The Cultural Controversy of Michael B. Jordan’s J’OUVERT Trademark
12.2.2021
In June 2021, actor Michael B. Jordan found himself in hot water after the public discovered that he and his business partners tried to gain trademark protection for the word J’OUVERT. They were to use the term as the name for a new rum brand. It caused controversy in the Caribbean community.
Some may be asking, “What does the trademark registration process look like?” while many may be asking, “What does J’OUVERT mean and what does it have to do with the Caribbean?” Do not fret! As a person who is of Caribbean descent, who speaks French and Creole (the languages relevant to this story), and who is a trademark attorney, I can answer those questions while providing cultural context.
What Are the Trademark Basics?
A trademark or service mark[1] is anything that distinguishes one’s goods or services from that of another. To be clear, anything (including a word, logo, sound, color or smell) can serve as a trademark. In essence, a trademark is a source identifier. Under the Lanham Act,[2] which is the primary federal statute that governs trademarks and service marks in the United States, a party must follow certain procedures in order to qualify for federal trademark protection.
What Happens During the Trademark Registration Process?
Application
To register a trademark on the Principal Register[3] of the U.S. Patent and Trademark Office, one must a file a trademark application. Depending on the information an applicant wishes to provide, one would either file a Trademark Electronic Application System Plus or a TEAS Standard application.[4] The application must contain certain information, including the following:
- information about the applicant
- the trademark (usually a word mark or design mark)
- the classes of goods and services with which the applicant to desires to use the trademark in association[5]
- the filing basis of the trademark
Basis
For applicants who are domiciled in the United States, there are two filing bases under which a trademark application can be submitted.[6] First, there is the use in commerce basis (also called Section 1(a) basis). If an applicant files this type of application, it is attesting that at the time the application is filed, it is using the trademark in commerce[7] in association with the goods and services listed in the application. A Section 1(a) applicant would have to provide proof, which is called specimen, that it is currently using the trademark in commerce.[8]
Second, there is the intent-to-use basis (also called Section 1(b) basis). Under this basis, at the time the application is filed, the applicant is attesting that it has a bona fide intention to use the trademark in commerce in association with the goods and services listed in the application in the near future.
Office Action or Examiner’s Amendment
After an application is filed, the applicant may receive an office action, which is a letter from an examining attorney at the USPTO stating the reasons as to why the applicant’s application may not be able to proceed.[9] An applicant has six months to respond to an office action. Sometimes the office action is issued due to a minor issue (i.e., a disclaimer is required for a certain word in the mark because it is descriptive of the goods and services in the application).[10] However, sometimes an office action is issued because of a substantive issue (i.e., the applicant’s mark is likely to be confused with a mark that has already been registered[11]) that requires an attorney to conduct legal research and write a legal memorandum.
In order to expedite the application process, sometimes if an examining attorney finds an issue, he or she will issue something called an examiner’s amendment. This is where the examining attorney would contact the applicant, or the applicant’s attorney, directly via phone or email to resolve the issue. Then, instead of issuing an office action, the examining attorney would go into the applicant’s file and create an examiner’s amendment, which states the application will be amended in a particular way.[12]
Publication
If the applicant does not receive an office action, is able to overcome an office action or is issued examiner’s amendment, the application will move on to the next step in the application process, which is publication. For 30 days, the applicant’s trademark will be published in the USPTO’s Trademark Official Gazette. During this publication phase, anyone in the world can oppose the trademark. This is important, because one of the responsibilities associated with trademark registration is that registrants must enforce their trademarks to make sure that no other party uses a similar mark in a manner that could cause a likelihood of confusion. Any party who believes that the ultimate registration of a trademark would harm its trademark rights can oppose a trademark application.[13]
Registration or Notice of Allowance
If there is no opposition to the trademark, the application will proceed in the registration process. The next step depends on the basis of the application. If an applicant filed under the Section 1(a) basis, the application would proceed to registration. The applicant will ultimately have its trademark registered on the Principal Register,[14] receive a registration certificate and be granted the rights that come with federal trademark registration.
If an applicant filed under the Section 1(b) basis, the application would be issued a Notice of Allowance. Initially, the applicant has six months to use the trademark in commerce in association with the goods or services listed in its application and provide to the USPTO a specimen to prove that it is doing so. However, if the applicant is not able to provide the specimen at the end of the six-month period because it has not started using the trademark in commerce in association with the goods and services listed in the application, it can extend the time needed to submit the specimen[15] every six months for up to three years after the date when the Notice of Allowance was issued by filing an extension for each six-month term. Once the specimen is provided to the USPTO with a Statement of Use, the applicant will proceed to registration (like the Section 1(a) applicant).
What Happened With the J’OUVERT Application?
