Social Media and the Rise of Opportunistic #Trademark Filings

By Brian Focarino
April 14, 2016

trademark-laptop-335Last June, Walter Palmer, an American dentist and recreational big game hunter, shot and killed Cecil, a southwest African lion who had been the subject of a study by Oxford University and a major attraction for Hwange National Park in Zimbabwe.  At first, Cecil’s killing drew international outrage and media attention, the hashtag #CecilTheLion spreading like wildfire on social media.  Then it drew trademark applications.

At least four different applicants currently have live trademark applications pending in the United States for CECIL THE LION, covering everything from the noble, including charitable fundraising services and information and news commentary relating to wildlife conservation, to the commercial, including dolls, trading cards, and charms.

Cecil’s case wasn’t unique in 2015.  In the aftermath of the January 2015 terrorist shootings at Charlie Hebdo in Paris, France, the hashtag #jesuischarlie (French for “I am Charlie”) emerged as a way for people around their world to show solidarity in light of the massacre.  At its height in the immediate aftermath of the attacks, #jesuischarlie was tweeted at a rate of 6,500 times per minute and was included in 3.4 million tweets in under a 24 hour period, making it one of the most popular hashtags in history.  Beyond the solidarity for victims that the hashtag expresses on its face, it also came to be understood as a means of communicating support for freedom of expression and free speech principles generally.  It too prompted a trademark rush.  Just six days after the shootings took place on January 7, 2015, the French Institut National de la Propriété Industrielle – France’s national intellectual property office – had received so many applications to register JE SUIS CHARLIE that it issued a formal statement indicating it would not register the phrase because the slogan’s wide usage stripped it of the distinctiveness required to function properly as a trademark.  The French government was forced to issue a similar statement in the immediate wake of the November 13, 2015 terror attacks in Paris.  In that instance, the French intellectual property office indicated that beginning the morning of November 14, 2015 – the day after the attacks – it had received so many applications to register PRAY FOR PARIS and JE SUIS PARIS that it was once again refusing to register the phrases at all.  This time, however, the government noted that its decision not to register the phrase in either language stemmed from its conclusion that granting registration could be “contrary to public policy” in light of the phrases’ “use and their perception by the community” in light of the terror attacks.

In the United States over the past several years, attempts have been made to register trademarks for BOSTON STRONG, BLACK LIVES MATTER, OCCUPY WALL STREET, I AM NOT TRAYVON MARTIN, HANDS UP DON’T SHOOT, SEPTEMBER 11, TERRORISM, L0VEWINS and, more recently, DRUMPF.

Social media – and particularly the ubiquity of the hashtag – has contributed to the rapid and instantaneous crystallization of phrases or words that serve as reference points for moments in history and the movements they have given rise to.  Today’s events and movements become the most viral if they can be readily captured in a single, scalable phrase or word.  The concept of metonymy – the idea that a word, name, or expression can be used as a substitute for something else with which it is closely associated – has likely been around since the earliest days of language itself.  People in the United States, for example, routinely refer to the dysfunction in Washington to refer to dysfunction within federal government, rather than dysfunction within the city itself, or Silicon Valley to refer to the technology industry.  Whereas metonyms may have developed over time in the past, hashtags on social media have led to the instantaneous creation of universal metonyms in real time, immediately “stamping” a title onto events.  These short, simple, recognizable phrases and words can be leveraged to talk about the events of the day as they unfold.  Because of their universal recognition and viral ‘fame,’ we are also beginning to see why these phrases may make attractive trademark candidates for enterprising – or exploitive – individuals and corporations.

In a technology-driven age of trademark opportunism, it’s appropriate to ask what role governments should play – if any – in granting or refusing trademark registration to these kinds of marks.  This inquiry is further complicated by the fact that these phrases and slogans have been born on a substantially borderless, global Internet.  Despite this, individual countries’ legal regimes condition the range of possible responses available to national intellectual property offices with respect to these marks.  The range of options available to the United States and France with respect to JE SUIS CHARLIE or JE SUIS PARIS, for example, are conditioned by the two countries’ different intellectual property laws, constitutions, and the values enshrined in those laws.

In the U.S., the easiest way to dismiss many trademark applications of this sort would be on the grounds that they lack the requisite distinctiveness to function as trademarks.  Many of the applied-for marks certainly have referential value, but likely don’t function as trademarks in the sense that they don’t identify a specific producer.  Another potential avenue in the U.S. could be a 2(a) scandalous rejection in the case of an application like ISIS LIVES MATTER, for example, which plays on and appropriates the popularized BLACK LIVES MATTER slogan to convey a different, many might say offensive, message.  The problem with deeming “ISIS LIVES MATTER” scandalous, however, is best illustrated in light of applications like VETERANS AGAINST ISIS.  Were the government to grant registration to VETERANS AGAINST ISIS but deny registration to ISIS LIVES MATTER, there is an argument to be made that the government would be engaging in viewpoint discrimination in contravention of the First Amendment, particularly if granting a federal trademark registration is deemed to be ‘government speech,’ an issue at the heart of on-going cases involving THE SLANTS and the REDSKINS.

France, by contrast, in addition to being able to challenge the inherent distinctiveness of such marks, has an additional avenue available to it in the form of Article L.711-3 of the French Intellectual Property Code, which empowers the French IP office to deny registration on the grounds that registration would be contrary to public order, a very flexible concept.  The European Union Intellectual Property office has a similar public order provision available to it.

As social media continues to exert significant influence on public dialogue, it is likely we will continue to see applicants attempt to register trademarks of this sort, but I also predict governments will begin to respond (and deny) these applications in increasingly predictable ways.  Although there is always the possibility that some of these marks could function in a distinct trademark sense, where the public associates the mark with a producer, it’s ultimately likely that the inability for many of these popularized hashtags and phrases to serve a source-indicating function will be their death knell.

Regardless of how governments around the world react to the increasing rate at which applicants file for these kinds of trademarks, the media attention these applications have already generated over the past year – for CECIL THE LION, JE SUIS CHARLIE and JE SUIS PARIS, among others – demonstrates the behavior is already the subject of intense scrutiny in the court of public opinion.

The Author

Brian Focarino

Brian Focarino is an Associate in the trademark, copyright and advertising group at Cooley in Silicon Valley, a Young Lawyer Fellow for the American Bar Association Section of Intellectual Property Law, and a Fellow of the Internet Law & Policy Foundry. Prior to Cooley, he was a legal intern for trademarks and digital media law at Google in Silicon Valley, a legal intern for trademark, copyright and Internet law at Verizon, and a judicial intern for The Honorable Randall R. Rader, former Chief Judge of the U.S. Court of Appeals for the Federal Circuit. For more information please visit his firm profile page.

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There are currently 1 Comment comments.

  1. nat scientist April 14, 2016 2:30 pm

    I think the ship called “Alice” has found a port here. Oakland has a useful port, and there’s a there there to send these applications for nothing to deliver but common memories. Social media is copymad media of effervescent originality and even shorter duration.