August 9, 2017
A black entrepreneur from Mississippi who wants to control who gets to profit from using the most infamous racial slur in American history is waiting for the Patent and Trademark Office to decide, in the wake of a landmark U.S. Supreme Court ruling, if he can register a trademark for a variation of the N-word.
Curtis Bordenave, a business branding consultant, said that he wants to use his “nigga” brand to educate the world about the word, which also has a controversial place in the contemporary lexicon, and keep it from being used in a negative way commercially. And he’s convinced that his good intentions will simplify what’s sure to be an uneven path to getting and, if it’s approved, enforcing the trademark.
Bordenave isn’t the only party who’s applied to register an N-word-related trademark but he was first-in-line after the Supreme Court ruled June 19 inMatal v. Tam that prohibiting the registration of disparaging terms violates the First Amendment guarantee of free speech. A total of four parties, including Bordenave, have made nine applications to register variations of the N-word as a trademark since that decision, according to the PTO.
The Supreme Court’s decision means that the PTO has to grant trademark registrations for even the most offensive racial and ethnic slurs, as long as applicants meet all the other registration requirements.
The unanimous opinion left little room for interpretation. American Indian activists, who had fought for years to have the Washington Redskins football team’s trademark registrations canceled, quickly gave up their legal fight. The ruling and the Redskins victory gave a green light to register all sorts of formerly banned terms.
There have been 32 applications to register the N-word as a trademark since 1995. Nineteen of those were abandoned, which happens when an applicant gives up after a negative finding from a PTO examiner, before the ban was struck down. Thirteen applications are pending, including Bordenave’s.
Why That Word?
Bordenave said his intentions for using the offensive term as a trademark are similar to those of the Slants, the Asian-American rock band on the winning side of Matal v. Tam. Band frontman Simon Tam said he wanted to reclaim a slur against Asians and take away its power.
However, Bordenave’s plans go further than those of the rock band. He wants to control who uses the word and who profits by it—by using it himself in commerce. “We will seize the word and take over the word,” said Bordenave, whose plan is to own the word so its negative connotation can be eliminated. “It’s been a goal of mine for African-Americans to profit from the very word that’s held us down.”
He’s also thinking preemptively. “If we don’t trademark it and an organization like the KKK owns it in commerce and uses it in a negative way, then it belongs to them and that’s what I don’t want to happen,” Bordenave told Bloomberg BNA.
Bordenave has a well-coordinated plan. First, he wants public support and says he won’t go through with his application without it. To that end, he’s seeking 2 million Instagram followers.
The brand’s Instagram went live July 26, and Bordenave said he would hold off on responding to the trademark examiner, who is currently reviewing two of his applications, until he reached his goal. But Bordenave’s plan is not without its detractors.
“Seeking a way to profit financially from branding clothing and liquor with the N-word isn’t a sociological exercise, it’s just a publicity stunt,” Marc H. Morial, the president and CEO of the National Urban League, told Bloomberg BNA in an emailed statement. “The argument that we can deprive the word of its power to wound by subverting it has failed and should be abandoned. It’s a divisive word that belongs in the dark past. No one should seek to ‘claim’ it.”
Bordenave denies that his application is a publicity stunt inspired by the Supreme Court’s decision and points to his long-time commitment to the idea.
“I am the only applicant who actually attempted to file over 10 years ago, but the criticism is fair and I understand where it comes from,” he said.
Bordenave already has T-shirts, mugs, and buttons for sale, with more merchandise to come, Bordenave said, to show use of the trademark in commerce or at least legitimate plans to use it—a registration requirement.
The items have “Every Shade Every Gender” emblazoned on the front. The brand name “nigga,” incorporating an “X,” is found discreetly on the shirts’ hang tag, and on the bottom of mugs and buttons in small type. Bordenave said he placed the logo there to remove attention from the word.
“The full box package including the shirts and other items will come with an educational DVD that talks about the brand and explains the trademark,” he said. “We’re hoping to have all of that out within two weeks.”
The focus on branding—using the trademark on the hang tag rather than for decorating the products themselves—could be a successful strategy, according to Eric Ball, a trademark litigation partner at Fenwick & West, LLP.
“It makes the trademark more of an identifier and can better show the consumer the source of the item, which is the priority,” Ball told Bloomberg BNA. “However, with this word, the office may look deeper into the hang tag method to get a better meaning but they’ve routinely granted this method.” The other applicants, meanwhile, may be rejected for various reasons, Ball said.
“Some will get rejected because they were second in line,” he said. “Some will face rejection because they couldn’t show their intent of use. But others? Others will get rejected for ornamental use or informational use, neither of which shows the source of the product.”
Ornamental use means that your trademark is being used merely as a decorative feature, while informational use is when your trademark is used to inform a particular social message, but doesn’t provide the consumer with the source of the item. Both uses will result in a denied application.
Then there are the post-approval issues. If Bordenave succeeds in getting his registrations, he will have to enforce his trademark rights. For that, he must be willing to go to court, an expensive proposition. Trademark litigation in federal district court can cost up to $720,000, and even an opposition at the PTO can cost up to $95,000, according to the American Intellectual Property Law Association’s 2015 Report of the Economic Survey.
But before he can defend his trademark registrations, Bordenave has to get the PTO to approve them. His first hurdles are the large number of classes listed on his application—more than 15 on everything from apparel to television programs—and the different types of products he plans to sell using the trademark, according to Ball.
“He’s going to have a pretty hard time showing proof that will sell all of those items using that trademark,” Ball said. “If you’re listing a huge number of classes, someone can pick an item—let’s say a watch—and say, `You don’t have any watches for sale with this trademark, and they can cancel that part of your trademark.”
Bordenave should prepare for legal battles, even though the ban on disparaging trademark registrations is gone. There are multiple variations of the N-word, so Bordenave may face challenges from, or need to enforce his rights against, parties using a different form of the word, Ball said. That is a trademark principle called likelihood of confusion, where consumers may think goods are coming from a different source than they really are because the trademarks are too similar.
So if Bordenave “got a registration ending in ‘a’ and it covered T-shirts, they could enforce it against an ‘er’ t-shirt,” Ball said. But Bordenave, as the owner of the registration, would have to prove likelihood of confusion to succeed in that enforcement.
This isn’t the first time that Bordenave has tried to register a variation of the N-word as a trademark. In 2008, while the prohibition on disparaging terms was still in effect, he and his partners applied for “NIG” and “G-GA” separately, hoping to put the trademarks together in a joint venture. It didn’t work. “NIG” was denied; Bordenave and his partner reapplied July 27 for “G-GA.”
Bordenave has had other applications approved. He has three more conventional registered trademarks, including one for his company name, Business Moves, according to the PTO. His latest application may be his biggest challenge yet, but he still remains hopeful. “People who this word affects will be encouraged by how we present it and it’ll be nice to see African-Americans profit from it in the end,” he said.
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