September 22, 2021 Feature

Trademarking a Movement: The Branding of Black Lives Matter

Nicole Gaither

©2021. Published in Landslide, Vol. 14, No. 1, September/October 2021, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

On April 20, 2021, a jury found former Minneapolis police officer Derek Chauvin guilty of causing George Floyd’s death.1 The nine-minute-and-29-second video2 of Chauvin’s knee on Floyd’s neck sparked worldwide protests, resulting in a change in public attitudes toward racial injustice. The Black Lives Matter movement was the catalyst for that change.

For a while, it seemed like we would avoid the onslaught of opportunistic trademark applications at the U.S. Patent and Trademark Office (USPTO) related to tragedies. But the tragic events surrounding the deaths of Black people at the hands of law enforcement (or those acting as self-appointed law enforcement, in the case of Ahmaud Arbery) and the resulting protests finally brought us applications filed by the founders of movements such as Black Lives Matter.

Since 2015, applicants have attempted to get exclusive rights to Black Lives Matter as a brand.3 Some applicants abandoned their applications because they never responded to refusals based on the phrase being an “informational” slogan, or the USPTO did not accept the response.4

This article examines Black Lives Matter’s background, the implications of trademark protection for Black Lives Matter, and whether Black Lives Matter should be subject to trademark protection.

The History of #BlackLivesMatter

The phrase “Black Lives Matter” started as a hashtag on social media after George Zimmerman was acquitted for the murder of Trayvon Martin in 2012.5 Patrisse Cullors, Alicia Garza, and Opal Tometi founded the project after Garza posted on Facebook that “black lives matter.”6 Cullors shared the post and put a hashtag in front of the phrase. It went viral and moved from social media platforms to become the Black Lives Matter Global Network Foundation (BLM Global Foundation).7 This organization gained national recognition after the police-involved killings of Michael Brown and Eric Garner.8

The BLM Global Foundation was not set up like other social justice groups. The BLM Global Foundation considers itself to be a “collective of liberators.”9 It operates under a decentralized approach and relies on local organizers rather than national leaders. According to Cullors, “organizing is often spontaneous and not directed by one person or group of people.”10

As a result of widespread public support for the movement, changes in institutional policies and practices started to unfold as the world began to address racism. The BLM Global Foundation deemed the support for dismantling institutional racism to be a “watershed moment for Black power building” and established a $12 million fund for its activities.11 The group set aside another $6.5 million for its affiliate network.12

With support came recognition, and with recognition, the opportunists showed up. Various social media accounts—and sundry trademark applications—popped up seemingly overnight. As of this writing, more than 80 trademark applications have been filed for “Black Lives Matter” or some formative of the phrase,13 for a diversity of goods and services, from multiple different applicants. Many of them have received failure to function refusals. The USPTO has published three applications for opposition.14 These three applications use variations of “Black Lives Matter,” such as the two design marks for BLACK LIFE IS A MATTER OF FACT! ALLEN HOLLAND, ESQ15 or BLACK-AND-WHITE LIVES SAVING LIVES, “IT’S THE MOVEMENT THAT MATTERS!”16

The BLM Global Foundation itself filed its application for a stylized yellow logo mark featuring the words BLACK LIVES MATTER for “promoting public interest and awareness of the need to eradicate white supremacy and build local power to intervene in violence inflicted on Black communities by the state and vigilantes,” “retail apparel stores,” and “charitable fund raising.”17

In August 2020, Black Lives Matter Greater New York Inc. applied to protect its red, black, and green BLACK LIVES MATTER NEW YORK logo.18 In an interview with the World Trademark Review, Hawk Newsome, chairman of Black Lives Matter Greater New York, stated that trademark protection was necessary because the organization wanted to “secure it so that people can’t profit from it who haven’t shed blood for this movement.”19

