“Although they provide powerful tools for countering cultural appropriation, cancellation and opposition proceedings do not preclude the use of the challenged mark, but only prevent it from being registered. An infringement action, a more powerful tool, which would preclude the use of the mark in trade and commerce, poses a tougher challenge for the Affected Groups.”
Recent controversy surrounding Kim Kardashian’s truncated move to trademark the term “Kimono” for her new line of undergarment shapewear has subsided, with Kardashian formally announcing that she is abandoning the effort.
Kardashian explained the mark as serving the dual purposes of being a play on her name and showing respect for the Japanese culture. In fact, Kimono is Japanese for a traditional long, baggy garment that has been worn by Japanese women for centuries. Kardashian’s effort caused an uproar among the Japanese community in Japan and here in the United States. The community accused Kardashian of trying to exploit a centuries-old Japanese tradition for commercial gain. The controversy prompted the mayor of Kyoto to write a letter to Kardashian, in which he noted the sensitivity of the Japanese people to her move and urged her to drop the effort.
Although the immediate controversy has now subsided, Kardashian’s truncated effort has renewed debate around the larger issue of “cultural appropriation” and its intersection with trademark law.
Redskins to Tam: Key Case Law on Cultural Appropriation and Trademarks
The term “cultural appropriation” is generally understood as the use of a name, symbol, object, trait, feature or attribute; distinctly associated with a people or culture (“Affected Group”) as a trademark by non-members of the Affected Group.
A long-running and prominent legal battle involving a claim of cultural appropriation concerned Washington Redskins Football team, which have used the perceived Native American physical trait as their trademark for over seven decades. Although the football team and its fans have always insisted that the name conveys affection and respect for Native Americans, certain Native Americans have insisted that the name is hurtful and derogatory and have mounted efforts to cancel the mark. In June 2014, in response to a challenge by an Affected Group, the Patent and Trademark Office (USPTO) cancelled Washington Redskin’s multiple trademarks under the then-existing “disparagement clause”, contained in Section 2(a) of the Lanham Act, which prohibited the USPTO from issuing registrations for marks it found to be offensive or disparaging to certain groups. The USPTO found that, at the time of their registrations, the Redskins’ marks were offensive to a substantial segment of Native Americans. However, in June 2017, in Matal v. Tam, the Supreme Court found the disparagement clause to be unconstitutional for discriminating based on viewpoint. This decision, in turn, caused the USPTO to restore registered status to Washington Redskins’ trademarks.
Over the past two decades, Affected Groups have increasingly focused on trademark laws to combat cultural appropriation. The motives and corresponding approaches of these groups range from preservation of the Affected Group’s heritage and culture from perceived harm to seeking a share in the financial rewards of such exploits.
Trademark Tools for Combating Cultural Appropriation
At its core, trademark law is designed to avoid consumer confusion as to the source of the product or service identified by the mark and to protect the goodwill that the trademark owner has built in the mark. A trademark can be any sign, attribute or feature, such as a word, name, symbol, sound, smell, decoration, or any combination thereof, which can serve to identify a product or service and to distinguish the product or service identified by the mark from same or similar goods or services offered by competitors. To be valid, a trademark needs to be distinctive enough to perform its dual identifying and distinguishing functions. Trademark law provides three categories of distinctiveness for trademarks: inherently distinctive, descriptive, and generic. Inherently distinctive marks (fanciful, arbitrary or suggestive) are inherently capable of acting as source identifiers. Descriptive marks, on the other hand, describe an aspect of the good or service they are used to identify. Descriptive marks are only valid if they have “acquired distinctiveness” or “secondary meaning,” meaning that consumers have come to associate the mark with the product or service it identifies. A generic mark refers to “what” the good or service is, and, as such, is not capable of acting as a source identifier for that good or service.
Tools provided by trademark law to combat cultural appropriation include the availability of collective marks and certification marks. A collective mark is one that is used by the members of a group or organization and can either be an indication of membership in the organization or group or of the products or services provided by the organization (Trademark Manual of Examining Procedures (TEMP) §1302). A collective mark is owned by the group and can be used by its members. Importantly for Affected Groups seeking to combat cultural appropriation, the organization owning the mark need not offer goods or services identified by the mark but may be used by members to indicate membership in an organization.
A certification mark is another available option for protection of cultural attributes. A certification mark is used as a certification or guarantee of certain features, characteristics, or attributes of the goods or services it identifies. Certification marks are typically used in connection with a particular product type, regional context, or workmanship origin. By way of comparison, collective marks have an advantage over certification marks in that they need not act as a certification or guaranty of a standard or quality but can potentially act as trademarks. Certification marks, on the other hand, cannot function as trademarks but may be easier to register because they do not require proof of secondary meaning when used as an indication of geographic region or a cultural attribute.
Trademark law provides specific tools at the USPTO level and in court for Affected Groups to combat cultural appropriation, including opposition proceedings, cancellation proceedings, and infringement actions. Opposition and cancellation proceedings are similar in that they are initiated at the USPTO to prevent a trademark from being issued (opposition) or cancellation of an issued mark. Advantageously for Affected Groups, opposition and cancellation proceedings can be initiated by any person or group that “believes that he would be damaged by the registration of a mark.” Importantly for Affected Groups seeking to protect their cultural attributes, the initiator of opposition or cancellation proceedings need not own or use the challenged mark. Affected Groups can bring challenges based on the mark falsely suggesting a connection with persons, institutions, beliefs, or national symbols or the name, portrait, or signature of a living individual. Additional bases for a challenge include the mark being generic, functional or abandoned or marks that misrepresent source; marks obtained through fraud; marks that are merely descriptive or deceptively misdescriptive; marks which are confusingly similar to another registered mark; and marks which will likely dilute another registered mark (15 U.S.C. §1052).
Challengers seeking to oppose or cancel a trademark on the basis that it falsely suggests a connection with a person or an institution, must show that: 1) the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution; 2) the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution; 3) the person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and 4) the fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed (TEMP §1203.03 (C) (i)).
Significantly, “[a] nickname or an informal reference, even one created by the public, can qualify as an entity’s ‘identity,’ thereby giving rise to a protectable interest.” For example, the USPTO has rejected the registration of LAKOTA finding that it “identifies a historical people who speak the Lakota language and share a single Native American heritage,” and it thus “identifies a “person(s)” or “institution(s)” as contemplated by § 2(a). In fact, “A false suggestion of a connection may be found when one’s right to control the use of its identity is violated, even if the name claimed to be appropriated was never commercially exploited as a trademark or in a manner analogous to trademark use.”
Choosing the Right Tool
Although they provide powerful tools for countering cultural appropriation, cancellation and opposition proceedings do not preclude the use of the challenged mark, but only prevent it from being registered. An infringement action, a more powerful tool, which would preclude the use of the mark in trade and commerce, poses a tougher challenge for the Affected Groups. This is because an infringement action in court requires possession of a valid trademark, certification mark, or a collective mark. However, registration is not a prerequisite to the initiation of an infringement action. Affected Groups seeking to stop cultural appropriation can base their response on the likelihood of confusion and dilution. A dilution claim is more powerful as it does not require a likelihood of consumer confusion, and instead requires either “blurring” of the distinctiveness or “tarnishment” of the mark (15 U.S.C. §1052 (f)).
In sum, although not perfect, trademark laws do provide powerful tools for Affected Groups to combat and control cultural appropriators from using their cherished attributes. The key to taking advantage of these tools is recognition, by the Affected Groups, of the available tools and developing an approach and strategy which seeks to utilize these resources effectively.
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