Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1083579 Filing date: 09/22/2020

IN THE PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 87496454 Applicant snowflake enterprises, llc Applied for Mark NIGGA Correspondence SNOWFLAKE ENTERPRISES, LLC Address 822 KING ST., UNIT 111 ALEXANDRIA, VA 22314 UNITED STATES Primary Email: [email protected] 3122032898

Submission Appeal Brief Attachments reply - NIGGA FInal OA 031720 - 09-10-2020 - FINAL - FOR FIL- ING.pdf(265979 bytes ) Filer's Name Steven Andrew Maynard Filer's email [email protected] Signature /Steven A Maynard/ Date 09/22/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE TRADEMARK APPLICATION – PRINCIPAL REGISTER

In re Application of ) SNOWFLAKE ENTERPRISES, LLC ) Int’l Class 25 ) Serial No. 87/496454 ) Examiner: Kevin Crennan Application Date: June 19, 2017 ) Law Office 113 ) Mark: “NIGGA” ) ______)

APPEAL BRIEF AND RESPONSE TO FINAL OFFICE ACTION DATED MARCH 17, 2020

Applicant Snowflake Enterprises, LLC responds to and hereby appeals the refusal of the

Final Office Action dated March 17, 2020 for U.S. Serial No. 87/496454 to the mark “NIGGA” as follows, and respectfully requests the refusal be withdrawn.1

Introduction

The question of whether a common racial epithet can function as a trademark was decided by a unanimous Supreme Court in Matal v. Tam – a common racial epithet, because it has an expressive component, does function as a trademark and must register. The Final Office

Action, dated March 17, 2020, completely ignores Matal v. Tam, clearly the most analogous mark, a common racial epithet, in the most analogous and legally binding case. The subject mark, NIGGA, must register for the same reasons the mark THE SLANTS was found to have a trademark function and was registerable in Matal v. Tam.

1 Applicant Snowflake Enterprises, LLC has three applications pending for the mark “NIGGA”: 1) Serial No. 87/496454, Class 25, 2) Serial No. 87/507414, Class 32 and, 3) Serial No. 87/507483, Class 33. All three applications have been refused for the same reason. The refusal of all three applications is being appealed.

1 The Final Office Action ignores Matal v. Tam and the clear legal proposition that common racial slurs contain expressive content and therefore function as . The Office has conjured a back-door around the unconstitutional ban on marks it finds offensive, arguing now that a mark is not offensive but rather so commonly offensive it can never function as a trademark. This new so-called “commonality of offense” test is no path around Matal v. Tam, but still runs headlong into the Supreme Court’s recognition that common racial slurs have an expressive component and function as trademarks.

The application for the subject mark NIGGA was filed June 19, 2017. On February 28,

2018, the Office issued a Suspension Letter (by Senior Attorney Myriah Habeeb). In the

Suspension Letter, the applied-for mark was found “immoral and scandalous,” and the application was first suspended on that rationale, pending the final outcome of Iancu v. Brunetti.

In the February 28, 2018 Office Action, the Office took a factual and evidentiary position stating,

“Here, the vulgar and scandalous meaning of NIGGA will be the only perceived connotation of that term when used in connection with the identified goods and services. Based on the evidence attached hereto, the mark would be considered immoral and scandalous by a substantial composite of the general public.”

On August 27, 2018, Applicant responded that the Federal Circuit ruled in In re Brunetti that the scandalousness provision of the Lanham Act violates the First Amendment of the

Constitution because it impermissibly restricts free speech. In re Brunetti, 877 F.3d 1330 (Fed.

Cir. 2017). Therefore, “the only perceived connotation” for the mark “NIGGA” proffered by the

Office could not constitutionally be used as a basis to deny registration.

Nevertheless, despite clear and binding Federal Circuit precedent, the application was again suspended by Office Action dated December 6, 2018 (by Senior Attorney Myriah Habeeb)

2 over Applicant’s argument that to do so was unconstitutional. The Office maintained the argument that “the vulgar and scandalous meaning of NIGGA will be the only perceived connotation of that term.”

Applicant responded again on August 28, 2019, this time informing the Office that the

Supreme Court had issued a final decision in Iancu v. Brunetti, affirming the Federal Circuit.2

The next Office Action was dated October 9, 2019 (by Trademark Examining Attorney

Kevin C. Crennan) and admitted the Supreme Court held in Iancu v. Brunetti that the

“scandalous” provision of the Lanham Act is unconstitutional under the First Amendment. The

Office Action dated October 9, 2019 stated Applicant’s mark “NIGGA” “would have been subject to refusal under the scandalous/immoral provision under Section 2(a)” based on its earlier factual finding that “the vulgar and scandalous meaning of NIGGA will be the only perceived connotation of that term.”

Without a constitutional leg to stand on, the Office needed to “get creative” to refuse this vulgar mark, so it tried to change the facts. Consequently, the Office in October 2019 took a factually opposite and disingenuous position, contradicting the Office’s own earlier factual and evidentiary finding. The Office in October 2019 said that the mark “NIGGA” is not known as a racial slur or scandalous term at all but rather that “NIGGA” is really such a neutral and positive term, to some undefined set of , that it is “a commonplace term widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or

2 In Iancu v. Brunetti, the mark “FUCT” was registerable, despite the Office’s argument that Brunetti's website and products contained imagery, near the mark, of "extreme nihilism" and "antisocial" behavior that the Board thought communicated “misogyny, depravity, [and] violence” and was as a result “extremely offensive.” It is “a core postulate of free speech law: The government may not discriminate against speech based on the ideas or opinions it conveys.” As the Supreme Court reiterated, “There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all.” Id.

