In Re GO & ASSOCIATES, LLC

Case: 22-1961    Document: 43     Page: 1   Filed: 01/22/2024




   United States Court of Appeals
       for the Federal Circuit
                  ______________________

            IN RE: GO & ASSOCIATES, LLC,
                        Appellant
                 ______________________

                        2022-1961
                  ______________________

     Appeal from the United States Patent and Trademark
 Office, Trademark Trial and Appeal Board in No.
 88944728.
                  ______________________

  NONPRECEDENTIAL OPINION ISSUED: November 13, 2023
    PRECEDENTIAL OPINION ISSUED: January 22, 2024 ∗
               ______________________

     PAUL W. KRUSE, Spencer Fane LLP, Nashville, TN, for
 appellant. Also represented by KYLE L. ELLIOTT, Kansas
 City, MO.

      BRADLEY HINSHELWOOD, Appellate Staff, Civil Divi-
 sion, United States Department of Justice, Washington,
 DC, for appellee Katherine K. Vidal. Also represented by
 BRIAN M. BOYNTON, DANIEL TENNY; CHRISTINA J. HIEBER,
 FARHEENA YASMEEN RASHEED, MARY BETH WALKER, Office
 of the Solicitor, United States Patent and Trademark Of-
 fice, Alexandria, VA.
                    ______________________


    ∗   This opinion is being issued as a precedential opin-
 ion pursuant to a request by the U.S. Patent and Trade-
 mark Office under Fed. Cir. R. 32.1(e).
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 2                                   IN RE: GO & ASSOCIATES, LLC




     Before LOURIE, REYNA, and HUGHES, Circuit Judges.
 LOURIE, Circuit Judge.
      GO & Associates, LLC (“GO”) appeals from a decision
 of the United States Trademark Trial and Appeal Board
 (“the Board”) affirming the examining attorney’s final re-
 fusal to register GO’s applied-for mark: “EVERYBODY VS
 RACISM.” In re GO & Assocs., LLC, No. 88944728, 

2022 WL 1421542

 (T.T.A.B. Apr. 20, 2022) (“Decision”). Because
 substantial evidence supports the Board’s conclusion, we
 affirm.
                           BACKGROUND
     On June 2, 2020, GO filed an application seeking reg-
 istration on the principal register of “EVERYBODY VS
 RACISM” in standard characters. It identified the goods
 and services as:
            Tote bags;
            T-shirts, hoodies as clothing, tops as cloth-
            ing, bottoms as clothing, and head wear;
            and
            Promoting public interest and awareness of
            the need for racial reconciliation and en-
            couraging people to know their neighbor
            and then affect change in their own sphere
            of influence.
 J.A. 32.
      In a non-final office action, the examining attorney re-
 fused to register the mark because it failed to function as a
 source identifier for GO’s goods and services. J.A. 40. Ra-
 ther, the examining attorney observed, the mark was “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.” 

Id.

 As support for the refusal, the examiner cited dozens of ex-
 amples of the mark being used in informational (rather
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 IN RE: GO & ASSOCIATES, LLC                                 3



 than source-identifying) ways. 

Id.

 For example, the exam-
 iner provided evidence that the mark had been used by ref-
 erees in the National Basketball Association; in titles of rap
 songs, podcasts, church sermons, and YouTube videos; and
 on various articles of clothing. See 

id.

 at 43–96 (cited evi-
 dence).
     GO responded by arguing that its uses of the mark
 were source-identifying, while those relied upon by the ex-
 amining attorney were “merely ornamental third party
 uses of EVERYBODY VS RACISM on clothing,” which
 could not function as a trademark. Id. at 106. It also ar-
 gued that the third-party uses of the mark in speech, rap
 songs, podcasts, church sermons, and the like did not ren-
 der the mark incapable of functioning as a trademark. Id.
 at 108. To support its position, GO submitted search en-
 gine optimization evidence, allegedly showing that the
 mark was “almost never used or searched” before GO began
 using it in May 2020, and that GO’s successful policing of
 the mark throughout the summer of 2020 led to “a signifi-
 cant drop in searches.” Id. at 106–08.
      But the examining attorney was not persuaded and
 concluded that competitors’ ornamental uses of the mark
 only reinforced the fact that consumers would likely view
 the mark “as a sentiment rather than a source.” Id. at 183
 (“The evidence showing the wearing of shirts with
 ‘EVERYBODY VS RACISM’ by NBA referees during their
 protest walk out shows that they wore the shirts to convey
 meaning, and that meaning was understood by those who
 saw the referees.”). The examining attorney also observed
 that GO’s search engine evidence showed that public use of
 the mark aligned with the general timeline of the “heated
 anti-racism protests throughout the nation in the wake of
 the George Floyd killing.” Id. That evidence therefore did
 little to show that the public perceived the mark as a source
 identifier. Because granting GO the right to exclude others
 from using the mark to promote racial reconciliation
 “would seriously impede the heartfelt need of citizens of the
 country to express that everybody should be against
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 4                                IN RE: GO & ASSOCIATES, LLC




