In a sixty-page opinion, the Board upheld a refusal to register the proposed mark NIGGA (in standard character form) for various clothing items, finding that the term fails to function as a trademark in view of its widespread use on clothing offered by multiple third parties. The Board rejected Applicant Snowflake's argument that the Supreme Court decision in Tam requires registration of racial epithets because of their expressive nature. "Applicant has no constitutional right to register NIGGA if it is otherwise ineligible for registration under the Trademark Act." In re Snowflake Enterprises, LLC, Serial No. 87496454 (June 24, 2021) [not precedential] (Opinion by Judge Christopher Larkin).
The Board unsurprisingly agreed with Examining Attorney Kevin G. Crennan that Tam "does not dictate the result here."
To be very clear on this issue, the Supreme Court has ruled that the USPTO may not refuse registration of a proposed mark under the invalidated viewpoint-discriminatory provisions of Section 2(a) of the Trademark Act, which were held to violate the First Amendment, but neither Tam nor Brunetti requires the USPTO to register a term simply because it is a racial epithet if it is otherwise unregistrable under any other provisions of the statute.
The fact that a racial epithet has an expressive component does not make it automatically registrable. Expressive messages may still be refused registration "as a commonplace term, message, or expression pursuant to Sections 1, 2, and 45 of the Trademark Act. In short, Snowflake does not have a constitutional right to register the term NIGGA if it is otherwise ineligible for registration."
The Board then reviewed its precedents on failure-to-function refusals, observing once again that "[t]he critical inquiry in determining whether a proposed mark functions as a trademark is how the relevant public perceives it." "Matter that is widely used to convey ordinary or familiar concepts or sentiments, or social, political, religious, or similar informational messages that are in common use, would not be perceived as indicating source and is not registrable as a mark.”
The Examining Attorney submitted webpages depicting clothing and other items displaying the word "nigga" or "niggas," as well as social media pages displaying "#nigga."
Snowflake argued that the USPTO provided no "actual evidence" that NIGGA does not function as a trademark, but only speculation and conjecture. It further maintained that the evidence was not authenticated as bearing a date prior to the application filing date. And it asserted that the USPTO had failed to show that the term lacks expressive content. The Board was not impressed.
The record shows that NIGGA is a “commonplace term” with widely understood meanings, “both in general parlance and on the goods at issue,” 40-0, 2021 USPQ2d 253, at *25, “that merely conveys . . . familiar, well-recognized concept[s] or sentiment[s].” “As a result, consumers will not perceive [NIGGA] appearing on [clothing] as pointing uniquely to Applicant as a single source,” Peace Love World Live, 127 USPQ2d at 1403-04, and it thus fails to function as a mark for those goods for this reason alone.
The USPTO is not required to prove "to a moral certainty that consumers will not perceive NIGGA to function as Applicant's mark" It is sufficient that the evidence "is competent to suggest that upon encountering Applicant’s ‘mark’, prospective purchasers familiar with such widespread non-trademark use are unlikely to consider it to indicate the source of Applicant’s goods.’” Team Jesus, 2020 USPQ2d 11489, at *6 (emphasis added) (quoting DePorter, 129 USPQ2d at 1302).
As to authentication of the third-party evidence, Snowflake did not cite any authority for the proposition that the USPTO's evidence must be ignored because it was not authenticated as being dated prior to the filing date.
The Board’s failure-to-function cases do not impose such a requirement, and they have invariably considered evidence of third-party use that post-dated the filing dates of the subject applications. As discussed above, the “critical inquiry in determining whether a proposed mark functions as a trademark is how the relevant public perceives it,” 40-0, 2021 USPQ2d 253, at *24, and the public’s perception is not “frozen” as of the arbitrary filing date of an application.
Snowflake's third argument was likewise unavailing in light of the evidence of third-party use.
Finally, Snowflake threw in a few more constitutional claims: that the USPTO violated the First Amendment by refusing registration "based on the alleged viewpoint of the speech," and that "[s]imilar marks must be treated similarly under Matal v. Tam." The Board pointed out that Snowflake misunderstands the nature of a failure-to-function refusal; the proposed mark was not refused registration because it is a racial epithet or because of any viewpoint it expresses. Registration was refused because NIGGA is a commonplace and commonly understood term that will not be perceived as a source indicator.
The Board similarly rejected Snowflake's disparate treatment argument. As previously observed, Tam does not require that the USPTO register every racial slur. It must assess each application to register on its own record. While consistency in examination is "highly desirable," that desire must yield to the proper determination of registrability under the Trademark Act and Rules.
And so, the Board affirmed the refusal to register.
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TTABlogger comment: This opinion should be precedential. I hope this case is appealed so that we will have the definitive word from the CAFC and the Supreme Court.
Text Copyright John L. Welch 2021.
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