Late last year, news broke that ownership of the trademark for the phrase “White Lives Matter,” which has been categorized by the Anti-Defamation League as a “hate slogan,” was transferred to the hosts of an Arizona-based radio show focused on racial justice. These hosts—Ramses Ja and Quinton Ward—agreed to the transfer of the trademark in order to “prevent bad things from happening by owning it.” As Ja told NPR, “If we feel like someone is profiting from . . . our federally protected trademark, we can sue them and recover damages[.]” However, Ja and Ward do not have a federally protected trademark here. And they may never.
On November 2, 2022, Ja and Ward were assigned U.S. Serial No. 97/617,868, which is a trademark application that is “awaiting assignment to an examining attorney.” The application was filed under Section 1(b) of the Trademark Act, which means that, at the time of filing, the mark had not yet been used in commerce for the identified goods and services (currently listed as “Jogging suits; Shirts; Sweatpants; Sweatshirts; Tee-shirts”), but that the applicant has a bona fide intention to do so.
This is important, because use in commerce is required for all trademarks. Unlike patent law where individuals or entities can obtain a patent for, and prevent others from using, technology regardless of their own use, trademark law prevents anyone from obtaining or enforcing a mark they are not actively using in commerce.
Congress has defined “use in commerce” as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” Generally, if a trademark is placed on goods (or the accompanying container, packaging, tags, labels, etc.) and the goods are then sold and transported across state lines, there is “use in commerce.” However, “token use”—use solely for the purpose of securing trademark rights as opposed to a true interest in commercial sales—is not enough. In making this distinction, trademark examiners will look to factors such as the amount of use, the nature or quality of the transactions, and typical use within a particular industry.
Considering the “intent to use” nature of the “White Lives Matter” trademark application, registration will not issue until the mark is “in actual use in commerce on or in connection with all the goods or services specified in the application” and the applicant has filed an allegation of use stating as such, along with dates of use and specimens evidencing such use. This is where things get interesting.
When asked by CNN what they intend to do with the “White Lives Matter” trademark, Ja stated, “we plan to do nothing. . . . It will not be used[.]” However, an Amendment to Allege Use was filed shortly after, stating “[t]he mark was . . . first used in commerce at least as early as 10/16/2022, and is now in use in such commerce.” Included with this Amendment was a specimen purporting to show applicant’s use of the mark in commerce—a low resolution image of a white t-shirt with the phrase “WHITE LIVES MATTER” printed on the front and on a tag.
Have Ja and Ward had a change of heart? While it is possible, the far more likely explanation is that the alleged use is merely token in nature and designed solely to obtain a trademark registration rather than actually commercialize the “White Lives Matter” phrase. Notably, the Amendment does not identify (and the author cannot locate) where, if at all, these shirts have been or are being sold by or on behalf of Ja and Ward. As explained above, token use (e.g. selling a single shirt) would be insufficient.
The only way Ja and Ward can ultimately obtain and enforce a valid trademark for “White Lives Matter” is if they intend to and are indeed selling clothing using that phrase in commerce—the very thing they are seeking to prevent.