3 sentiment”. That position clearly contradicted the Office’s earlier factual finding that “the only perceived connotation of that term” was as a scandalous, immoral racial slur.

On March 5, 2020, Applicant again responded that this mark must register, arguing Matal v. Tam at length, and noting that the common racial epithet there contained an expressive component and was found by the Supreme court to function as a trademark because of it.

On March 17, 2020, the Office issued a Final Office Action. First, it improperly ignores

Matal v. Tam completely. Second, it takes a factual shotgun approach and presents a number of different possible meanings of NIGGA (none of which, it impliedly contends, contain any expressive content but are somehow “merely informational”), including: 1) “this term is ‘used as a pronunciation spelling of ’ and is ‘used by some black people to refer to themselves or to another black person in a neutral or positive way’”; 2) “defining this term as an ethnic slur that is an ‘extremely offensive name for a Black person’”; 3) “providing various definitions for this term”; 4) “same [providing various definitions for this term]”; and 5) a mark that “may convey to the average American consumer a message ‘mean[ing] dude, homie, or friend, primarily by people of African American descent.’” Final Office Action, p. 2, bottom paragraph.

The Final Office Action purports to deny the mark not because it is

“scandalous/immoral” or “disparaging” to certain “persons” or “beliefs,” but ostensibly because it is common in its offensiveness, and therefore fails to function as a trademark. Racial slurs and epithets are definitionally inherently commonplace terms because of their ability to cause offense, yet still the Supreme Court ruled that to deny their registration violates the First

Amendment. A common racial epithet, though commonly offensive and well-known as such, has an expressive component and functions as a trademark. To consider commonality of offensiveness as a reason for refusal of a federal trademark registration is viewpoint

4 discrimination that is unconstitutional under the First Amendment. Matal v. Tam, 137 S.Ct. 1744

(2017). The Court said trademarks have an “expressive component” and that even common racial epithets “go on to say something more, either about the product or service or some broader issue” and therefore function as trademarks.

The Final Office Action’s argument that the mark “merely convey[s] an informational message” is disingenuous. It is a thinly veiled, unconstitutional attempt to deny federal trademark registration for marks the Office finds offensive. The Office must follow Matal v. Tam

– the Office must allow federal trademark registration for common racial epithets used as trademarks, despite their being commonly offensive.

The subject mark does have an expressive component, it does function as a trademark, and there is no substantial evidence to the contrary. The Office Action is rooted in viewpoint discrimination, which the Supreme Court has unanimously held is an improper and unconstitutional basis upon which to deny federal trademark registration, citing the First

Amendment. This mark must register, including for the following reasons.

ARGUMENT

1. Racial slurs can be “reclaimed” to function as a trademark under the First Amendment even if commonly “offensive” or “sometimes offensive.” The Supreme Court decided this issue unanimously in Matal v. Tam.

This case could not be more closely analogous to Matal v. Tam, where a clear, longstanding, offensive, common, dictionary-defined, universally known and used racial slur was

“reclaimed” for use and function as a federally registered trademark. The applied-for mark can be “reclaimed” to function as a trademark and should be allowed to register, for all the reasons

“THE SLANTS” was allowed to register as a result of Matal v. Tam. The Supreme Court recognized that First Amendment protected free speech applies to trademarks under the Lanham

5 Act – even trademarks that have been used as common racial slurs. “NIGGA” is no different substantively than “THE SLANTS” other than being directed to a different group of people.

The Final Office Action omits the exact definition of “nigga” from Merriam-Webster, of which there are two: “1) offensive—used as a pronunciation spelling of nigger, and 2) sometimes offensive—used by some black people to refer to themselves or to another black person in a neutral or positive way.” In the word “nigga” being defined as either “offensive” or “sometimes offensive,” depending on the race of the speaker, Merriam-Webster recites in the “Usage

Discussion of Nigga”:

Nigga originated as a variant of the infamous racial slur nigger, reflecting one of its pronunciations, and for many people it is an equally offensive word. Since the late 20th century, however, the two forms have been diverging in use among some , with nigga becoming the preferred term for neutral and positive self- referential uses, such as those associated with the world of hip-hop. Those uses are themselves controversial, and despite their prevalence in hip-hop, a music and culture whose millions of fans span all races and ethnicities, the use of nigga by a person who is not black—in any context—is considered highly offensive.

It is obvious that the term “NIGGA,” when not used in its trademark sense by Applicant, is understood as a common racial slur, the same way the Office argued that “SLANTS” was a common racial slur. The Office Action dated February 28, 2018, provided its own evidence to that fact, and ultimately concluded “the vulgar and scandalous meaning of NIGGA will be the only perceived connotation of that term.”3 Applicant is reclaiming this racial slur for use and function as a trademark, as the Supreme Court unanimously held in Matal v. Tam was appropriate under the First Amendment for racial epithets having an expressive component.

a. The Supreme Court knew and accepted this mark would register.

3 The Office Action dated February 28, 2018 comprised approximately 32 pages of examples, undoubtedly what it would have called “substantial evidence”, to support its conclusion that “the vulgar and scandalous meaning of NIGGA will be the only perceived connotation of that term.”