Filing of a Section 1(b) Application for J’OUVERT
On Sept. 25, 2020, Michael B. Jordan’s business partner, Louis Ryan Shaffer, filed a Section 1(b) application to use the trademark J’OUVERT in association with “alcoholic beverages, except beer; distilled spirits; rum-based beverages; and rum.”[16] These goods are classified under Trademark International Class 30. Thus, as of the date of filing the application, Shaffer had a bona fide intention to use J’OUVERT in commerce in association with alcohol in the near future.
The application also included the following additional statement related to transliteration: “The non-Latin characters in the mark [‘J’OUVERT’] transliterate to daybreak and this means morning in English.”
Issuance of Examiner’s Amendment Related to Translation
On Feb. 26, 2021, the examining attorney issued an examiner’s amendment. The examining attorney found no substantive issues with the application. However, after communicating with Shaffer, the attorney amended the application and added the following statement to the record: “The wording “J’OUVERT” has no meaning in a foreign language.”
As a result, the aforementioned transliteration was deleted from the application.
Publication and Issuance of Notice of Allowance
On April 6, 2021, the trademark was published in the Trademark Official Gazette. Thus, within 30 days of the publication date, any party who believed it would have been harmed by the registration of the mark could have filed a notice of opposition (or extension of time) with the Trademark Trial and Appeal Board.
On June 1, 2021, because there was no opposition, the application was issued a Notice of Allowance. Thus, Shaffer had until Dec. 1, 2021 to file a Statement of Use or a Request for Extension of Time to file a Statement of Use.
Announcement on Instagram
On June 19, 2021, Lori Harvey (Jordan’s romantic partner) congratulated Jordan on the impending launch of the J’OUVERT rum brand via an Instagram story.
What Were the Controversies Surrounding This Application?
As soon as the general public became aware of Jordan’s association with the J’OUVERT application, several controversies emerged.
Controversy 1: Accusations of Cultural Appropriation Due to the Use of the Term J’OUVERT
Some people of Caribbean descent were upset and accused Jordan of cultural appropriation for naming the alcohol brand J’OUVERT, because the term has historical significance to many in the Caribbean diaspora and Jordan is not Caribbean.
The term “j’ouvert” (or jouvay) is a term that refers to a large street party held annually as part of Carnival celebrations across the Caribbean and the diaspora. Some popular carnivals include the Trinidad and Tobago Carnival, Toronto’s Caribana and New York’s West Indian/Labor Day Carnival. On actual Carnival day (i.e., Mardi Gras for the Trinidad and Tobago Carnival), many participants dress up in elaborate costumes or “play mas.”[17]
J’ouvert takes place before the Carnival parade. It is directly linked to the Canboulay emancipation celebrations in Trinidad, where former slaves (who could not participate in the French colonizers’ masquerades) injected African folklore into their own celebrations.[18]
Rapper Nicki Minaj weighed in on this controversy, stating in an Instagram post that she was “sure [Michael B. Jordan] didn’t intentionally do anything he thought Caribbean [people] would find offensive,” but “[n]ow that [he was] aware, [he should] change the name and continue to flourish and prosper.”[19]
Controversy 2: J’OUVERT Has No Meaning in a Foreign Language
There was also controversy due to the meaning of the term J’OUVERT. As stated above, the initial application stated that it meant daybreak/morning. After the examiner’s amendment, the application stated that J’OUVERT had no meaning in a foreign language.
I initially thought that J’OUVERT was a French mistranslation of JOU OUVÈ, the Antillean Creole term meaning “dawn” or “daybreak,” into JOUR OUVERT. Before dawn is the time at which J’ouvert celebrations are normally held.
Technically, the term J’OUVERT does not have a meaning. In French, even if one was to take the literal words of “day” and “open” and although not grammatically correct, it would be “JOUR OUVRE.” OUVERT is the past participle of the word open.
In Creole, JOU OUVÈ literally means “the day is open.” For these reasons, I likened J’OUVERT to be a fanciful mark, because the terms JOUR and OUVERT are combined to create a new word.
I discussed this with several trademark attorneys on a Facebook forum. One attorney showed me a dictionary related to a language called Trinidadian Creole.[20] The entry for “J’ouvert” defined the term to mean “day open.” Another attorney stated that J’OUVERT could be deemed to be a slang word. Due to this information, I concluded that the initial application was correct and that the examiner’s amendment was incorrect.
However, many would not know that the initial application stated that the term translated into daybreak/morning. Thus, the backlash made it appear as if Jordan and his business partners stated that the term had no meaning in a foreign language, when in fact it did.
Controversy 3: Belief That One Could Not Use the Term J’OUVERT
There is a misconception that if one trademarks a word, that party has complete control over the use of the word. In essence, some people confuse ownership of a trademark as ownership of the actual word itself.
Jordan’s use of the word J’OUVERT in association with rum would not have prevented use of the term J’OUVERT by others as it has always been used. However, some believed that this was not the case.
How Did Jordan Respond to the Controversies?
On June 23, 2021, Jordan posted an Instagram story apologizing and stating that he and his partners never intended to “offend or hurt a culture ([they] love and respect) & hoped to celebrate & shine a positive light on.”[21] They ultimately decided to change the brand’s name and will presumably abandon the J’OUVERT application.