 racism,” the examining attorney finally refused registrabil-
 ity of the mark. Id.
     GO appealed to the Board. Finding that the record as
 a whole “show[ed] wide use of the proposed mark in a non-
 trademark manner to consistently convey an informa-
 tional, anti-racist message to the public,” as opposed to a
 source identifier of GO’s goods and services, the Board af-
 firmed the examiner’s refusal to register the mark. Deci-
 sion at *7, *10.
     GO appeals from the Board’s decision. We have juris-
 diction under 

28 U.S.C. § 1295

(a)(4)(B) and 

15 U.S.C. § 1071

(a).
                         DISCUSSION
      The Lanham Act conditions the registrability of any
 mark on its ability to distinguish an applicant’s goods and
 services from those of others. See 

15 U.S.C. §§ 1052

, 1053.
 In other words, it is a threshold requirement of registrabil-
 ity that the mark “identify and distinguish” the goods and
 services of the applicant from those of others, as well as
 “indicate the source” of those goods and services. 

Id.

 § 1127; Jack Daniel’s Props., Inc. v. VIP Prods. LLC,
 

599 U.S. 140

, 146 (2023) (“[A] trademark is not a trade-
 mark unless it identifies a product’s source (this is a Nike)
 and distinguishes that source from others (not any other
 sneaker brand).”); Abitron Austria GmbH v. Hetronic Int’l,
 Inc., 

600 U.S. 412

, 429 (2023) (Jackson, J., concurring) (“It
 is clear beyond cavil that what makes a trademark a trade-
 mark under the Lanham Act is its source-identifying func-
 tion.”).
     As we recently observed, “whether a proposed mark is
 a source identifier typically arises before us in the context
 of whether the proposed mark is descriptive under
 

15 U.S.C. § 1052

(e).” In re Vox Populi Registry Ltd.,
 

25 F.4th 1348

, 1351 (Fed. Cir. 2022) (collecting cases). But
 “the source identifier requirement is broader than just
 whether a proposed mark is generic or descriptive,” and
 typically focuses on how the mark is used in the
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 IN RE: GO & ASSOCIATES, LLC                                 5



 marketplace and how it is perceived by consumers. See id.;
 see also In re Light, 

662 F. App’x 929

, 934–35 (Fed. Cir.
 2016) (affirming Board’s refusal to register a mark contain-
 ing over 570 words arranged in column format because the
 “sheer number and visual display” of the words made it
 “significantly more difficult” for the public to perceive the
 mark as a unitary trademark (internal quotation marks
 and citation omitted)); D.C. One Wholesaler, Inc. v. Chien,
 

120 U.S.P.Q.2d 1710

 (T.T.A.B. 2016) (refusing 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). If the nature of a proposed mark
 would not be perceived by consumers as identifying the
 source of a good or service, it is not registrable. See Jack
 Daniel’s, 599 U.S. at 145. As relevant here, the PTO en-
 forces the source-identifying statutory requirement, in
 part, by prohibiting the registrability of what it calls “in-
 formational matter.” 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.”). 1
      Whether or not a mark functions as a source identifier
 is a question of fact that we review for substantial evidence.
 Vox Populi, 29 F.4th at 1351–52. A finding is supported by
 substantial evidence if a reasonable mind might accept the
 evidence as adequate to support the finding. Consol. Edi-
 son Co. v. NLRB, 

305 U.S. 197, 229

 (1938). Applying that
 standard to the case before us, we conclude that the Board’s
 determination that “EVERYBODY VS RACISM” does not
 function as a source identifier for GO’s products (i.e., tote
 bags and apparel) or services (i.e., promoting awareness of


     1   Throughout its brief, GO refers to this general rule
 as the “Informational Matter Doctrine.”
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 6                                IN RE: GO & ASSOCIATES, LLC