6 In deciding Matal v. Tam, the Supreme Court had before it the express proposition that this specific mark could and would register as functioning as a trademark if the mark “THE

SLANTS” was allowed to register.4 The Supreme Court found in favor of Tam and the First

Amendment, and “THE SLANTS” was required to be registered despite the mark being a common racial slur – the common racial slur functioned as a trademark. The Supreme Court made clear the function of a trademark is not limited solely to identifying the source of a product, finding the “expressive component” of a mark to be a function of the mark. The Supreme Court said,

trademarks do not simply identify the source of a product or service but go on to say something more, either about the product or service or some broader issue. The trademark in this case illustrates this point. The name "The Slants" not only identifies the band but expresses a view about social issues.

After the Supreme Court’s decision, the Office made no second pseudo-argument that

“THE SLANTS” was “common” in its offensiveness or non-offensiveness, because it was clear what the Supreme Court ruled relating to common racial epithets used as trademarks – the

Lanham Act requires they be allowed to register, in part because the “expressive component” served a trademark function. Matal v. Tam would be meaningless if the Office’s newly fashioned “commonality of offense” test was adopted as an end-run around unconstitutional refusals of common racial epithets.

The government’s own filings made clear to the Supreme Court the consequence that

NIGGA would register. The petition for certiorari filed by the government made specific

4 There were 31 amicus briefs, in addition to briefs from the parties. The parties and amici both raised the issue, using “nigger” and its derivatives to illustrate minority groups re-appropriating terms considered disparaging, transforming slurs into empowering speech. See, e.g., Amicus Curiae of Professor Hugh Hansen, p. 15-17. The issue that “nigger” and its derivatives would function as trademarks and be registerable was fully raised and considered by the Supreme Court.

7 reference to “even the most vile racial epithet” being available for registration if the “sweeping holding” of the Federal Circuit was affirmed, a clear reference to “NIGGA” or “nigger.” Petition for a Writ of Certiorari, p. 10. The government’s Petition made the express point that

Respondent Tam “has no comparable right to force the government to register racial epithets, publish those epithets in the PTO’s Official Gazette, issue registration certificates for those epithets in the name of the United States, and inscribe those epithets on the PTO’s Principal

Register.” Id., at 16. The Supreme Court ultimately disagreed. The Petition said the United

States should not “regard[] racial slurs as appropriate source identifiers in commerce”, but a unanimous Supreme Court found that argument unpersuasive. Id., at 22.

Later, the government’s reply brief said Tam’s “First Amendment theory would apply equally to slurs used with disparaging intent. Under that theory, the PTO would be required to confer the benefits of registration on, and incorporate into its own communications, the vilest racial, sexual, and religious slurs.” Reply Brief of Respondent, p. 2. The government argued

(ultimately unconvincingly to the Supreme Court), “Congress reasonably declined to provide federal incentives for commercial actors to identify their product with racial slurs, insults, or profanity . . . Congress may seek to encourage the use of non-disparaging marks by making the benefits of federal registration unavailable for racial slurs and personal insults.” Reply Brief of

Respondent, p. 8. The government highlighted “the federal government would be required to register . . . marks that include words widely regarded as the most offensive terms for

African-Americans, women, or gay people [and] offensive racial and ethnic caricatures”.5

5 Reply Brief of Respondent, p. 17-18, citing, e.g., Pet. App. 101a (Dyk, J., concurring in part and dissenting in part); Blackhorse Amicus Br. 21-22; Members of Congress Amicus Br. 7-8.

8 In Tam’s Brief6, he argued, “Tam was following in the long tradition of ‘,’ in which members of minority groups have reclaimed terms that were once directed at them as insults and turned them outward as badges of pride.” Tam argued that other groups have done the same, saying, “As Randall Kennedy observes:

‘Many blacks also do with nigger what other members of marginalized groups have done with slurs aimed at shaming them. They have thrown the slur right back in their oppressors’ faces. They have added a positive meaning to nigger, just as women, gays, lesbians, poor whites, and children born out of wedlock have defiantly appropriated and revalued such words as bitch, cunt, queer, dyke, , , and bastard.’ Randall Kennedy, Nigger: The Strange Career of a Troublesome Word 48 (2002).”7

The Supreme Court was fully informed that racial epithets were commonly used both to cause offense and as a “badge of pride” “defiantly appropriated and revalued”, neither of which could be used to deny registration because they both contained an expressive component.

Tam also briefed the Supreme Court that registration of racial epithets was not unusual, even if the term was common or not used to disparage. Tam said, “it was not unusual for registered trademarks to include racial epithets. Trademarks with registrations in effect during this period included NIGGER HEAD golf equipment (No. 221,097, registered in 1926 for a 20- year term), NIGGER PRIZE HEAD ice cream (No. 301,747, registered in 1933 for a 20-year term), NIGGER IN DE CANE PATCH syrup (No. 186,950, registered in 1924 for a 20-year term and renewed in 1944 for another 20-year term), and NIGGER BABY oranges and grapefruit (No. 217,067, registered in 1926 for a 20-year term and renewed in 1946 for another

20-year term).”8

6 Brief for Respondent Simon Shiao Tam, Dec. 9, 2016. https://tinyurl.com/y5kb44kg 7 Coincidentally, the Office has registered from this list of examples BITCH, QUEER, REDNECK, CRACKER, and BASTARD, and many others in addition. 8 Brief for Respondent Simon Shiao Tam, page 49, Dec. 9, 2016. https://tinyurl.com/y5kb44kg

9 The TTAB had also recognized that Tam’s use of the name was “an attempt . . . to wrest

‘ownership’ of the term from those who might use it with the intent to disparage” even though the racial epithet was commonly used and defined in the dictionary as a commonly used racial slur.