After George Floyd’s death and upon learning about Breonna Taylor’s death, people looked for ways to support the Black community and its calls for police reform. Most made donations and held fundraisers for organizations focusing on these efforts. However, some donors who thought that they were supporting the Black Lives Matter movement learned that their donations were almost misdirected to the Black Lives Matter Foundation.20 The Black Lives Matter Foundation is unrelated to the BLM Global Foundation and Black Lives Matter Greater New York Inc. The Black Lives Matter Foundation has a similar name, but it has a very different mission. Its goal is to “create unity between the community and the police, which is kind of an antithetical message.”21

After speaking with a trademark attorney, Black Lives Matter Greater New York Inc. decided to file an application to register its mark.22 They hoped that allies of the movement would consider trademark protection to help fight against the “illicit activity of BLM designs.”23

However, organizations’ attempts to gain control of BLACK LIVES MATTER through trademark rights have come with resistance—from the USPTO.

The Lanham Act Matters

Not every word can be a trademark. The USPTO will not register any words or images unless they function to “indicate source and distinguish” one’s goods or services from those of others.24 Slogans and other terms that are “merely informational,” “common laudatory phrases,” or “familiar concepts or sentiments” are not registrable.25 Historically, the USPTO has issued failure to function application refusals for terms it deems to be merely informational, such as social-political slogans. Most of those refusals were based on the public’s perception of the term culled from social media, internet searches, and news articles.

The USPTO has recently taken Oprah’s “new car” approach to hand out failure to function refusals in connection with the Black Lives Matter movement. Almost every BLACK LIVES MATTER and BLM application received an office action refusing registration because Black Lives Matter and its acronym did not function as trademarks to indicate the source of goods or services.26 The refusals stated almost the same wording: “this phrase merely provides support for or affiliation with the ideals conveyed by the message.” While Black Lives Matter faced refusals, marks such as IRISH LIVES MATTER,27 SATANIC LIVES MATTER,28 OLD LIVES MATTER,29 and HOME OWNERS’ LIVES MATTER30 were registered.

The USPTO’s rationale for refusing registration for commonly used phrases and informational slogans related to movements is laudable. If someone is given exclusive rights to these phrases, are they the only ones allowed to use them and regulate the movement? Will they be the ones dictating when protests can be arranged? Will they determine how, when, where, who, and why the movement should act?

Protecting Social Movements through Trademark Registration

Movements are born from tragedies. Almost all are also the subjects of applications denied for being “merely informational” and failing to function as trademarks.

Descriptive or informational trademarks are difficult to register and difficult to enforce. Companies like Nike, Fendi, Louis Vuitton, Chanel, and Gucci may send out cease and desist letters and file lawsuits to enforce their trademark rights. It is not the same for a social movement. Businesses create and use brands for commerce. Social movements like Black Lives Matter create brands for the people, the community, and their supporters.

However, if cases such as the misdirected donations to Black Lives Matter Foundation are any indication, legal action may be necessary. According to Alicia Garza of BLM Global Foundation, the organization spends a lot of time disputing “narratives” that are not theirs because someone without authorization used their branding—the name or logo design—to “further their own political goals.”31 Garza has stated that she does not want to take legal action to “use a broken system to hold people accountable,” especially since it runs counter to the movement’s mission and purpose.32

But Garza still has concerns about people using BLM branding when their “practices or beliefs run counter to the organization.”33 However, the organization wants the brand to be available for people interested in helping. When the organization sees its logo used inappropriately, it contacts the person doing it and asks them to stop.34 The organization also uses its social media following to utilize “creative ways” to check misuse and keep it in check via the courts of Facebook, Instagram, and Twitter. Their followers give out “social sanctions” to parties instead of legal or financial sanctions. However, the organization has decided to take legal steps to protect the brand’s integrity, starting with trademark protection.

As more attention is placed on the organization, more control over its name is necessary. The organization may have to revamp its approach by educating people about who they are and what partners and chapters can and cannot do with the brand. Will this lead to a new approach to trademark protection for social movements?

