Trademarks are words, slogans, designs, symbols, or a combination of these things that represent a brand in the market. Although there is no requirement to register a trademark there are benefits to registration. Protection of a trademark derives from use but registering your trademark puts others on notice that you have claimed ownership of that mark and that the mark is in use in commerce.
What you cannot register
In every country, there are limits to what you can register as a trademark. In whatever words they are described, marks that offend the sensibilities of the society cannot be registered.
In the US, Federal trademark law provides that any mark that consists of immoral, deceptive, or scandalous matter or which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute, is unregistrable
But what is immoral or scandalous will vary between societies, and even between groups of people in the same society. This is sometimes the challenge for brands in an ever-expanding global market.
Morality vs. Legality of a Mark
Truly, the law is an ass! We hear it all the time. There’s no debating this. This sentiment has been held for centuries and has not diminished in fervour. The law sometimes rubs our moral sensibilities the wrong way. So those of us who are trained in the law often find ourselves on the wrong side of the debate between morality and legality. When the flames of emotions are stoked by the fuel of morality, It’s probably best to keep the law out of the discussion. We know that the law is often slow to catch up to society’s changing moral expectations. So, with regards to branding and many other areas of our lives and businesses, digging your heels into the letter of the law could mean digging the grave for your economic interests.
What is protected by law is not always the most sensible line of action for your bottom line.
The U.S. Supreme Court has taken the position that any restrictive criterion in the trademark law that is viewpoint-based is unconstitutional and runs afoul of the First Amendment (freedom of speech). So although the Lanham Act (the trademark law) says that “disparaging”, “immoral”, or “scandalous” marks cannot be registered, the Supreme Court has held those parts of the law unconstitutional.
In effect, the trademark office cannot refuse to register a mark because it offends the conscience or moral feelings of sections of the society. What we generally condemn as offensive or immoral can still be permissible as free speech.
What the law fails to do, social pressure can do
Social pressure is a real thing and we have seen how it can and has affected some major brands in recent months.
Recently Cleveland’s Major League Baseball team announced a name change after many years of legal challenges. The owners of the brand finally responded to social pressure to drop the offensive marks that represented their brand.
Quaker Oats also released a new name for its “Aunt Jemima” products, dropping the offensive name and logo for Pearl Milling Company.
These and many other recent brand changes were precipitated by protests against systemic racism which erupted across the U.S. in the Summer of 2020.
Practical Considerations for Managing Your Mark
Keep your finger on the pulse of society’s moral expectations. It shouldn’t take litigation or the threat of litigation to keep your brand on track. It is important to keep a finger on the pulse of society’s morality and shifting moral expectations. Accepted norms are frequently changing and it is important for any business to be aware of these changes. Social media is a good way to get a sense of the direction of the wind of change.
Include diverse professionals in your brand team. Your brand team must include diverse professionals including trademark lawyers and Diversity and Inclusion experts. You must consider both the legal and social challenges that your mark will face in the market. So you need to secure your bottom line with legal expertise, public relations ex
Consider how far you want your brand to travel. If your plans for your brand are to remain within the limited confines of your immediate market, then you only have to worry about keeping your small community happy. If on the other hand you expect to expand to a wider market, you must consider the universality of your mark. How well will it fare outside your immediate market? You don’t want to offend a potential market with your brand marks even before they get to experience your product or service. So you must be mindful of the markets you plan to expand into and talk to brand and legal consultants in those markets.
