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In a non-precedential 2023 decision, the Federal Circuit affirmed a decision by the  Trademark Trial and Appeal Board (TTAB) refusing to register “Everybody vs Racism” as a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.

14 thoughts on “Federal Circuit on TM Law’s Information Matter Doctrine

  1. 4

    Dennis,
    The school you have helped to build is good. I hope you help build all it promotes until we are not able to sustain a life on the Prarie mentality that has included all we have learned since then is either accepted or incorporated onlyb
    what is good.

  2. 3

    I suppose those not connected to the crazies spitting out the News will vote for Biden. As disgusting as you all make current events, may you reap what you sew.
    Sadly none of you give a F^&K about your
    grand children. And more sadly noted 3 degrees if separation may not extend to your personal 3.So kaboom is what you shall all reap. I will continue to fight. It may be a worthless endeavor. I am not a quitter. Let us hope this will be recorded in infamy. If not maybe all types of mankind will cease. NONE of you give a F#$K about those you have created so what are we doing? Can anyone of you answer this question?

  3. 2

    Hmm, how about “anti-racyism is still racyism”…

    1. 2.1

      “anti-racyism is still racyism”

      …said the r a c i s t ignoramus when he wasn’t complaining about the “evil” of “woke culture” and trying to equate voter suppression with a political party selecting its own candidate.

      In short, Billy is a nimrod and as this year rolls along we’ll be seeing him wallow increasingly in his own bitter drool.

      1. 2.1.1

        You are doing that projection thing again – as clearly the “rac*” label cannot be placed on me.

        Your notion of “political party selecting its own candidate” immediately along side of “equate voter suppression” is an ultimate of hypocrisy, given as more than 70% OF the people of the Democrat party have already stated that they do not want Joe Biden as their candidate, and the DNC is busy gaslighting and rigging things (AGAIN) to disenfranchise the actual people FAR MORE than any attempts of “R’s” to suppress ANY votes.

        But you be you and ‘wallow’ in your abject projections.

        As usual.

        1. 2.1.1.1

          “ the “rac*” label cannot be placed on me”

          It’s all over you, Billy. And it’s going to stay there because you certainly deserve it.

          Also: excellent work digging yourself into an even bigger hole, slimeball! Get a new script.

          1. 2.1.1.1.1

            Clearly Malcolm, your mere stating that does not make it so.

            And yet more projection from you, as you are the one that relies on the more-than-stale scripts.

            When was the last time that you had an original thought?

            Is that why you run away every time I ask you for YOUR view on the Israel/Hamas situation?

        2. 2.1.1.2

          That’s the Democratic Party. You aren’t cute & your own culty party wouldn’t have you either. Sad.

          1. 2.1.1.2.1

            What is sad, marty, is that you think that the mere term in and of itself has ANY indication of what the term actually means.

            Much like North Korea’s use of the term, eh?

          2. 2.1.1.2.2

            B-b-b-but Billy doesn’t like either party. He’s just a True Independent Thinker and all of his endless peddling of rightwing scripts is just a coincidence. If only we could be perfectly non-partisan like Billy we wouldn’t have all these problems and uppity people would just know their place.

            1. 2.1.1.2.2.1

              hardly any coincidence as MOST ALL b$ on these boards is of the Sprint Left variety.

              You wouldn’t notice (as your Sprint Left one-bucketing preclude it), but I have taken issue with authoritarianism ON BOTH SIDES of the aisle.

              Your nonsense about lack of problems is shown by your very own propensities.

              You WILL be you – much to the detriment of, well, everyone.

  4. 1

    Good write-up of a correctly decided case. Thank you!

      1. 1.1.1

        *SADLY ALL IF YOUR IGNORANCES WILL NOT SAVE ANY 9F US.
        LAWYERS SHOULD BE DENIED ENTRY TO CONGRESS. TOOOOOOO LATE

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