Is it time to regulate these types of applications? And if so, who should be allowed to register a trademark for a movement? Should it be the founders or those who have some relationship to the tragedy? Trademark rights do not come just by coining a phrase. Rights come from use in commerce, in connection with legal goods and services, or the bona fide intent to use. However, when dealing with a phrase used by so many people and entities, the USPTO will find that the public would have no way to identify the source for particular goods and services attempting to be distinguished by the phrase. How can anyone claim that consumers will associate this phrase with their goods or services when the expression is all over the place? A Change.org petition to stop trademark registration of “Black Lives Matter” and “I Can’t Breathe” has over 33,000 signatures.35

Section 2(a) of the Lanham Act refuses registration of marks that “falsely suggest a connection with persons, living or dead, institutions, [or] beliefs, . . . or bring them into contempt, or disrepute.”36 Is this section applicable in these circumstances? Can an argument be made that the mark’s registration falsely implies a connection with the institution or belief behind Black Lives Matter? Who can make that argument and determine what is considered disparaging or a false suggestion? Does this hinder or advance trademark law? Is this the result we are looking for to prevent people from profiting from the movement?

Even if trademark rights are not granted, there are still aftereffects felt by applications being filed, processed, examined, and ultimately rejected. Having a federal trademark registration will not stop someone from branding themselves as Black Lives Matter and selling under that brand. This puts consumers at risk by believing that goods branded as Black Lives Matter are being sold as a part of the movement, and proceeds from the sale of those goods are funding the movement. In most cases, the movement and official organizations behind the movement are not the recipients of these funds.

Unfortunately, with many tragedies and movements, individuals and entities seek commercial opportunities, regardless of how tasteless they may seem. Does it take away from the movement or tragedy? A few phrases came through tragedies, such as the events that took place on September 11, 2001. LET’S ROLL was a trademark registered to the Todd M. Beamer Memorial Foundation.37 The phrase became synonymous with the courageous actions of Todd Beamer and his fellow passengers who perished on United Airlines Flight 93. The foundation applied for the registration to sell goods to raise money to help children who lost parents on Flight 93.38 According to a spokesperson for the foundation, it filed the registration application to limit the use of the phrase to benefit the foundation and its purpose.39 At the time, the USPTO had nearly 40 trademark registration applications for the phrase.40

Trademarks can be used as a tool to unify a brand, but can they be used to unify a movement? Since trademarks operate as source identifiers, can they be used to identify and unify these grassroots movements?

Trademark Use by Collective Groups

Should movements be treated the same as collective marks?41 This question was raised in a recent Wake Forest Journal of Business and Intellectual Property Law article on protecting social movements through trademark registration.42 Would a social movement benefit from the protection and control that trademarks provide? But who has the right to register, control, and monitor the use of a trademark for a social movement? And how would the designated holder of those rights enforce those rights? Who is considered the “sole group or community” that can claim rights as the official Black Lives Matter?43

Should the movement be treated as a franchisor with multiple chapters operated as franchises? This might grant the “franchisees” the right to use the trademarks through a contractual agreement, but then the franchisor would be tasked with monitoring how the franchisees use the trademarks. But the organization would be able to decide who could use the mark to ensure that their message was portrayed correctly.

If modeled on a franchise, with one entity owning all the rights and licensing those rights to other entities, this would pose an issue because these arrangements are based on contracts. Any member or group that is a part of the movement that wants to use the trademark would have to enter a contract. Can anyone see grassroots social movements taking these formal steps and ensuring that they are followed?