Accordingly, the Supreme Court was fully aware when it decided Matal v. Tam that common racial epithets served a trademark function because they had an expressive component, and that the present mark could and would register if and when it found that the First

Amendment applied to the Lanham Act.

Whether the expressive racial slur was used for or to wrest “ownership” from those who would use it to disparage, the Supreme Court received these arguments about the expressive content of the speech and held the First Amendment allowed common racial slurs, including the present one, to be used for federal trademark purposes, “reclaimed” for use and function as trademarks. Snowflake Enterprises, LLC is reclaiming this word for use and function as a trademark. Matal v. Tam requires that NIGGA become a federally registered trademark.

Here, as a result of Matal v. Tam, common racial epithets have source identification and an expressive component that functions as a trademark, and a continued refusal is improper.

The Final Office Action simply ignored this entire first line of argument and did not once mention the Matal v. Tam case. Accordingly, on this evidentiary record, the Office has not met its burden, including to distinguish binding precedent of Tam, and the subject mark must register.

2. The term “NIGGA” does not convey “merely an informational message.”

The Final Office Action purports to be a “failure to function” refusal and says, “Terms that merely convey an informational message are not registrable.” The Final Office Action cited

“DRIVE SAFELY” and “PROUDLY MADE IN USA”, but the racial epithet “THE SLANTS” is

10 more closely analogous and Tam controls here. It is now a federally registered trademark due to

Matal v. Tam. Common racial epithets, after Matal v. Tam, clearly contain an expressive component that serves a trademark function and are not “merely an informational message”. The

Final Office Action cited no precedent to the contrary, and certainly none dated after Matal v.

Tam. For the “NIGGA” mark, there is no informational message nor any “common message” conveyed by the word “NIGGA” as it relates to the recited class of goods.

Here, it is obvious the Office is stretching to find any reason to deny this mark registration because that “N-word” is so unspeakable, so disparaging, so offensive, so scandalous, so controversial, so laden in unmentionable taboo, so politically incorrect, so full of expression and viewpoint that it is “bad” and unregisterable – but the Supreme Court flatly said the First Amendment requires otherwise. Giving offense is an expressive viewpoint. No federal trademark registration may be denied under any part of the Lanham Act that contradicts the First

Amendment. The mark NIGGA has an expressive component that serves a trademark function.

To get to the alleged “informational message” of the subject mark, the Office is being viewpoint discriminatory, evaluating whether the message conveyed is “good” or “bad,” which is transparent since the Office admits it intended to reject the mark as being “scandalous/immoral” on the factual basis stated in the February 28, 2018 Office Action, which asserted as fact, “Here, the vulgar and scandalous meaning of NIGGA will be the only perceived connotation of that term when used in connection with the identified goods and services.” Now, the Office asserts all possible meanings of the word hoping one will stick, including the “sometimes offensive” second dictionary definition, which depends on the race of the speaker and remains the very viewpoint discrimination prohibited in Matal v. Tam.

a. The Examining Attorney has not provided substantial evidence that the mark does not function as a trademark.

11

The Office must follow basic principles of administrative law. The Examining

Attorney’s determination of whether a mark does or does not function as a trademark must be based on substantial evidence. Here, it was not.9

First, the Examining Attorney provides no actual evidence that the mark does not function as a trademark, but rather offers only mere speculation and conjecture. The Final Office

Action says the mark “may convey to the average American consumer a message ‘mean[ing] dude, homie or friend, primarily by people of African American descent’” and that “[an undefined set of] consumers are likely to purchase the applicant’s goods not because it is a brand but rather because of the aforementioned message.” This is nothing more than conclusory speculation, not substantial evidence of what the mark does convey to the public for this class of goods specifically.

Still, the reasoning of the Final Office Action contradicts that of Matal v. Tam. If a consumer is “likely to purchase the applicant’s goods . . . because of the aforementioned message” (for example using a broader social issue of associating NIGGA with “friend” to prompt a sale and to identify a source of goods or services), that is a trademark function favoring registration, aligning a purchase decision with an expressive component of a mark that is a source identifier. The Supreme Court recognized the trademark registration program is not purely commercial speech and instead said, “as this case illustrates [for common racial epithets], trademarks often have an expressive content. Companies spend huge amounts to create and publicize trademarks that convey a message. It is true that the necessary brevity of trademarks

9 See, TQ Delta, LLC v. Cisco Sys., 942 F.3d 1352, 1358 (Fed. Cir. 2019)(The substantial evidence standard asks whether a reasonable fact finder could have arrived at the agency's decision, and involves examination of the record as a whole, taking into account evidence that both justifies and detracts from an agency's decision.)

12 limits what they can say. But powerful messages can sometimes be conveyed in just a few words.” The Supreme Court went on to remind, “many, if not all, trademarks have an expressive component. In other words, these [racial epithet] trademarks do not simply identify the source of a product or service but go on to say something more, either about the product or service or some broader issue. The trademark in this case illustrates this point. The name ‘The Slants’ not only identifies the band but expresses a view about social issues.” The mark NIGGA does the same.

