Proving once again that if one person can coin a phrase, another will waste no time in attempting to trademark it, it should perhaps come as no surprise that, on 6 June 2020, trademark applications were filed in the UK for the terms “I CAN’T BREATHE” (Application no. 3497640)  and “BLACK LIVES MATTER” (Application no. 3497647).

Commenting on these applications, Sanjay Kapur, trademark attorney at IP law firm Potter Clarkson said:

“Both applications seek protection for a wide range of clothing items and the ‘I CAN’T BREATHE’ mark also seeks protection for jewelry items and charitable fundraising services. The ‘I CAN’T BREATHE’ application includes the following disclaimer: This trademark is to be used for charitable work and not for personal gain on the back of recent unfortunate events.

“Although this disclaimer seems to have been provided as a way of explaining the intention behind the application, this is not how a disclaimer is used in trademark practice. This is because disclaimers are used to disclaim an element of the mark itself due to that element being non-distinctive. This use of a disclaimer will not lead to the refusal of the application but equally it will not impact on the applicant’s intended use of the mark, whatever that may be.

“It is unlikely that these two applications will be considered suitable for registration. The UK Intellectual Property Office (UKIPO) will decide whether the marks are ‘contrary to public policy or accepted principles of morality’, and we anticipate that they will rightly be refused on this basis. Essentially, this would mean that the UKIPO deems that ownership of the marks, as indicators of product/service origin, is not appropriate.

“In this case, it is highly questionable what commercial justification may exist for such applications. Firstly, it is not clear on what grounds the applicant feels it is entitled to a monopoly for these words covering clothing, jewelry and charitable services. Secondly, the intended use of the resulting registrations is also hugely questionable, since enforcement and commercialization would be extremely insensitive and likely to cause considerable public alarm and offense.

“The next step is for the UKIPO to decide whether the marks are registrable. If, contrary to our opinion, the marks are permitted for registration, they will be published for opposition purposes. At that stage, any third party wishing to oppose the applications on the grounds that they should not be registered would be able to do so.”

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