Cultural Identities and Territoriality in a Global Marketplace

AuthorJulia Janewa Osei-Tutu
Published in Landslide, Volume 14, Number 4, 2022. © 2022 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion
thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the
American Bar Association.
Culural Idenies and Teririaliy
in a Glbal Markeplace
By Julia Janewa Osei-Tutu
Colorful Costumes of Carnival in Trinidad, Image: Getty Images
Published in Landslide, Volume 14, Number 4, 2022. © 2022 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion
thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the
American Bar Association.
eople and goods frequently move across
borders, exchanging ideas, concepts, and
practices from other cultures. This can lead
to rich cultural experiences, but since trademark
law is territorial, it can also lead to conicts about
who can, or should, claim rights over cultural or
regional terms.
Trademark law focuses on local consumer
perception and consumer confusion. But often, a
trademark communicates more than source iden-
tication. A trademark can hold cultural meaning
or signicance for a particular group or nation.
The question is whether trademark law inadver-
tently facilitates the privatization of cultural and
national identities by focusing on local percep-
tion while ignoring the broader global context.
As was the case in both the UGG and Gruyère
cases discussed below, U.S. mark holders typi-
cally prevail in the U.S. But if nations tend to favor
the rights holders within their territory due to the
focus on local perception, what are the implica-
tions for famous American brands or cultural
icons from other jurisdictions, particularly if
these brands do not register their trademarks in
the foreign jurisdiction at an early stage?
Protecting “cultural trademarks” (used in this
article to refer to trademarks that have some
cultural or geographic signicance)
has become
increasingly challenging. Some might say that
cultural terms should never be protected as trade-
marks. But, interestingly, culturally signicant
terms, which are a kind of cultural intellectual
property, can be protected as trademarks, although
typically outside of the country of origin. This is due
to the principle of territoriality and the method for
assessing distinctiveness in trademark law.
If a word is foreign in a particular jurisdiction, it
is more likely to be perceived as distinctive precisely
because it is not part of the local parlance. Since a
word that is generic in the U.S. cannot be registered
as a trademark,2 a cultural mark that is perceived
as generic in the U.S. cannot be registered as a
trademark under U.S. law. At the same time, U.S.
trademark law permits the registration of words
that are not perceived as generic in the U.S. even
if they have some meaning or cultural signicance
elsewhere. This is a double-edged sword when it
comes to foreign words or symbols.
The ability to effectively assert claims over
culturally significant marks can have finan-
cial implications. Protecting culturally or
Julia Janewa Osei-Tutu is a professor of law
at Florida International University College of
Law, where she is the associate director for
the intellectual property certif‌icate. She can
be reached at joseitut@f‌
geographically related names as “collective
marks” (which are marks typically used by orga-
nizations to denote certain characteristics set by
the organization) can lead to increased revenues
for producers from the relevant nation or region.
First, consumers may be willing to pay more for an
“authentic” cultural product. Second, producers
who are using a term that is generic in their own
national or cultural context may nd themselves
infringing and their products treated as counter-
feit goods when they attempt to sell their goods
across borders. Finally, even without any legal
consequence, producers may nd that claims of
cultural appropriation force them to rethink their
branding. This raises the question of the effect of
territorial trademark laws in relation to cultural
or regional terms.
Recent examples of disputes involving such
marks include UGG footwear and J’Ouvert, which
was a rum brand that was launched by actor
Michael B. Jordan. These conicts were centered
around trademarks for which there was some
assertion of a regional or cultural connection and
some question about whether the names should
be protected by U.S. trademark law. UGG was
the subject of a legal dispute, while the J’Ouvert
mark was changed in response to claims of
cultural appropriation.
Unsuccessful Legal and Cultural Claims
from Australia
UGG was registered as a U.S. trademark by
the American company Deckers several years
ago. Recently, in response to litigation initiated
by Deckers alleging trademark infringement
and design patent infringement, an Australian
company challenged the UGG mark as generic.
Deckers had led a U.S. lawsuit against Australian
boot maker Australian Leather Pty. Ltd. and its
owner, Eddie Oygur, because Australian Leather
was selling boots that it described as “ugg boots.4
Though UGG is a registered trademark in the
U.S. and several other countries, in Australia “ugg”
refers to a type of sheepskin boot. These boots
were originally brought to the U.S. from Australia.
The evidence presented in the case revealed that
when ugg boots were rst introduced in the U.S.,
the name was used in the descriptive sense to refer
to a type of sheepskin boot. The term was familiar
to purchasers who had traveled to Australia and
to some members of the surng community.
time, however, the UGG brand grew to include not
just the sheepskin boots but also a variety of other
types of shoes.6
Australian Leather’s descriptive use of “ugg”
conicts with the registered UGG trademark in the
U.S. and elsewhere. Unfortunately for Australian
Published in Landslide, Volume 14, Number 4, 2022. © 2022 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion
thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the
American Bar Association.