Second, the Attachments to the Final Office Action are not authenticated as bearing a date before the June 19, 2017 filing date of the present application, and therefore do not provide substantial evidence of anything within the relevant time period.10 Other website “Attachments”, in addition to containing no reference to or authentication of the date posted, have now simply vanished.11

Regarding the Attachments referencing “#nigga” used as a hashtag on Instagram or

Twitter, there is no indication how many of the uses of the hashtag “#nigga” occurred before

June 19, 2017, nor how many occurred before that date and specifically in relation to the identified goods. Accordingly, the Examining Attorney’s “Attachments” do not as a whole

10 Each Attachment appears to have been printed “3/16/2020” or “3/17/2020”, with no indication any cited website was the same or even active before June 19, 2017. For example, the Final Office Action states, “For example, a consumer may incorrectly believe that the hat sold here, https://fatandwavy.com/products/the-nigga-snapback-hat, originates from the applicant.” However, the present application has priority as an Intent to Use application filed June 19, 2017, whereas the domain name “fatandwavy.com” was registered much later on 05-01-2019. See, https://www.whois.com/whois/fatandwavy.com. Accordingly, the Examining Attorney’s citation is to irrelevant material that post-dates Applicant’s filing date of June 19, 2017. Other Attachments are similarly irrelevant on their face, for example a Facebook post dated February 15, 2018, from a Facebook user in Berlin, Germany, which is both after the filing date and has nothing to do with the public in the United States. 11 Attachment 7 purports to show a sweatshirt bearing a stylized combination of letters of a particular font and dots (in the order red, yellow, blue, red, yellow, mimicking the logo of the television sitcom FRIENDS) between each letter reading “N•I•G•G•A•S” from www.rageon.com, but that product does not appear to be available on the website.

13 constitute a prima facie showing, supported by substantial evidence, that the mark does not function as a trademark.

Lastly, the Final Office Action does not provide substantial evidence to conclude there is one “informational message” in the mark, as opposed to an expressive component. The Final

Office Action merely posits all possible meanings of the mark NIGGA, hoping the shotgun approach would constitute substantial evidence of some informational message and not any expressive component. Saying a dictionary is “providing various definitions for this term” does nothing to show there is no expressive component in the subject mark. The Office Action merely points to all possible meanings. Final Office Action, p. 2, bottom paragraph.

Accordingly, there is no substantial evidence to show this mark does not contain an expressive component. The reasoning of Matal v. Tam – that common racial epithets contain an expressive component – unquestionably detracts from the agency’s decision here, and outright legally forbids it. No reasonable fact finder could have arrived at the agency’s decision, especially on this record as a whole.

3. The mark “NIGGA” conveys an expressive message, not “merely an informational message.”

First, the Supreme Court said common racial epithets contain an expressive component.

That ought to end the inquiry. The mark NIGGA comprises an expressive component.

Second, the Office Action specifically relied on a portion of a dictionary definition saying that when “nigga” is expressed by a black person to another black person, the expression is

“sometimes offensive” and can be neutral or positive, whereas the same dictionary definition says “the use of nigga by a person who is not black—in any context—is considered highly offensive.” Thus, the meaning of the expression depends both on who utters the word “nigga” and who the intended listener is, among several other contexts, including the relationship

14 between the speaker and listener as well as the intent of the speaker and context of the interaction. By contrast, a merely informational message provides only one clear informational message, regardless of speaker or listener – “MADE IN USA” conveys only one clear message of information.

A federal trademark registration cannot be denied based on the speech’s expressive features under any portion of the Lanham Act, and to do so is unconstitutional under the First

Amendment. The Final Office Action “clearly selects one aspect of the speech’s expressive features” in order to deny registration, and this is improper. If Applicant intended to use the mark in a “highly offensive” manner, that would be an expressive message, not an informational one. A refusal to register based on “ideas that offend,” such as “hate” or giving offense to one or more racial groups, discriminates based on viewpoint, in violation of the First Amendment. The

Supreme Court said in Matal v. Tam, “Giving offense is a viewpoint,” and that viewpoint is part of the expression inherent in the mark, even one comprising a common racial slur. As the

Supreme Court reiterated, “There are a great many immoral and scandalous ideas in the world

(even more than there are swearwords), and the Lanham Act covers them all.” Iancu v. Brunetti,

139 S.Ct. 782 (2019).

THE SLANTS is similar to NIGGA, and the reasons for its selection the same, to create a dialogue on controversial political and social issues. The Federal Circuit laid out clearly that,

Mr. Tam explicitly selected his mark to create a dialogue on controversial political and social issues. With his band name, Mr. Tam makes a statement about racial and ethnic identity. He seeks to shift the meaning of, and thereby reclaim, an emotionally charged word. He advocates for social change and challenges perceptions of people of Asian descent. His band name pushes people. It offends. Despite this—indeed, because of it—Mr. Tam's band name is expressive speech. In re Tam, 808 F.3d at 1338.

4. The Final Office Action improperly refused the subject mark based on the alleged viewpoint of the speech. This is unconstitutional under the First Amendment.

15 The Final Office Action attributes a certain type of speech – that it is “sometimes offensive” – to Applicant’s mark and thereafter uses unconstitutional viewpoint discrimination as an improper basis for rejection.

The Final Office Action makes the same unconstitutional argument that the Office made in Serial No. 85472044, for the mark “THE SLANTS,” the subject of Matal v. Tam. Here, the

Office Action’s argument is made under the guise of an “ordinary, familiar, well-recognized concept or sentiment” but the unconstitutional line of reasoning is the same – because the viewpoint of the speech contained in the mark is commonly known to be “hate” of a race or ethnicity or “love” of a race or ethnicity it cannot be registered (the same principle as the

“immoral or scandalous” and “disparaging” provisions of the Lanham Act that were found unconstitutional under the First Amendment).

