Federal Circuit on TM Law’s Information Matter Doctrine

by Dennis Crouch

The Federal Circuit has just reissued this important trademark decision as precedential. In re GO & Associates, 22-1961 (Fed. Cir. 2023/2024)

In a non-precedential 2023 decision, the Federal Circuit affirmed a decision by the  Trademark Trial and Appeal Board (TTAB) refusing to register “Everybody vs Racism” as a trademark for apparel, tote bags, and services promoting racial justice advocacy. The court found substantial evidence supported the TTAB’s conclusion that the slogan fails to function as a source identifier for the applicant GO & Associates’ goods and services.  Although the outcome here supports the informational matter doctrine barring registration, the court is clear that political slogans and other informational matter can be protected as trademarks so long as the applicant shows that they actually function as a trademark.

The USPTO subsequently requested that the court re-issue the opinion as precedential, citing Fed. Cir. R. 32.1(e).  In its motion, the USPTO argued that making the opinion precedential would give clarity to applicants regarding the parameters of the failure-to-function refusal and the types of evidence relevant to the analysis. The USPTO particularly focused on confusion among applicants that the doctrine imposes a categorical bar against registering marks with informational content. The opinion here is more nuanced. Although registration was refused, the opinion explains that there is no per se prohibition on registering marks containing informational content as long as the mark also serves to identify a single commercial source.  The motion for republication also notes that issuing a precedential decision could preempt future litigation on the same issue.  I previously wrote about the case here: Crouch, Failures to Function and Likelihood of Confusion: Takeaways from Two Recent Federal Circuit Trademark Decisions, Patently-O (November 17, 2023).

The Lanham Act requires that a trademark identify and distinguish the source of a good or service in order to merit protection. If the nature of a proposed mark would not allow consumers to perceive it as designating a particular source, then it cannot qualify as a trademark eligible for federal registration. The USPTO frequently applies this statutory requirement by barring “informational matter” – familiar phrases and sentiments used non-commercially by the public – from trademark registration. See, TMEP § 1202.04(b) (precluding from trademark protection “informational matter,” such as slogans, terms, and phrases used by the public to convey familiar sentiments, because consumers are unlikely to “perceive the matter as a trademark or service mark for any goods and services.”)  The fact that a mark contains informational content will raise questions about registrability, but the real question is whether the mark is “merely an informational statement” rather than serving a trademark source identification function.

In the case, the examining attorney and Board relied on dozens of examples of “Everybody vs Racism” being used by third parties, including NBA referees, church leaders, musicians, and activists, to express anti-racist sentiments rather than to indicate a single source of goods or services. The applicant GO & Associates argued these uses were irrelevant because they were not associate with goods or services in commerce. But the Board found otherwise, that the evidence of the mark’s widespread informational use outweighed GO’s commercial use. The Federal Circuit upheld this factual finding under a deferential substantial evidence standard of review. Judge Lourie’s opinion explains applicants cannot claim exclusive trademark rights that would undermine the public’s ability to express common sentiments without paying a licensing fee to someone who tries to co-opt a political message as a source identifier.

GO also argued that the Informational Matter Doctrine amounts to an unconstitutional content-based restriction on speech. But the court rejected this argument, noting that the Doctrine does not operate as a per se bar against registering informational content. If a slogan also functions to identify commercial source – such as “Make America Great Again” – it remains eligible for federal trademark registration despite containing informational content.

Contrary to GO’s position, 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.

This opinion sidesteps the speech argument, but the suggestion here is that the Informational Matter Doctrine is really just a subset of the general requirement that marks can only be registered if they actually function as a trademark, and that restriction has a sufficiently reasonable basis since it strikes at the central operational principles of trademark law.

In reissuing In re GO & Associates as a precedential opinion, the Federal Circuit cements the guidance for practitioners and examining attorneys on the threshold evidence needed to show that unregistrable information content transforms into a protectable trademark.  The basic rule then is that applicants can register marks containing political and social justice messaging, so long as those marks also serve a sufficient commercial source-identifying function.  But, the burden will be on the applicant to overcome what appears to be a presumption against registrability. In re GO & Associates will likely stand as one of the Federal Circuit’s most significant recent decisions on the inherent limitations to trademark subject matter eligibility.