Leather, this hindered its ability to sell its boots as ugg boots with-
out the boots being labeled as counterfeit or infringing goods. The
litigation and the ability to describe boots as “ugg boots” have
nancial implications for both the UGG brand and for Australian
boot makers who want to sell ugg boots to consumers outside
Australia and New Zealand, where the term is generic.
But this dispute was about more than whether or not the word
was generic. It was also framed as a story of a massive corpora-
tion versus small producers. There also seemed to be underlying
concerns about what this might mean for Australian national and
cultural identity.7 From a territorial and cultural perspective, it
was a dispute about whether one Australian, who had migrated to
the U.S., should be able to tie up the word “ugg” such that other
Australians could not use the word in relation to their goods.
Australian boot maker Oygur, who challenged the validity of the
U.S. registration of UGG, said that he was ghting back against
Deckers not just for himself “but for every UGG bootmaker in
Australia. . . . Ugg is Australian in the same way champagne is
French and fetta is Greek.”8 This reference to geographical indi-
cations and other cultural claims suggests that “ugg” includes
some sense of national or cultural identity that has been effec-
tively limited by trademark law. Characterizing this as a national
issue, Australian Leather urged the Australian government to get
Oygur managed to get the support of an Australian
politician, who described the ability to use “ugg” as relevant to
the Australian sense of identity.10
However, as the court made clear, the meaning of “ugg” in
Australia is irrelevant to an assessment of distinctiveness in the
U.S.11 Consumer perception in the relevant geographic location
is the most important factor in assessing whether or not a mark
is distinctive, and this is what the court focused on in its analysis.
As the court noted, a word may be generic in Australia, but that
does not make it legally generic in the U.S.12 This is an example
of territoriality in action. Even if Australian producers see “ugg”
as part of their national identity, they cannot use this Australian
terminology to describe their boots—at least not in the U.S.
Geographical Indications
Arguably, the best way to protect cultural marks is through
geographical indications. Geographical indications rst received
global recognition in 1994 through the World Trade Organiza-
tion Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS Agreement).
Geographical indications protect
geographically related commercial marks, which means they can
also be used to protect names that pertain to cultural identities or
that have some cultural signicance. These names can be described
as types of collective marks that protect names as source indicators
where some quality, reputation, or characteristic can be attributed
to the geographic origin.
Because of the connection between
culture and geography, these indications are a form of cultural
intellectual property.
As the dispute about “Gruyère” illustrates, geographical indica-
tions, like trademarks, are limited by the principle of territoriality.
Gruyère is a protected designation of origin and geographical
indication in Europe. The Interprofession du Gruyère attempted
to protect the name as a certication mark in the U.S. but faced
opposition from the U.S. Dairy Export Council.15 Even though
Gruyère is a protected designation of origin under European law,
it was determined to be generic in the U.S.16
Protecting cultural terms that have fallen into common use can
be nearly impossible. People often mention “Champagne” and its
association with France, but “Champagne” was a “semi-generic”
term in the U.S. until the name was reclaimed through commit-
ments made in a bilateral trade agreement in 2006.
This means
that, absent some legislative intervention, geographically signicant
or culturally signicant terms may also be difcult to protect if they
are known in the U.S. On the other hand, if these cultural marks are
not commonly used terms in the U.S., then they can become regis-
tered trademarks. This means that nations or regions from which a
cultural name originates can either take steps to protect their name
early on or accept the risk that someone else may acquire rights to
the name and to their cultural intellectual property.
The principle of territoriality is essential for domestic sovereignty.
Territoriality is a fundamental principle in international intel-
lectual property law.
Generally speaking, territoriality means
that national laws apply within that territory, which is critical for
domestic sovereignty because it also means that countries have
exibility and control over what happens within their borders.
Territoriality is an important principle in international law because
nations are, generally speaking, limited to regulating conduct that
happens within their borders. This minimizes interferences with
activities and actions that happen in other countries.
But beyond the question of jurisdiction, territoriality is also
considered important in trademark law because whether or not a
trademark is a source indicator will depend on consumer percep-
tion, and consumer perception will change depending on the
national and cultural context. For example, Roots Canada was the
sponsor for the Canadian Olympic team when they participated
in the Olympics in Australia. While Roots was known as a brand
in Canada, the word was not received the same way in Austra-
lia, where “root” is seen as offensive language.19 It is useful and
important to consider words and symbols in their cultural context,
Consumer percepion in the relevan
geographic locaion is the mos
imporan facor in assessing
whether or no a mark is disincive.

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