The applied for mark does function as a trademark, and is not “universally” “hate” of a race or ethnicity or “love” of a race or ethnicity.

a. The viewpoint of speech in a trademark is protected by the First Amendment, and therefore that a mark that is commonly offensive or disagreeable (or “hate”) cannot be a reason to deny registration.

Even if applicant intended to use the mark in a manner some would associate with being

“sometimes offensive” as denigrating to a group of people based on race (and it doesn’t), denying registration on that basis is flatly unconstitutional. Such an argument “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” Matal v. Tam, 137 S.Ct. at 1751. The Final Office Action said the mark is

“used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment,” despite earlier finding factually that “the vulgar and scandalous meaning of

NIGGA will be the only perceived connotation of that term.” It is clear that the Office Action

16 has attempted to undergird its argument based on the “viewpoint” of the speech the Office associates with the mark, but “viewpoint discrimination” is forbidden. Matal v. Tam, 137 S.Ct. at 1763, citing Rosenberger v. Rector and Visitors of Univ. of Va., 515 U.S. 819, 831, 115 S.Ct.

2510, 132 L.Ed.2d 700 (1995). The Supreme Court evaluated a common racial slur in Tam and said that a continued refual,

. . . is viewpoint discrimination: Giving offense is a viewpoint.

We have said time and again that "the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers." Street v. New York, 394 U.S. 576, 592, 89 S.Ct. 1354, 22 L.Ed.2d 572 (1969). See also v. Johnson, 491 U.S. 397, 414, 109 S.Ct. 2533, 105 L.Ed.2d 342 (1989) ("If there is a bedrock principle underlying the First Amendment, it is that the government may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable")(string citation omitted) Matal v. Tam, 137 S.Ct. at 1763.

The Supreme Court continued, ruling that the argument that “the Government has an interest in preventing speech expressing ideas that offend” is an

idea [that] strikes at the heart of the First Amendment. Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express "the thought that we hate." United States v. Schwimmer, 279 U.S. 644, 655, 49 S.Ct. 448, 73 L.Ed. 889 (1929) (Holmes, J., dissenting).

Though a prior Office Action said “the vulgar and scandalous meaning of NIGGA will be the only perceived connotation of that term” (which is not problematic from a First Amendment free speech perspective whatsoever and cannot serve as the basis to reject a federal trademark registration), Applicant remains free to use the mark in a trademark sense to reappropriate the word and reclaim it, to use in it a way that is sure to offend someone, and even to use it in an a- racial manner.

17 Snowflake Enterprises advertises for sale and uses the mark on a t-shirt12, an article within the class of goods specified, proudly displaying words from Matal v. Tam, “’Reclaim’ and

‘take ownership’ of stereotypes – U.S. Supreme Court, June 2017.” This apparel bears the applied-for mark as a type of label to indicate the source of the goods, Snowflake Enterprises,

LLC. There is no doubt the mark is used in a trademark sense, to identify the source of goods offered for sale. The use of the mark has nothing to do with merely conveying an informational message, but rather here is part of a branding effort and an educational campaign touting the importance of the First Amendment and free speech, including the ruling of Matal v. Tam.

The on-line sales portal also clearly uses “NIGGA” as part of a logo, showing the word is in use in a trademark sense to sell the named goods:

The “NIGGA” mark is prominently displayed, it is displayed with a distinctive typeface, it exhibits an attention-getting quality, it is used in conjunction with a superscript “TM” to indicate it is intended to function as a trademark and source identifier, it is used with a separate

“strong, proud lion” logo having its own separate superscript “TM”, and it is used in conjunction with the words “brand goods” to indicate the word “NIGGA” is serving as a brand and source identifier of certain goods.

12 This is an Intent to Use application, and specimens will be submitted in due course.

18 Applicant’s use of the mark as a source identifier can also make any expressive statement that free speech under the First Amendment allows, including educational campaigns, “hate,”

“anti-hate,” “LOVE,” “GLORIOUS FREEDOM,” satire, parody, ridicule, performance art, humor, “reclaiming” stigmatized words, “taking ownership” of longstanding stereotypes, artistry, anti-authoritarianism, anti-totalitarianism, racial harmonization, black pride, commentary on critical race theory, creation of a dialogue on controversial political and social issues, or any number of other First Amendment-protected statements, whether or not they give offense.

The Supreme Court made clear “trademarks do not simply identify the source of a product or service but go on to say something more, either about the product or service or some broader issue.” Matal v. Tam, 137 S.Ct. at 1764. Such “broader issue” examples here are reclamation of a highly stigmatized common racial slur for purposes of celebration of First

Amendment freedoms, not hatred. Even that message is sure to offend someone who would rather the mark be associated with something they want it to be associated with – the chronically offended class who are offended that Snowflake Enterprises has used its free speech to undermine their taking offense in the first place, or “I’m offended that you don’t want me to be offended.”13 Giving offense is itself a viewpoint, and Applicant has a First Amendment right to use the applied-for mark, functioning as a trademark, to “go on to say something more, either about the product or service or some broader issue”, that being one clear possible function of a trademark and a function the Final Office Action does not address. In any case, “viewpoint

13 Applicant is also taking a firm stand against those totalitarians who would attempt to ban words and burn books as a type of thought crime – the chronic “snowflake”. Though short, use of NIGGA as a trademark and source identifier is as powerful a social statement as George Orwell’s novels. Accordingly, in five short letters it may grow to become the world’s most powerful, impactful, anti-totalitarian, anti-authoritarian, source-identifying brand.

