Trademarks as a Means of Self-Expression

In this article, we consider trademarks as a means for some persons to express certain thoughts and, consequently, as a means of restricting the expression of others. When used directly, trademarks can not only serve as a means of individualization, but also convey important social or cultural meanings.

Ask any law student about the difference between copyrights and trademarks and they will probably point out the following key difference: copyright protects original works (text, music, video), whereas a trademark protects certain words, phrases, slogans, symbols or designs that identify specific goods or services and distinguish similar goods from one another.

Although the Intellectual Property Office must refuse to register a trademark to an applicant if, in the opinion of the examiner, the content of such a trademark is offensive or degrading to a group of persons, in some countries (e.g., the United States) trademarks can be used as an expression of a point of view. Thus, the US Supreme Court has officially recognized that trademarks are capable of expressing a point of view in cases:

• Yank v. Brunetti, holding that a government agency (United States Patent and Trademark Organization, USPTO) may not refuse registration “based on the views expressed by the mark”);
• Matal v. Tem, holding that the government may not reject a mark based on the views it appears to express.

While “expression” may not always come to mind when it comes to trademarks, they have a multifaceted ability to convey certain thoughts, such as NIKE's well-known slogan “Just Do It.”

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

On the other hand, as William McGervan describes in his article “Rethinking Fair Use,” trademarks can express a point of view when they “rely on meaning or associations to fully illustrate or enliven the message about something.”

Examples include well-known trademarks such as, “Think different” or the already mentioned NIKE slogan “Just Do It!” - they are registered trademarks that do not describe or suggest the specific products to which they refer (computers and clothing, respectively), but instead they cause a person to “search” for meaning applicable to the products offered and associate their future interactions with those products based on the slogan. If I'm going to have an Apple computer or other Apple appliance, I'm “thinking differently.” If I get Nike sneakers, I will “just do it” (in the context of sports).

A trademark can also serve an expressive purpose in light of the particular company or owner that adopts it. For example, the trademark “The Slants,” whose registration was at issue in Matal v. Tam, literally means “slant-eyed” and is used to refer offensively to Asians.

However, the U.S. Supreme Court stated that since the applicant is Asian, his use of such slang in trademark registration is permissible insofar as it is not used to offend the masses, but rather to remove the word from the category of offensive words.

As we know, the name of one of Ilon Musk's companies, The Boring Company, is surprising. Musk has registered a trademark that cleverly condemns its owner, nevertheless making one learn more about the company's services. If “The Boring Company” had been registered by an accounting firm, it would, one would agree, give the public a very different message.

Thus, when deciding to register your brand, you should also take into account that it makes sense to register such trademarks, which may not be directly related, but in conjunction with the goods to encourage people to take action.

Law and Trust lawyers provide services on registration of intellectual property, protection of corporate identity, as well as patents and trademarks. We have accumulated rich and multifaceted experience since 2006. During this time we have registered more than 3,000 intellectual property objects in more than 100 countries.