What’s in a Name? Trademarks as Expressive Works | As Seen in NYLJ

Although the incident of Kim Kardashian West attempting to trademark the name “Kimono” was short-lived, her ill-fated trademark application raises critical questions about the relationship between trademarks and free expression. This article examines trademarks as both a means of expression and a means of limiting others’ expression.

By Miranda D. Means and Jeanne M. Heffernan | November 29, 2019 | NYLJ

On June 23, 2019, Kim Kardashian West announced the release of a line of shapewear called “Kimono Intimates,” a play on the reality star’s first name and the name for the Japanese kimono garment. The name seemed to fit snugly with Kardashian West’s “Kimoji”-branded phone app, perfume, and clothing line. On June 19, just prior to the brand announcement, Kimono Intimates filed trademark applications with the U.S. Patent and Trademark Office (USPTO) for KIMONO, a stylized version of KIMONO, and four other KIMONO-formative marks for a variety of goods and services. By the time of the brand announcement, Kimono Intimates had already received a 2(e)(1) refusal from the USTPO for descriptiveness, given that Kimono Intimates had attempted to register KIMONO for, among other things, kimonos themselves. But the company’s true obstacle came not from the USPTO, but from the general public.

When Kardashian West officially announced Kimono Intimates, the company faced an immediate international blowback. Critics and consumers asserted that the name “Kimono” appropriated and disrespected Japanese culture. Japan’s trade minister, Hiroshige Seko, pledged that he would send officials to Washington, D.C. for talks with U.S. trademark officials and urged the USPTO to “appropriately” handle the applications. The Los Angeles Times gleefully proclaimed, “Kim Kardashian Just Trademarked ‘Kimono.’ Let the backlash begin.” In the wake of that backlash, the company abandoned its trademark applications and relaunched the shapewear line under the new name “Skims.”

Although this incident was short-lived, Kardashian West’s ill-fated trademark applications raise critical questions about the relationship between trademarks and free expression. In particular, the incident reveals two fundamental concerns about how trademarks can impact speech. First, the company’s name, “Kimono Intimates,” was immediately seen by the public as an expressive choice, representing Kardashian West’s attempt to co-opt another culture’s terminology and tradition. Second, the public believed the registration of “Kimono” would limit the expression of others, who would no longer be able to use it.

This article examines trademarks as both a means of expression and a means of limiting others’ expression. When used expressively, trademarks have the power not only to convey important social or cultural meanings, but also to cause widespread offense. When enforced, trademarks can limit some free expression, but can also provide an opportunity for marginalized groups to take back ownership of their own culture.

Trademarks as Expression

Ask any law student about the difference between copyrights and trademarks and they will probably point to one key distinction: copyright protects original works of authorship, whereas a trademark protects words, phrases, symbols, or designs identifying the source of the goods or services of one party and distinguishing them from those of others. Yet in holding that the U.S. Trademark Office may not deny registration to marks deemed by an examiner to be disparaging or scandalous, the U.S. Supreme Court officially recognized that trademarks are capable of expressing a viewpoint. See Iancu v. Brunetti, 139 S.Ct. 2294, 2298 (2019) (holding that the government may not deny registration “based on the views expressed by a mark.”); Matal v. Tam, 137 S. Ct. 1744 (2017) (holding that the government cannot reject a mark based on the viewpoint it appears to express).

Although “expression” might not always spring to mind when thinking of trademarks, trademarks do have a multifaceted ability to express. On one hand, descriptive or suggestive marks may convey basic observations about the product being sold, like Park N’Fly for a place to park at the airport, or the ill-fated KIMONO for kimonos. On the other hand, as William McGervan describes in his article “Rethinking Fair Use,” marks can express a viewpoint when they “draw on [their] meaning or associations to illustrate or enliven a message about something else entirely.” 94 Iowa L. Rev. 59, 54 (2008). For example, “Think Different” or “I’m Lovin’ It” are registered trademarks that are not descriptive or suggestive of the products to which they are connected (computers and fast food, respectively), but instead draw meaning from their associations and implications.

A trademark can also serve an expressive purpose in light of the particular company or owner that adopts it. For example, “The Slants” mark at issue in Matal v. Tam expresses a different message when adopted by an Asian American band than it would have if it had been adopted by a Caucasian one. Elon Musk’s recent adoption of “The Boring Company” raises an eyebrow. Musk adopted a mark that cleverly deprecates its owner while literally referring to the company’s services. If “The Boring Company” had been adopted by an accountant, it would convey a very different message. When viewed in light of its putative owner, the adoption of KIMONO for a commercial shapewear line expressed (or seemed to express) a message the public rejected.

In addition, a mark’s meaning may shift depending on how the owner uses it. In a recent commercial, Gillette used its smooth-shave slogan, “The Best a Man Can Get,” in a campaign designed to challenge men to change negative behaviors. Nike’s “Just Do It” slogan conveys a different meaning when used in connection with Simone Biles’s gymnastic accomplishments than it does when used in connection with Colin Kapernick’s social activism.