Fraternities and sororities are groups that come together for specific social, charitable, or academic functions. However, members of a social movement do not go through a type of “pledging” process, as found in fraternities and sororities. The members of the movement can be any individual who wants to join. The movement doesn’t have a national headquarters to serve as the leadership arm or collect “dues.” The members’ national headquarters limit the actions of individual members of a sorority or fraternity. This could be the model used in connection with the protection of the trademark rights of a movement. Everyone who is a member of the movement does not need rights to the movement’s marks.44

The problem with all of these models is that the movement must be highly organized to control who can use the trademarks. None of these approaches are likely to work in the context of a decentralized movement like Black Lives Matter,45 which wants (and needs) people to join and organize quickly (and print a sign or T-shirt for an upcoming march). Trademarks came about as a part of consumer protection law and require the trademark owner to control the quality of the goods and services bearing the trademark or risk losing those trademark rights. This is a difficult requirement to place on the leaders of a grassroots, street-based movement.

Conclusion

Who owns Black Lives Matter? Who should own Black Lives Matter? Those are still yet unanswered questions.

Without registration, does trademark use of Black Lives Matter constitute a false association with the movement? Is it deceptive, and will consumers know that the person or business they are purchasing BLM T-shirts and mugs from might be pocketing those funds and making money for themselves?

The USPTO’s approach seems to be to give no one trademark rights for Black Lives Matter, allowing anyone who wants to support the cause to use the mark, but also leaving it open to appropriation by those who have little interest in the objectives of the movement. We have seen this already by those using the language of the movement as a shield for improper conduct on the corporate level (“corporate virtue signaling”) or as a means for personal enrichment on the personal level (e.g., charity fraud).

Federal trademark registration would offer the movement “validity, control, and progression,” but it is unlikely to be an option at the USPTO any time soon.46

Since there is currently no remedy under trademark law, it might be time for the USPTO to find a way to protect social movements for the sake of public policy.

Endnotes

1. Janelle Griffith & Corky Siemaszko, Derek Chauvin Guilty of Murder in George Floyd’s Death, NBC News (Apr. 20, 2021), https://www.nbcnews.com/news/us-news/derek-chauvin-verdict-reached-trial-over-george-floyd-s-death-n1264565.

2. Eric Levenson, Former Officer Knelt on George Floyd for 9 Minutes and 29 Seconds—Not the Infamous 8:46, CNN (Mar. 30, 2021), https://www.cnn.com/2021/03/29/us/george-floyd-timing-929-846/index.html.

3. Trademark Electronic Search System (TESS), U.S. Pat. & Trademark Off., https://tmsearch.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk (select “Basic Word Mark Search (New User),” enter “Black Lives Matter” (without quotation marks) in search bar, and submit query) (last visited Aug. 23, 2021).

4. Id.

5. See Ryan W. Miller, Black Lives Matter: A Primer on What It Is and What It Stands For, USA Today (July 11, 2016), https://www.usatoday.com/story/news/nation/2016/07/11/black-lives-matter-what-what-stands/86963292.

6. Id.

7. See generally Herstory, Black Lives Matter, https://blacklivesmatter.com/herstory (last visited Aug. 23, 2021).

8. Miller, supra note 5.

9. About, Black Lives Matter, https://blacklivesmatter.com/about (last visited Aug. 23, 2021).

10. Miller, supra note 5.

11. Aaron Morrison, Black Lives Matter Global Network Foundation Establishes $12M Grant Fund, USA Today (June 18, 2020), https://www.usatoday.com/story/news/nation/2020/06/18/black-lives-matter-global-network-found-establishes-12-m-grant/3212637001.

12. Id.

13. See supra note 3.

14. Id.

15. U.S. Trademark Application Serial Nos. 90/090,919 and 90/090,930 (filed Aug. 4, 2020).

16. U.S. Trademark Application Serial No. 90/151,278 (filed Sept. 1, 2020).

17. U.S. Trademark Application Serial No. 90/055,053 (filed July 15, 2020).

18. U.S. Trademark Application Serial No. 90/107,704 (filed Aug. 12, 2020).

19. Tim Lince, Controlling Black Lives Matter: The Battle to Trademark a Movement, World Trademark Rev. (Sept. 8, 2020), https://www.worldtrademarkreview.com/brand-management/controlling-black-lives-matter-the-battle-trademark-movement.

