One of the first things you learn while studying Trademark Law is that “there’s no such thing as trademark rights in a word”.

So when the public at large becomes upset that a celebrity, public figure, or person is trying to trademark a word, like Kim Kardashian’s “Kimono” or Michael B. Jordan’s “J’ouvert”, they mistakenly believe that Kim and Michael are trying to own a word outright! That no other company or person will be able to use those words whatsoever, whether in ordinary conversation…or in business! And though there is some truth to that last point — business owners and businesses who own a trademark ARE afforded some special rights — this sentiment is still WHOLLY inaccurate!

The rights granted through trademark registration are not as broad as people may think!

Now, if we briefly set aside the cultural significance and appropriation issue behind these two marks – and don’t worry! I’ll get back to it 👀 – both scenarios highlight something pretty important! Most people are completely uninformed about (1) what a trademark is, and (2) how trademarks REALLY work.

So it’s time we cleared up that confusion and talk about how trademarks REALLY work in our society!

HOW TRADEMARKS REALLY WORK

TRADEMARK = WORD/PHRASE/LOGO/MARK + GOODS/SERVICES

And because a trademark is dependent on your good/services, that’s why companies like Dove soap and Dove chocolate can both exist despite being owned by two separate companies! And other companies too, like:

• • Delta Airlines vs Delta Faucets
  • Domino Sugar vs Domino’s Pizza
  • Canon EOS (Canon cameras’ operating system) vs eos Lip Balm,
  • MAC Cosmetics vs and Apple’s Mac Computers
  • Morningstar (investment research company) vs Morningstar Farms (vegetarian food company)

Under Trademark Law, two brands can co-exist with the same name as long as the two brands do not create customer confusion. And whether there’s consumer confusion is dependent on multiple factors, but some factors that we do consider are:

(1) whether products/services are in different industries;

eg. Dove soap = skincare vs. Dove chocolate = food

(2) whether the products/services share similarities, including purpose and price point; and

eg. Mac Computers = $1000+ technology vs. MAC Cosmetics = $20-$80 make-up

(3) whether there are similarities in marketing and target consumers

eg. Hungry consumers don’t confuse a bar of soap for a bar of chocolate. Similarly, consumers shopping for electronics aren’t confusing a make-up palette for a laptop.

For one company to have a total monopoly of a word would mean that they have products and services that fit every industry in America! It’s impossible. No one company is a one size fits all, does all. Even billion dollar corporations with extensive trademark portfolios operate only in a few industries at a time.

Kim K. and Michael B. Jordan’s Trademark Applications

Michael’s trademark application was in its final stages and approved by the USPTO before the public caught wind of the application and expressed their disapproval.

snippet from Michael B. Jordan’s J’ouvert Trademark Application

J’ouvert Registration Certificate for audio & video recordings, digital media, and downloadable music that’s been registered since 2014.

So…What We Can Learn from Kim K. and Michael B. Jordan’s Controversies

Again, the public misunderstands what it means to really trademark a word. It doesn’t provide as broad of ownership rights as they think! It only protects the word under the goods/services listed on the trademark application. So Kim K. and Michael B. Jordan’s actions aren’t AS extreme as the public believes it to be.

HOWEVER…

Should some words, though trademarkable, be off-limits anyway? Absolutely!

Just because you CAN successfully trademark a word doesn’t mean you should. And Kim K. and Michael B. Jordan both learned this lesson the hard way when the public boycotted their brands.

My personal opinion? J’ouvert is so intricately tied to the roots and culture of West Indians and Caribbean people. J’ouvert is a part of our carnival experience – a celebration typically held the night before the daytime carnival.

And then add the fact that so much of our music makes reference to drinking rum! Rum HAS to be the number 1 drink of choice in West Indian & Caribbean culture.

So for one company to monopolize on that significance is just culturally insensitive!

Growing up, my mom would joke every Crop Over (Barbados’ carnival season) that my favorite songs were always the ones about rum. And she’s right!

As a child, I would daydream about my adult self at J’ouvert and at Kadooment (Barbados’ daytime carnival) in a costume, drinking rum, and having the time of my life. We all live that experience! We all share some version of that dream! Hence the outrage!

The public has made an example of Kim Kardashian and Michael B. Jordan, but by no means, will they be the last people or company to make this mistake.

When you’re influenced by a culture, you need to fully consult with the people of that culture.

And it honestly might not be enough to just have someone of the culture on your team, like Michael B. Jordan’s supposed situation.

You may want to ask people outside of the work bubble and business-fantasy that you’re building! You need someone objective and neutral. It’s important! Fail to do so, and you’ll likely waste all the money you’ve invested into your brand – packaging, inventory, domains, promotional items, etc. – and find yourself facing an expensive rebrand.

If you need help rebranding, JNJ Legal offers an amazing Brand Name Consultation to help entrepreneurs name their brand, course, event, etc. in 1 hour! Review our Brand Name Consultation for more information, reviews, FAQs, and more.