Trademark application makes news


Recent news reports have highlighted how the rapper Ye (né Kanye West) had worn a shirt bearing the phrase White Lives Matter during Paris Fashion Week. Ye received a lot of bad press for doing so. Many found the phrase offensive.

Later, it was learned that someone had filed a U.S. trademark application for the phrase White Lives Matter in association with various articles of clothing. Perhaps concerned that it was too controversial to own, the applicant assigned the application to a company owned by Ramses Ja and Quinton Ward (Civic Cipher LLC ), the Black hosts of a Phoenix radio show called Civic Cipher. Mr. Ja was quoted in the media as saying: “You just cannot go to a store and buy it unless it was for sale by Civic Cipher LLC — and I have to be careful here, I’m not sure you will ever see that.”

From a trademark perspective, several issues arise.

First, the trademark application was just recently filed. The act of filing an application, on its own, does not convey rights. One must persevere and obtain registration of the mark. In the U.S., that requires filing specimens showing use of the mark in commerce. The above quote attributed to Mr. Ja suggests that there is no current plan for Civic Cipher LLC to actually use the mark, so its eventual registration may be in doubt.

Second, as noted above, many find the phrase that makes up the mark offensive. In the U.S., that likely is no longer a bar to registration. In Canada, the phrase would likely run afoul of the section of the Trademarks Act that prohibits the registration of “any scandalous, obscene or immoral word or device.”

Third, a search of the U.S. trademark office registry discloses that there is a second application for the mark, albeit one filed after the one now owned by Civic Cipher LLC. The second application also covers various articles of clothing. This is important as if Civic Cipher LLC does not use the mark in the U.S. and its application is not granted, the way will be clear for the second application to be successfully registered — if the second applicant makes use of the mark.

The media reports seem to suggest that by owning a trademark application, Messrs. Ja and Ward’s company Civic Cipher LLC can prevent use of the phrase White Lives Matter by others. That’s simply not the case. The application would have to mature to registration in order for them to have any control over its use, and then only for the clothing and related goods listed in the registration. And they would have to use the mark — which they themselves find offensive — in order to get that mark registered.