19 discrimination” is forbidden and unconstitutional under the First Amendment, and it cannot be used to deny registration under any part of the Lanham Act.

5. In light of Matal v. Tam, common racial slurs can be reclaimed to function as trademarks, and if not the test for “failure to function as a trademark” is arbitrary and vague and therefore unconstitutional and void.

The following racial and ethnic slurs14 function as registered trademarks:

“THE SLANTS” – Reg. 5332283 “REAL NIGGAS” – Reg. 6006281, filed July 26, 2019, registered March 10, 2020 (both dates being after the filing date of the subject mark “NIGGA”) “I AM NOT YOUR ” – Reg. “NEW NEGROES” – Reg. 5814105 5908485 “ELECTRIC NEGRO” – Reg. 5694384 “CONTEMPORARY NEGRO” – Reg. 4186070 “NEW NEGRO” – Reg. 4014618 “DANGEROUS NEGRO” – Reg. 3733866 “NIGGER HEAD” “NIGGER PRIZE HEAD” “BAKED BY A NEGRO” – Reg. 4424120 “I AM NOT YOUR NEGRO” “NAPPY ROOTS” – Reg. 4545474 “GOLLIWOGG” “LOS ANGELES NEGROES” – Reg. “” – Reg. 5735646 1523852 “BLACK SAMBO” – Reg. 521,115 “” – Serial No. 87602520 “HEEB” – Reg. 2858011 “” – Reg. 1085092 “RED MAN” – Reg. 2142010, and others “YELLOWMAN” – Reg. 3539211 – Reg. 3322061 WAMPUM INJUN – Reg. 734,604 “WILD INJUN” – Reg. 1673489 “” – Reg. 2146588 “” – multiple “” – multiple “” – multiple “COON” – Reg. 0536666 “” – multiple “MICK” – multiple “” – multiple “GYPSY” – multiple “DYKES ON BIKES” – Serial No. 88728928 “QUEER” – Reg. 5775602 “CRACKER” – multiple “REDNECK” – Reg. 5005261, 4866588 “ANGRY REDNECK” – Reg. 5287513 “” – Reg. 0555909 “DEGO” – Reg. 4689617 “GAMMON” – multiple “POLAK” – Reg. 5830269 “RUSSKI” – Reg. 1616838 “” – multiple “BASTARD” – Reg. 87566515 “FAG” – multiple “BITCH” – multiple

14 See, for example, https://en.wikipedia.org/wiki/List_of_ethnic_slurs. Further, Matal v. Tam, fn. 6, refers to the principal register being replete with many marks common and disparaging to racial and ethnic groups, such as those set out in App. to Brief for Pro–Football, Inc., as Amicus Curiae.

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Similar marks must be treated similarly under Matal v. Tam. The Office and the TTAB are bound by Matal v. Tam and are required to register marks, including common racial epithets, with an expressive component functioning as a trademark, despite the Final Office Action noting that prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the TTAB.

Other than the group toward which the slur is directed, there exists no substantive difference between the subject mark NIGGA and the marks THE SLANTS (a commonly offensive racial epithet, directed toward people of Asian descent), REAL NIGGAS (comprising a commonly offensive racial epithet), KIKE (a commonly offensive racial epithet, directed toward

Jews), HEEB (a commonly offensive racial epithet, directed toward ), and REDSKINS (a commonly offensive racial epithet, directed toward people of American Indian descent). In fact,

Tam argued to the Supreme Court this very similarity between THE SLANTS and “‘nigger’ and its variants”.15 The Supreme Court understood and accepted this similarity in expressive content.

If there is a difference between the mark NIGGA and the above-listed common racial and ethnic slurs and epithets (all of which are registered and/or marks that have been allowed), the difference is arbitrary and the standard for differentiation so vague that it has not been and cannot be articulated by the Office. Arbitrariness is inherent in a racial epithet being determined

“offensive” versus “commonly offensive”.

The Supreme Court recognizes that “[the] requirement of clarity in regulation is essential to the protections provided by the Due Process Clause of the Fifth Amendment[,]” which

“requires the invalidation of laws that are impermissibly vague.” FCC v. Fox Television Stations,

15 Brief for Respondent, at 42-43, https://tinyurl.com/y5kb44kg.

21 Inc., 132 S. Ct. 2307, 2317 (2012). The inarticulable, arbitrary, vague standard – to arbitrarily declare one common racial epithet directed to “Group A” contains an expressive component and functions as a trademark, while another common racial epithet directed to “Group B” contains

“no” expressive component and cannot function as a trademark – is therefore unconstitutional.

NIGGA is as expressive as THE SLANTS, if not more so, and both function as trademarks. The

Office’s treatment of common racial epithets appears, at best, arbitrary and rife with inconsistency and, at worst, the Office appears to have singled out this NIGGA mark specifically for disparate treatment because of its offensiveness.

Regarding commonality of offensiveness, THE SLANTS and NIGGA are also similar.

The Federal Circuit “noted that the definitions in evidence [for THE SLANTS] universally characterize the word ‘slant’ as disparaging, offensive, or an ethnic slur when used to refer to a person of Asian descent . . .” In re Tam, 803 F. 3d 1321, 1332 (Fed. Cir. 2015). The Federal

Circuit and the Supreme Court found the racial epithet “universally . . . offensive”, which is no different than the Office’s present argument that the racial epithet is commonly offensive, yet the racial epithet in Tam still registered as functioning as a trademark. NIGGA is also commonly offensive and used as a racial epithet. Both marks were commonly offensive, both marks were racial epithets, and they are therefore similar and must be treated as such. The Supreme Court treated racial epithets the same: a commonly offensive racial epithet is the same as an offensive racial epithet or a “universally . . . offensive” racial epithet.

