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Ye’s ‘White Lives Matter’ Shirt and Trademark Law: Explained

Nov. 7, 2022, 5:08 PM

Two radio hosts hope to use a “White Lives Matter” trademark to prevent rapper-turned-designer Ye and others from profiting off that controversial slogan by placing it on shirts and other merchandise. But US law presents numerous hurdles before that intellectual property right can be enforced.

The artist formerly known as Kanye West spawned controversy by wearing a ‘White Lives Matter’ shirt to a fashion show last month. The slogan is widely perceived as a racist rebuttal to the Black Lives Matter movement, itself a response to ongoing police killings of Black people.

If they secured a trademark, Ramses Ja and Quinton Ward, the Phoenix-based hosts of the social justice program Civic Cipher, may well send cease-and-desist letters to sellers of “White Lives Matter” shirts as they promised to do after Ye debuted his shirt. But, based on public information, legal precedent, and US Patent and Trademark Office filings, the success of those notices or other enforcement actions is less than certain.

Ja and Ward have been celebrated in various forums since announcing their intent to stop Ye from profiting from broad dissemination of the phrase. US trademark law, however, isn’t designed to evaluate, protect exclusivity over, or bar messages, no matter how disagreeable they may be. Its explicit purpose is to prevent consumer confusion.

Here’s a look at how trademark law applies to “White Lives Matter” and other slogans people want to put on shirts—and stop others from doing the same.

1. Do Ja and Ward own the trademark?

That’s a more complicated question than it seems, but probably not.

Under US law, trademark rights stem from using a word, emblem, or other signal in commerce to indicate that you are the source of goods or services. They exist with or without a registration with the US Patent and Trademark Office, though a registration makes life easier in court. In short, without using the mark in commerce, there’s no trademark to enforce.

Ja and Ward have a pending trademark application, according to the PTO’s database. An examiner will review it to ensure the registry isn’t confusingly similar to any registered marks or pending applications covering similar products, and that it functions as a trademark in the examples of use provided by the applicant, known as specimens. But a pending application is legally useless if there aren’t actually trademark rights—that is, if the mark hasn’t been used in commerce.

Ja and Ward didn’t respond to a request for comment sent to Civic Cipher.

2. Could the trademark soon be registered?

Even if Ja and Ward sold White Lives Matter merchandise in a bid to establish use, they still might not be able to enforce—or even secure registration for—a trademark.

Often when phrases achieve a form of viral status, people rush to try to register a trademark so they can “own” it. But that’s not what trademarks are for. Fundamentally they’re consumer—not brand—protection laws. Generally, if consumers aren’t confused into thinking you made something you didn’t, trademark law doesn’t really care.

The most common genre of the futile phrase-trademarking phenomenon is slapping words on t-shirts. PTO regulations make clear that subject matter—expressly including “slogans"—that “is merely a decorative feature does not identify and distinguish the applicant’s goods,” and “does not function as a trademark.”

For example, the first “White Lives Matter” trademark applications in 2016—logos featuring the words and a white marlin—were abandoned after initial refusals for exactly that reason. The examiner said that in the submitted specimen, the purported mark was “merely a decorative or ornamental feature of applicant’s clothing and, thus, does not function as a trademark to indicate the source.”

3. How do you even get a t-shirt trademark?

Applicants can get around an initial refusal involving a t-shirt specimen by submitting a new example showing the mark on a hang-tag or interior label of the shirt—places where consumers expect indications of the shirt’s maker, not decoration.

But even that becomes a tougher sell when it comes to catchphrases and social or political statements. They’re less likely to be viewed by consumers as indicators of who made it, but rather the message the wearer wants to express. Unless consumers believed “White Lives Matter” shirts were made by one particular company, Ja and Ward likely would be unable to block others from printing shirts with the slogan.

In one case, even after submitting a variety of tag and website specimens to register several “Lettuce Turnip the Beet” marks, LTTB LLC failed to stop Redbubble users from printing shirts with the phrase. The US Court of Appeals for the Ninth Circuit said consumers bought shirts with the slogan because of the triple-pun, not because they believed they were buying a shirt produced by or affiliated with LTTB LLC.

The ruling generated mixed reaction among attorneys over both the outcome and the panel’s reasoning. But it showed that even a full blown brand with registered marks being used in commerce may not be able to stop others from using their marks on shirts if consumers’ primarily see the mark as a catchy slogan or socio-political message rather than a source indicator.

4. Wait, so could I sell a shirt with a Nike swoosh?

First of all, a multinational conglomerate can always make your life more expensive if they’re so motivated.

But also, no, they can still likely throw a legitimate legal block. Remember, this hinges on consumer protection: if you saw a shirt with a Nike swoosh on it in a store, you’d probably think it was made by Nike. And others who try to sell shirts with swooshes would likely cause consumer confusion, the very thing trademark protections are designed to prevent.

Read more:

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editors responsible for this story: Adam M. Taylor at ataylor@bloombergindustry.com; Jay-Anne B. Casuga at jcasuga@bloomberglaw.com