Social ethics and trademark strategy When the expression of a particular collective conscience shames the trademarks of earlier times
There are rebranding operations that are deliberate, well thought out and planned and which arise out of a true marketing and corporate strategy. Strategic repositionings of trademarks and corporations arise in a variety of circumstances, motivated by a desire to improve, freshen up or dust off a visual and commercial identity or, in some cases, to shake off a negative image.
Other situations, in which social, cultural or political contexts or changes in moral codes and awareness call into question the identity (verbal and visual) of trademarks/corporations, sometimes in the thick of controversy, lead to rebranding operations that are “suffered”.
Let us take a few examples encountered over the last few years, some of which have received widespread press coverage.
The best-known case is doubtless that of the famous trademark “Uncle Ben’s”.
Having been accused of stereotyping African-Americans, and after several months of reflection, all against a backdrop of controversy, the Mars group decided that “the time had come” to reform the “Uncle Ben’s” trademark, including its visual identity.
Recast as ”Ben’s Original” in 2020, the brand also chose to abandon the image of a face belonging to an elderly African-American on packets of rice, which could evoke rice plantations operated using slaves. “We listened. We learned. We changed” was the slogan presented by the brand on its Internet site (https://www.bensoriginal.com/brand-feedback) and in social media.
Several aspects of the brand identity were impacted by this change; the word “Uncle” on the face that identified the trademark on packaging have disappeared; however, the orange color and, especially, the name “Ben’s” remain.
From a legal/IP perspective, the question arises as to whether the reputation that was (still is?) attached to the “Uncle Ben’s” trademark as such will automatically transfer to the “Ben’s Original” trademark.
Admittedly, what can be considered or perceived as the distinctive and essential element of the trademark “Uncle Ben’s”, i.e. “Ben’s” has been adopted within the new trademark “Ben’s Original”, in a dominant position. However, what was the true contribution of the word “Uncle” to the degree of distinctiveness (acquired through use) and the reputation attached to the trademark “Uncle Ben’s”?
In addition, can the use of the designation “Ben’s Original” be considered as genuine use – ”in a form differing in elements which do not alter the distinctive character” of the trademark “Uncle Ben’s”?
Another question going forward is: could it be imagined one day, in the context of a hypothetical action for a loss of rights due to lack of genuine use, that the owner of these trademarks would explain, before an IP Office or Court, that the non-use of the trademark “Uncle Ben’s” was on account of “proper reasons”?
That being said, the argument would be as slight as it would be audacious. Across the Atlantic in 2020, in the climate created by the ”Black Lives Matter” protests following the death of George Floyd, another company decided to abandon the image and name of a trademark for bottles of maple syrup and pancake mixes that had existed since the end of the 19th century: ”Aunt Jemima”, embodied by the face of a black woman.
In February 2021, PepsiCo announced the new ”Pearl Milling Company” name/logo trademark. In contrast to the “Ben’s Original” rebranding, nothing remains of the former trademark, not even the name “Jemima”.
Other post-controversy/issue rebranding operations, some of them unexpected, have been observed in the last few years, in particular under pressure from the media and on social networks.
In 2019, the American reality TV star Kim Kardashian had the idea of calling her underwear brand “Kimono,” based on a play on words with her given name “Kim”.
This was without reckoning on criticism by internet users accusing her of “cultural appropriation”.
The mayor of Kyoto himself wrote a letter asking Mrs. Kardashian to reconsider her decision to use the term “Kimono” to designate her trademark: “(I) ask you to reconsider your decision of using the name Kimono in your trademark.” […] Kimono is a traditional ethnic dress fostered in our rich nature and history”. A Kyoto city official in charge of traditional crafts even wrote “We’re concerned that a wrong understanding of kimono will spread since Ms. Kardashian is such a powerful influencer”.
This kind of pitfall can sometimes be difficult to anticipate, whether from a marketing or from a legal perspective.
How should such questioning be regarded?
In IP terms, would it be conceivable to express reservations as to the acceptability/feasibility of a trademark project such as “Kimono”, as part of a study into the validity/lawfulness of the trademark, and especially with regard to it being contrary to public policy and accepted principles of morality, on the grounds that its adoption/use might possibly, at a particular date, constitute a phenomenon of cultural appropriation?
The point of law, for certain professionals, would be far from obvious.
