Trademarks as a Means of Self-Expression

Ask any law student about the difference between copyright and trademarks, and they would likely point out the following key distinction: copyright protects original works (such as text, music, video), whereas a trademark protects specific words, phrases, slogans, symbols, or designs that identify particular goods or services and distinguish similar products from each other.

Although Intellectual Property Offices should refuse to register a trademark if, in the expert's opinion, the content of such a trademark is offensive or demeaning to a group of people, in some countries (like the United States), trademarks can be used as a form of expression. For instance, the U.S. Supreme Court officially recognized that trademarks can express viewpoints in cases like:

Matal v. Tam, ruling that a governmental body (the United States Patent and Trademark Organization, USPTO) cannot deny registration based on the views expressed by the mark;

Iancu v. Brunetti, ruling that the government cannot reject a mark based on the viewpoint it seems to express.

While "expression" might not immediately come to mind when discussing trademarks, they possess multifaceted abilities to communicate ideas. Take, for example, the famous slogan of Nike, "Just Do It."

On one hand, descriptive or suggestive marks can convey basic observations about the product being sold, such as "Park N' Fly" for airport parking or "Aeroflot" for an airline.

On the other hand, as William McGeveran describes in his article "Rethinking Fair Use," trademarks can express a viewpoint when they "rely on meaning or associations to fully illustrate or animate a message about something."

Examples include well-known trademarks like "Think Different" or the aforementioned Nike slogan "Just Do It!" These registered trademarks do not describe or suggest the specific products they relate to (computers and clothing, respectively) but instead prompt consumers to "seek" the meaning applicable to the offered products and associate their future interactions with these products based on the slogan. If I have a computer or another device from Apple, then I "think differently." If I have Nike sneakers, then I'll "just do it" (in the context of sports).

A trademark can also serve an expressive purpose in light of a particular company or owner adopting it. For instance, the trademark "The Slants," whose registration was discussed in Matal v. Tam, literally means "slant-eyed" and is used derogatorily towards Asians.

However, the U.S. Supreme Court indicated that since the applicant himself is Asian, using such slang in trademark registration is permissible, provided it's not intended to offend the masses but rather to remove the word from the realm of offense.

As we know, the name of one of Elon Musk's companies, "The Boring Company," raises eyebrows. Musk registered a trademark that cleverly criticizes its owner while compelling us to learn more about the company's services. If "The Boring Company" were registered by an accounting firm, it would certainly send a very different message to the public.

Therefore, when deciding on registering your brand, it is also necessary to consider that it makes sense to register trademarks that may not be directly related but, together with the goods, encourage people to act.

The lawyers at Law&Trust provide services for the registration of intellectual property objects, protection of corporate style, as well as patents and trademarks. We have accumulated rich and diverse experience starting from 2006. Over this time, we have registered over 3,000 intellectual property objects in more than 100 countries worldwide.