Non-Traditional Trademarks and Inherently Valuable Expression

Abstract

Trademark laws now allow companies to obtain trademark rights in colors, three-dimensional shapes, scents, sounds, flavors, textures, and other “non-traditional” marks that identify and distinguish the source of goods or services. This paper argues that this type of trademark subject matter can communicate expression protected by the right to freedom of expression just like words that describe a product’s qualities or characteristics. These product attributes may intrinsically convey information, ideas, emotions, pleasures, or other messages unrelated to source-identification. For example, the color green can communicate an environmentally-friendly message and a human skull shape is often associated with death and holidays such as Halloween or the Day of the Dead. This commercial expression is protected by the right to freedom of expression in constitutions, human rights treaties, and statutes. Thus trademark laws regulating this expression must have a sufficient justification and should directly further the purpose of the law and not harm expressive values more than necessary to achieve that purpose.

This paper also contends that the free expression right can be harmed when governments register and protect trademark rights in expression that was inherently valuable in the marketplace before it was adopted or used as a trademark, which is the case for many non-traditional marks. Granting trademark rights in such marks may suppress and chill protected expression, as trademark laws today are not limited to regulations of misleading commercial expression and it is difficult to predict what expressive uses of product features claimed as marks are prohibited or allowed by non-traditional trademark laws. Nations can reduce the conflict between trademark rights and the right to freedom of expression by declining to register and enforce trademark rights in non-traditional marks that expressed inherently valuable messages unrelated to source-identification before they were adopted or used as marks. At a minimum, nations should provide only a narrow scope of protection for such marks. They can promote expressive values, fair competition, and the other goals of trademark law by requiring product attributes and other non-traditional subject matter to be non-functional and have substantial proof of acquired distinctiveness through use before they are registered and protected as trademarks. Governments should also focus on regulating misleading commercial expression in trademark laws and enact defenses explicitly allowing certain legitimate uses of non-traditional marks, including fair use of inherently valuable expression and functional product features claimed as a mark by another.

Keywords: freedom of expression, free speech, trademark, non-traditional, nontraditional, shape, color, scent, sound, flavor, texture, mark

JEL Classification: K0, K39