 the need for racial reconciliation) was supported by sub-
 stantial evidence.
      In reaching its conclusion, the Board properly consid-
 ered the evidence of record, which included not only the
 third-party evidence identified by the examining attorney,
 but also GO’s specimens and other evidence of its own use
 of the mark. See Decision at *3–4. Based on the totality of
 evidence, the Board agreed with the examining attorney
 that the third-party uses of the mark “show[] that ‘every-
 body vs racism’ is commonly used in an informational and
 ornamental manner on clothing items, tote bags, and other
 retail items sold by third-parties to convey an anti-racist
 sentiment.” Id. at *6. The Board also found that the evi-
 dence showed that the mark frequently appeared “in opin-
 ion pieces, in music, podcasts, and YouTube videos, and by
 organizations (websites) that support efforts to eradicate
 racism.” Id. Considering the diversity and breadth of
 third-party uses, the Board found that GO’s own specimens
 and uses were insufficient to render the mark source-iden-
 tifying. Id. at *7 (“As to [GO’s] services, consumers would
 perceive EVERYBODY VS RACISM as merely an informa-
 tional statement against racism rather than a service
 mark.”). And significantly, as the Board observed, GO did
 not argue that any of the dozens of third-party uses of
 “EVERYBODY VS RACISM” were trademark uses at-
 tributable to GO—a finding GO does not challenge on ap-
 peal. Id.; cf. In re Nat’l Ass’n to Advance Black Birth, No.
 90581377, 

2022 WL 4385036

, at *6 (T.T.A.B. Aug. 23, 2022)
 (“The record indicates that the mark, as used on the speci-
 mens, would be associated with Applicant, the National As-
 sociation to Advance Black Birth, by itself, even though it
 may also be used by third parties.” (emphasis added)).
     GO’s challenge on appeal amounts to nothing more
 than a disagreement with the weight the Board assigned
 to the conflicting evidence. See, e.g., GO Br. at 14 (“[T]he
 Board discounted [GO]’s specimens and evidence critical to
 understanding a modern consumer’s perception of the
 Mark, and instead relied on less convincing and irrelevant
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 IN RE: GO & ASSOCIATES, LLC                                 7



 information.”). But the Board properly considered both
 GO’s uses and third-party uses when assessing how the
 public would likely perceive the mark. And reweighing the
 evidence “is not the role of this court.” In re Charger Ven-
 tures LLC, 

64 F.4th 1375

, 1381 (Fed. Cir. 2023).
     Contesting this conclusion, GO asserts that “[p]er se re-
 fusals based on the Informational Matter Doctrine are un-
 constitutional” because they “involve[] content-based
 discrimination that is not justified by either a compelling
 or substantial government interest.” GO Br. at 8–9 (quot-
 ing In re Elster, 

26 F.4th 1328

, 1331 (Fed. Cir. 2022), cert.
 granted sub nom. Vidal v. Elster, 

143 S. Ct. 2579

 (2023)).
 This argument is meritless.
      As an initial matter, Elster is inapposite. In that case,
 there was no issue as to whether or not the applied-for
 mark, “TRUMP TOO SMALL,” functioned as a source iden-
 tifier. See id. at 1330. The same is true for the other reg-
 istered marks GO cites, such as “MAKE AMERICA
 GREAT AGAIN,” 

Registration No. 5,020,556

; “The Slants,”
 Matal v. Tam, 

582 U.S. 218

 (2017); and “FUCT,” Iancu v.
 Brunetti, 

139 S. Ct. 2294

 (2019).
      What is more, however, is that GO’s constitutional ar-
 gument is based on a faulty premise: that the Patent and
 Trademark Office’s (“PTO”) application of the so-called “In-
 formational Matter Doctrine” results in the per se refusal
 of any mark that contains informational matter, regardless
 whether or not consumers perceive the mark as source-
 identifying. That is not true. Indeed, one can immediately
 envision many marks, such as GO’s own example, MAKE
 AMERICA GREAT AGAIN, that contain informational
 matter (e.g., widely used slogans), but nevertheless func-
 tion as source identifiers. Consider, for example, Nike’s
 “JUST DO IT,” De Beers’s “A DIAMOND IS FOREVER,”
 or Verizon’s “CAN YOU HEAR ME NOW?” The fundamen-
 tal 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
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 8                                  IN RE: GO & ASSOCIATES, LLC




 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.” De-
 cision at *10 (citing J.A. 298); cf. Jack Daniel’s, 599 U.S. at
 157 (deeming it the “cardinal sin” of the Lanham Act to un-
 dermine the source-identifying function of a trademark).
 Contrary to GO’s position, nothing in the Lanham Act or
 the PTO’s so-called “Informational Matter Doctrine” pro-
 hibits registration of a mark containing informational mat-
 ter, so long as the mark also functions to identify a single
 commercial source. On this record, “EVERYBODY VS
 RACISM” fails to meet that requirement. We therefore re-
 ject GO’s constitutional challenge.
      We have considered GO’s remaining arguments, and
 none has merit. Accordingly, because we find that substan-
 tial evidence supports the Board’s conclusion that the pub-
 lic is unlikely to associate the mark “EVERYBODY VS
 RACISM” as a source identifier of GO’s goods and services,
 we affirm.
                         CONCLUSION
     For the foregoing reasons, we affirm the Board’s re-
 fusal to register “EVERYBODY VS RACISM.”
                         AFFIRMED