What Are Your Thoughts on the Controversies?
Important lesson: just because you can do something does not mean that you should do it. As we can see here, news about Jordan’s connection to the J’OUVERT application was not made public until it was granted a Notice of Allowance. Jordan and his business partners could absolutely have continued using the term in association with rum. However, it was a good idea for them to rebrand, because it showed that Jordan and his team actually listened to the feedback they received from the Caribbean community. Their future brand may fare well because of this.
What Should Trademark Attorneys Do When Advising Clients Regarding the Registration of Foreign Words?
Trademark attorneys must take into account the potential response/backlash of the public when it comes to their client’s trademark usage of terms that have a meaning in a foreign language.[22] First, you should ask your client what the term means in the foreign language. Second, conduct your own research to determine if the term is culturally significant. Third, if you cannot make this determination, keeping confidentiality obligations in mind, consult with a legal colleague or friend. In the end, trademark attorneys should help their clients to consider cultural importance when it comes to the trademark process.
This article first appeared in the Entertainment, Arts and Sports Law Journal, a publication of the Entertainment, Arts, and Sports Law Section. Click here for information on joining this section.
[1] “Trademark” is for goods and “Servicemark” is for services. As the application and registration processes are identical for both, and as applicants often apply for goods and services concurrently, this article will use “trademark” to represent both trademarks and servicemarks.
[2] Trademark Act of 1946, 15 U.S.C. §§ 1051 et seq.
[3] Registration on the Principal Register gives a trademark registrant certain rights, including the right to sue for trademark infringement. This is not the case for a trademark that is registered on the Supplemental Register. See Trademark Manual of Examining Procedure (TMEP) § 801.02(a). The TMEP is an excellent resource for all issues related to trademarks.
[4] To file an initial trademark application and to see the differences between the TEAS Plus and TEAS Standard applications, visit https://www.uspto.gov/trademarks/apply/initial-application-forms.
[5] For a complete list of the 45 classes under which any good or service can be classified, visit https://www.uspto.gov/trademarks/trademark-updates-and-announcements/nice-agreement-current-edition-version-general-remarks.
[6] For more information about filing basis, visit https://www.uspto.gov/trademarks/apply/basis.
[7] The power of the federal government to register trademarks comes from commerce clause of the Constitution, TMEP § 901.01; 15 U.S.C. § 1127. To see the what the USPTO considers to be use in commerce, see TMEP § 900 and § 901.01.
[8] For example, if an application is selling items of clothing, the applicant will have to provide an acceptable specimen like a tag containing a trademark or a website where the trademark is prominent and customers have the ability to place the clothing in a shopping cart.
[9] For more information about office actions, visit uspto.gov/trademarks/maintain/responding-office-actions.
[10] Descriptive marks fall on the lower end of what is commonly known as the “spectrum of distinctiveness.” For more information about distinctiveness, see TMEP § 1209.01.
[11] Likelihood of confusion is one of the most common issues in office actions. See TMEP § 1207.01.
[12] For more information about Examiner’s Amendments, see TMEP § 707.
[13] This includes those who have common law/state trademark rights.
[14] This article assumes that the hypothetical applicant is seeking registration on the Principal Register.
[15] An applicant must provide the specimen in what is called a Statement of Use.
[16] Information submitted during the trademark process is public. I used the Trademark Electronic Search System (TESS) to find the J’OUVERT application (Serial No. 90210764). See tess2.uspto.gov. From there, I went to the Trademark Status Document Retrieval (TSDR) to look at the entire trademark prosecution history. See tsdr.uspto.gov.
[17] Jeffrey Thomas, The Changing Role of the Steel Band in Trinidad and Tobago: Panorama and the Carnival Tradition. Studies in Popular Culture, vol. 9, no. 2, 1986, pp. 96–108. JSTOR, www.jstor.org/stable/23412941.
[18] Patricia Tamara Alleyne-Dettmers, Political Dramas in the Jour Ouvert Parade in Trinidad Carnaval, Caribbean Studies, vol. 28, no. 2, 1995, pp. 326-338. JSTOR, www.jstor.org/stable/25613310. Accessed Sept. 5, 2021.
[19] Keishel Williams, Michael B. Jordan Is Apologizing After Fans, Nicki Minaj Call Out His New Rum for Caribbean Appropriation — Here’s What the Sacred Ritual of ‘J’ouvert’ Is All About, businessinsider.com/nicki-minaj-weighs-in-on-michael-b-jordan-appropriation-controversy-2021-6.
[20] “jour ouvert, j’ouvert.” In Dictionary of the English/Creole of Trinidad & Tobago: On Historical Principles, edited by Winer Lise, 1-990. McGill-Queen’s University Press, 2008, http://www.jstor.org/stable/j.cttq491v.7.
[21] Keishel Williams, note 19, supra.
[22] There was no attorney of record on the J’OUVERT application.
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