B. 2016) as a prior example of “informational matter” that is unlikely to be perceive the matter as a trademark or service mark for any goods and services, where the TTAB had affirmed a refusal to register “I ♥ DC” for use on apparel and souvenirs because it “would be perceived by purchasers and prospective purchasers as an expression of enthusiasm for the city of Washington, DC,” as opposed to an indicator of the source of the goods on which it appeared.

The Federal Circuit concluded that “nothing in the Lanham Act or the PTO's so-called ‘Informational Matter Doctrine' prohibits registration of a mark containing informational matter, so long as the mark also functions to identify a single commercial source.”

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.