20. See Sheldon Klein & Hannah Lutz, Trademark Lessons from BLACK LIVES MATTER Name Confusion, IPWatchdog (July 7, 2020), https://www.ipwatchdog.com/2020/07/07/trademark-lessons-black-lives-matter-name-confusion/id=123080.

21. A Company That Profits Off of the Black Lives Matter Movement, All Things Considered (June 16, 2020), https://www.npr.org/2020/06/16/878852994/a-company-that-profits-off-of-the-black-lives-matter-movement.

22. Lince, supra note 19.

23. Id.

24. U.S. Pat. & Trademark Off., Examination Guide 2-17: Merely Informational Matter (July 2017), https://www.uspto.gov/sites/default/files/documents/Merely_Informational_Matter_Exam_Guide_July_2017.doc.

25. Id.

26. See supra note 3.

27. Registration No. 5,019,218 (Aug. 9, 2016).

28. Registration No. 6,206,971 (Nov. 24, 2020).

29. Registration No. 6,106,463 (July 21, 2020).

30. Registration No. 6,304,676 (Mar. 30, 2021).

31. Diana Budds, Black Lives Matter, the Brand, Fast Co. (Sept. 14, 2016), https://www.fastcompany.com/3062127/black-lives-matter-the-brand.

32. Id.

33. Id.

34. Id.

35. See Orlando Gittens, Stop the Trademark Registration of Black Lives Matter & I Cant Breathe, Change.org (June 15, 2020), https://www.change.org/p/intellectual-property-office-stop-the-trademark-registration-of-black-lives-matter-i-cant-breathe.

36. 15 U.S.C. § 1052(a).

37. Registration No. 2,691,610 (Feb. 23, 2003).

38. Michael Okwu, Flight 93 Charity Seeks “Let’s Roll” Trademark, CNN (Feb. 2, 2020), https://www.cnn.com/2002/US/02/02/beamer.trademark/index.html?related.

39. Id.

40. Id.

41. A collective mark is a trademark or service mark “used by the members of a cooperative, an association, or other collective group or organization, or . . . which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce.” 15 U.S.C. § 1127. Compare this to a certification mark, which is “any word, name, symbol, or device, or any combination thereof . . . used by a person other than its owner, or . . . which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register . . . to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.” Id.

42. MaKenna Rogers & Brittany Wages, Trademarking Social Movements Matter, 17 Wake Forest J. Bus. & Intell. Prop. L. 372, 380 (2017).

43. Id. at 383 (quoting Mohegan Tribe of Indians of Conn. v. Mohegan Tribe & Nation, Inc., 769 A.2d 34 (Conn. 2001)).

44. Id. at 398 (“[I]ndividuals in social movements should not receive ‘free reign’ to use the mark simply because they self-identify with the mark.”).

45. The success of the movement has caused some dissension in the ranks. In December 2020, 10 BLM Global Foundation chapters took steps to sever ties with the organization. Maya King, Black Lives Matter Power Grab Sets Off Internal Revolt, Politico (Dec. 10, 2020), https://www.politico.com/news/2020/12/10/black-lives-matter-organization-biden-444097. They felt that Patrisse Cullors, the executive director, overstepped her bounds and made decisions without input from the members, who thought they had an equal say. There was a disconnect around the scope and focus of Black Lives Matter’s new push to focus on “national politics over local fights for police reform.” Id. Many of the chapters were unaware that the leaders had shifted their efforts and felt that this reflected “a growing gap” between the chapters and national leadership. Some of these chapters are no longer affiliated with the BLM Global Foundation but said they would continue the work “under the Black Lives Matter banner.” Id. As one local leader stated, “People recognize our power within our communities. We’re not a brand. We are a revolution.” Id.

46. Rogers & Wages, supra note 42, at 400 (citing 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 2:2 (4th ed. 2003)).

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Nicole Gaither is a partner at Parlatore Law Group in New Orleans, Louisiana, where she focuses her practice on trademark and copyright protection, enforcement, and monetization.