Again, the Final Office Action, like the one before it, refused to address Matal v. Tam whatsoever, failing to mention the case name a single time, much less substantively address the legal proposition for which the case stands – common racial epithets have an expressive component that functions as a trademark, these expressive components are protected by the First

22 Amendment, and no part of the Lanham Act can be used to deny federal trademark registration as a result, no matter how offensive, commonly offensive, or disparaging the mark. The Final

Office Action refused to address Matal v. Tam because the two cases are indistinguishable.

Common racial epithets must register because they do function as trademarks with an expressive component, and to admit as much would have entirely undercut the basis for the refusal. As in

Matal v. Tam, similar speech must be treated similarly, and “the proudest boast of our free speech jurisprudence” protects as functioning trademarks even “speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground . . .”

Moreover, the Final Office Action’s contention that “applicant does not point to instances in which the Office is treating the mark differently” is not true. Applicant specifically notes that the subject NIGGA mark has been refused, while the marks identified in the chart of Section 5, above, have registered, including later-filed REAL NIGGAS.

A refusal of the mark NIGGA deprives African-Americans from reclaiming a commonly offensive racial slur, while the Office, and the Supreme Court, has allowed other common racial slurs to be reclaimed to function as a trademark if directed toward people of Asian descent, or

Native American Indians, or Jews. There is no reason to treat African-Americans differently.

a. The USPTO must carefully avoid participation in systemic racism.

From all appearances, this mark NIGGA seems to have been targeted for disparate treatment, especially compared to other similar common racial epithets that have registered.

The death of George Floyd under the knee of a police officer on May 25, 2020 in

Minneapolis sparked months of ongoing protests in hundreds of cities across the United States, where protestors of all races sought to highlight systemically different treatment of black persons and related interests by government institutions. Now, perhaps more than in a generation,

23 government institutions are being scrutinized for systemic racial bias and disparate treatment.

Because the Office has articulated no reason to treat NIGGA differently than the other similar and common racial epithets allowed and registered (even REAL NIGGAS), there is no substantial evidence to support a different treatment of the standalone NIGGA mark.

Even with a unanimous Supreme Court case exactly on point regarding registerability of common racial epithets being functioning trademarks, the Office appears mired in racial bias and unwilling to fully respect First Amendment freedoms. It is exactly in these tumultuous times that more free speech is needed, not less, and the Office must protect even that expressive speech it finds commonly offensive.

6. The USPTO cannot discern whether the mark’s message is “offensive” or “sometimes offensive”

On February 28, 2018, the Office took a factual and evidentiary position stating, “Here, the vulgar and scandalous meaning of NIGGA will be the only perceived connotation of that term when used in connection with the identified goods and services.” Rejection on that ground is unconstitutional. Now, the Final Office Action relies on a dictionary definition of the subject mark being either “sometimes offensive” or “extremely offensive.” That, too, is an unconstitutional viewpoint-based reason to deny registration. Being “sometimes offensive” is not able to be defined and the Office Action’s newly fashioned “sometimes offensive”-doctrine is merely a resurrection of the unconstitutional rationale of either the “disparagement” clause or the “immoral and scandalous” clause of the Lanham Act. Some form of offensiveness itself is the viewpoint or “informational aspect” the Office Action seeks to exclude, and that cannot be.

Giving offense is a viewpoint, evidenced by the registered marks in the chart of Section 5, above.

There is no statement that someone will not find offensive or “sometimes offensive.” Only more free speech, not less, can help cure societal divides, and it is well within Applicant’s prerogative

24 to put this mark to good use, where those in the free market are able to buy, or not buy, such goods.16

It is only free speech under the First Amendment that can, and will, change how this mark is perceived, including via an educational campaign. The applied-for mark is now the trademark of Snowflake Enterprises, LLC, and it functions as a trademark, both because (a) it identifies the source of a product or service, and (b) it “go[es] on to say something more, either about the product or service or some broader issue”. Snowflake Enterprises is reclaiming this mark.

CONCLUSION

The Office Action is rooted in viewpoint discrimination that is unconstitutional under the

First Amendment. The Supreme Court ruled that a common racial epithet has an expressive component and can be reclaimed to function as a trademark. The mark NIGGA does function as a trademark and it does have an expressive component. The Office has not shown by substantial evidence that it does not have an expressive component and that it does not function as a trademark. This mark should register to Snowflake Enterprises, LLC, as the First Amendment and Supreme Court precedent requires. Accordingly, for the reasons stated above, Applicant

Snowflake Enterprises, LLC respectfully requests the present refusal be withdrawn.

Respectfully, /Steve Maynard/ Snowflake Enterprises, LLC Steve Maynard 822 King St., #111 On behalf of Snowflake Enterprises, LLC Alexandria, VA 22314

16 One valid reason for federal trademark registration is that registration and use of a mark “helps consumers identify goods and services that they wish to purchase, as well as those they want to avoid.” Matal v. Tam, 137 S.Ct. at 1751. Accordingly, if a consumer wants to avoid NIGGA brand goods because of the expressive component of the mark, that too is a trademark function.

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