Whatever the case, the fact that a trademark might slip unhindered through the screening of substantive examination and be accepted for registration by an IP Office, is doubtless no longer sufficient for it to be definitively considered “in the clear” from the point of view for public policy/the principles of morality, given how movable these concepts are and how they are subject to social, cultural, ideological and political developments.
Seneca declared that “the vices of the past have become the morals of today”; one might add that the morals of the past may also become today’s vices.
Still, returning to our illustration, Mrs. Kardashian finally gave up on the idea of bestowing her underwear brand with the name of the traditional Japanese garment, thus forcing her into an “imposed” rebranding operation.
Controversies about cultural appropriation, especially in fashion, have proliferated in recent years.
In the fashion industry, indigenous arts and ethnic motifs have become a common source of inspiration. The Artistic Director of Berluti, Kris van Assche, tried to justify himself a few years back in response to attacks on cultural appropriation, through having studied at the academy of Antwerp ”where you learn to be inspired by cultures”, adding that ”there is nothing shameful about that”.
The question in IP is more a matter of “inspiration” than of the “shame” it is liable to induce. The problem lies in that most people consider, doubtless too easily, that indigenous art, ethnic motifs etc. naturally belong to the public domain and may therefore be freely and generally used as sources of inspiration, and even be purely and simply copied.
However, there is sometimes barely a step between “inspiration”,”usurpation” and ”misappropriation”. This is why, over the last few decades, countries and international/regional organizations have been attempting to find means for better protecting certain cultural expressions and knowledge of first nation and local communities, transmitted from generation to generation and which form part of their identity and heritage. It is these traditions, History, heritage and even sometimes the very honor of ancestral communities which are at stake and this goes well beyond intellectual property.
Moreover, these subjects do not concern only the fashion industry.
On another note, in 2020, the American company Dreyer’s Grand Ice Cream, which marketed ”Eskimo Pie” (chocolate-covered vanilla ice cream sticks), was accused of conveying stereotypes and clichés considered racist or at least offensive. The name ”Eskimo Pi”, together with the illustration on the packaging – a little boy with black hair, wearing a parka – refer to the populations at the Arctic limits, on the North American or European continents. The name “Eskimo” designates several different populations: Inuits and Yupiks. Yet they never employ these terms themselves. “In the past, non-Inuit imposed their own names onto our lands and bodies in place of centuries-old Inuktut ones”, declared Natan Obedn, a leader of the Canadian Inuit population in 2015. Thus, in 2020, the trademark “Eskimo Pie” became “Edy’s Pie” nearly a hundred years after its creation.
Not all situations of use of controversial trademarks/signs automatically lead to complete rebranding/recasting of visual/commercial identity.
The truth is that the only or main responses made to this kind of problem by most trademarks consists of post-bad buzz “apologies”.
Therefore, certain reflexes must be imagined/reinforced in order to anticipate situations of this kind as best possible, in particular through documentation (collection of information on the desired names or the envisioned logos/patterns), through training/awareness-raising for the creative/marketing teams on IP issues, asking where the ‘inspiration’ comes from and where the limit lies between ”inspiration” and ”misappropriation”, checking the local legislation/regulations as well as possible neighboring rights, checking whether there are communities who could – with regard to a sign (name/logo/motif) – potentially make claims, ask oneself about the evocation of a sign/trademark with regard to contemporary political/social/cultural/religious contexts and, lastly, look for means (negotiations, agreements, collaborations, etc.) to anticipate potential problems.
Whatever the case, these phenomena have clear implications for intellectual property and invite us to rethink our analyses and strategic planning, especially in terms of protection and obtaining/extending rights, by integrating ”new” thinking or at least updating approaches in line with historical, cultural and social developments. Such reflections take place both upstream, when the validity/lawfulness or availability of a name, a logo, a motif or a work is analyzed at the phase of inception before launching a project, and downstream, when for example, there is a need to fully or partially overhaul the visual/verbal/commercial identity of a company/brand. Numerous questions arise in this first case, depending on context, in particular the matter of what will become of rights/trademarks no longer intended to be used and which, in the long term, are likely to disappear for lack of being able to show genuine use.
Whatever the case, our firm is at your side to assist you when searching for new trademarks, and to audit your current portfolios.
Ali BOUDJEDIR is an Intellectual Property Attorney and joined Santarelli in 2018. He has some ten years experience in IP firms and today assists a varied clientele, mainly in matters of trademarks and domain names.