The Perils of Offensive Trademarks: Trademark Function, Freedom of Expression, and Why We Should Be Barring the Registration of Offensive Marks

Abstract

Traditionally, the primary function of trademarks was merely to identify the source of goods and services. However, some businesses now use trademarks for other purposes, including by incorporating offensive words into the mark so as to harness their “shock value” and attract the attention of customers. Lawmakers around the world have responded by enacting provisions which bar the registration of offensive trademarks, thereby denying the trademark owner of the benefits of registration. This paper considers the treatment of offensive trademarks in three contrasting jurisdictions: the United States, the European Union and New Zealand. The hypothetical mark YELLOW PERIL, referring to the threat of Asia and Asian people to Western society, will be used as a case study. Two key themes will also be explored: the interaction of offensive trademarks with traditional theories of trademark function, and also with the right to freedom of expression. The paper concludes that overall, offensive trademark provisions (like those in the European Union and New Zealand) are a desirable part of trademark law, capable of being used in a way which is consistent with trademark function and freedom of expression, and which helps protect minority groups from being exposed to offensive trademarks in the marketplace.

Keywords: trademarks, "comparative law", discrimination

JEL Classification: K00