As the foregoing shows, trademarks are now used for far more than advertising and increasingly permeate our lives. Some brands even have their own social media accounts on which their owners actively post about social, cultural, and political issues. Burger King took to its Twitter account (@BurgerKing) to poke at @realdonaldtrump following the President’s tweet that he wanted to order 1,000 “hamberders” for the Clemson University Tigers to celebrate their NCAA football national championship at the White House.

Not surprisingly, a lively public debate ensued, with hamburgers variously boycotted or bought.

The public reaction to Kardashian West’s trademark applications for KIMONO shows us that the public perceives trademarks as far more than “mere” source indicators. The adoption of a trademark that expresses (or is seen to express) a controversial viewpoint can have wide-ranging social, as well as commercial, ramifications.

Enforcement as a Limitation on Expression

The negative reaction to the “Kimono” announcement also reflects a separate concern about expression: that federally registering a trademark can prohibit others from using it. Just as the adoption of a trademark with cultural connotations may be viewed by the public as expressive (and perhaps offensive), it may also be viewed as an obstacle to expression of a cultural identity. See Sonia K. Katyal, “Trademark Intersectionality,” 57 UCLA L. Rev. 1601, 1632-38 (2010) (describing how, because of their “expressive and economic dimensions,” trademarks “can operate as devices of owned property, and at other times, they can also operate as devices of expression and culture”). Indeed, Yoshifumi Nakazaki, the deputy director general of the Japan Kimono League, told the Washington Post: “It’s not just kimono as clothes but kimono as a name that is the common asset, not just for those of us who live in the modern era but for the history of Japanese people that has been accumulated over the years. Generally speaking, it is unthinkable for a Japanese person to register kimono for a trademark. That would be impossible.”

Viewing registration as an obstacle to cultural expression becomes more fraught if the mark is registered (not to mention enforced) by a person who is not a part of that culture. In this sense, the registration of a culturally significant trademark could be viewed by a cultural group as a form of “dispossession.” See Angela R. Riley and Kristen A. Carpenter, “Owning Red: A Theory of Indian (Cultural) Appropriation,” 94 Texas L. Rev. 862, 866 (describing cultural appropriation as occurring “when non-Indians use Indian names, imagery, iconography, and symbols” and situating this appropriation within the “larger frame of legal dispossession of Indian property generally”).

Since the early 20th century, the U.S. National Park Service (NPS) has used a variety of regionally significant names on buildings at Yosemite National Park, including the “Ahwahnee Hotel,” a name it adopted in 1927. “Ahwahnee” is a Native American word and is another name for Yosemite Valley, where the Ahwahneechee people resided. In 2016, Delaware North Corp. (DNC), the concessionaire NPS hired to run Yosemite’s lodges, sued the park for trademark infringement, after it lost a contract to continue operations at Yosemite. It turns out that during the course of its contract with NPS, DNC had quietly acquired federally registered trademark rights in the word “Ahwahnee,” among other names NPS was using in Yosemite. When news of the suit emerged there was a public outcry, with many arguing that the name belonged to the American people as a whole. The Washington Post called DNC’s trademark “a weird kind of ‘cultural appropriation’ by DNC—appropriating the names by which little bits of the cultural landscape have been known and referred to over the years.” A spokesperson at Yosemite said, “We felt from the beginning that these place names belong to the sites and ultimately the American people.” The parties ultimately settled and NPS resumed its use of “Ahwahnee” in connection with its hotel, but not without a payout from NPS to DNC.

Although the “Ahwahnee” example shows how a trademark registration can be used to limit the cultural expression of others, it can also be used in some circumstances to fight against cultural appropriation. The USPTO allows the registration of “collective marks,” which are indicators of membership in an organization. Certain organizations and groups have already registered trademarks for terms and symbols that are central to their cultural expression. For example, the Navajo Nation obtained multiple trademark registrations for the word “Navajo.” In 2012, the Navajo Nation filed suit against Urban Outfitters after Urban Outfitters advertised a “Navajo hipster panty” and a liquor flask decorated with Navajo patterns, sparking outrage among the Navajo. Navajo Nation v. Urban Outfitters, 935 F. Supp. 2d 1147 (D.N.M. 2013). The Navajo Nation brought claims for trademark infringement and dilution for the use of the term “Navajo” in connection with apparel and jewelry, and claims for violations of the Indian Arts and Crafts Act for the use of “geometric prints and designs fashioned to mimic and resemble Navajo Indian and Tribal patterns, prints, and designs.” Id. After years of litigation, the parties settled for an undisclosed amount in 2016 and agreed to collaborate to sell authentic Navajo jewelry.

Thus, although a trademark registration may be perceived as a potential limitation on cultural expression, as it was with Ms. Kardashian West’s attempts to register KIMONO, it may also afford certain groups more control over their cultural symbols and terms.

Conclusion

Trademarks serve increasingly expressive functions, and some companies are embracing the cultural, social, and political possibilities of their branding. But these newfound roles come with the potential for missteps. A poorly chosen trademark used in a questionable context can be worse than “merely” offensive; it can be seen as a form of cultural dispossession. At the same time, a trademark registration may serve as a powerful tool to combat misappropriation and regain control of one’s own cultural expression. Trademark practitioners and brand owners should carefully consider the expressive functionality of a mark and the context in which it will be used to avoid potential pitfalls, like the #KimOhNo moment Ms. Kardashian West recently experienced.

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