mircea-moira
3 June 2020TrademarksRory O'Neill

Reclaiming language: are IP offices behind the times?

A lot of thought has been given to offensive trademarks over the past few years, with several cases taking the spotlight.

Since 2017, the US Supreme Court has issued two landmark rulings which have rendered obstacles to registering “offensive” marks increasingly obsolete.

In the EU, meanwhile, the focus has turned to the role of the European Union Intellectual Property Office (EUIPO) in guarding against the registration of marks which violate “accepted morality”.

The Court of Justice of the European Union ruled in February that the EUIPO couldn’t block the registration of a mark for ‘Fack Ju Göhte’ (F*ck You, Goethe) on the grounds that it was likely to cause offence.

International practice seems to be turning towards IP offices adopting more of a laissez-faire approach when it comes to making moral judgements.

Behind the times?

It was curious, then, when last October a controversy arose over the UK Intellectual Property Office’s (IPO) refusal to register a mark for ‘Queers & Co’. The application was filed by LGBTQ+ activist Gem Kennedy for her company of the same name.

Queers & Co publishes a magazine which explores issues around body positivity for a LGBTQ+ audience. According to the letter of refusal Kennedy received from the IPO, the term “queer” could be used in a way that was “contrary to acceptable moral values”.

“I honestly had no idea that it was likely to come up, because there are other trademarks for that term,” Kennedy says. The IPO’s letter cited a report by Ofcom, the UK’s communications regulator, which classified the term as offensive.

But according to Kennedy, the same report also acknowledges “queer” as a reclaimed word which is used by LGBTQ+ people in a non-derogatory manner.

The case touches on a uniquely modern challenge for IP offices—that of reclaimed words, historically derogatory terms that have been repurposed by the targeted communities themselves.

In many ways, the area of the law and institutions dealing with trademarks should be better equipped than most to navigate this problem. Trademark law is, after all, mostly to do with subjective determinations of how a term or mark is likely to be perceived by 
the public.

Trademark examiners are trained to contextualise language, images, and symbols, and make a holistic assessment rather than stick too rigidly to a predetermined formula.

And yet, Kennedy says, the IPO is lagging behind the times. For example, she had no such problem registering her business name at Companies House, which had already adapted its policies after a controversy involving a company called Rebel Dykes.

In that case, which bears resemblance to Kennedy’s, Rebel Dykes started an online petition after they were blocked from registering a community interest company under the name. Their campaign was successful, with Companies House’s decision being reversed last March.

Kennedy took a similar course of action, urging the IPO in an online petition to recognise that the LGBTQ+ community “should have the power to name ourselves as we choose”.

Like Rebel Dykes, Kennedy was successful and, after replying to the IPO’s letter of refusal, was able to register her trademark for ‘Queers & Co’ in January.

But why was it refused in the first place, when there are other trademarks on the register featuring the word, such as ‘Queer Spirit’ and ‘Queer Prom’? And what does the controversy tell us about how IP offices should deal with the wider issue of reclaimed words?

Political consciousness

As anyone who has followed US trademark law over the past few years will remember, this is not the first time this issue has arisen. In 2017, the US Patent and Trademark Office’s (USPTO’s) refusal to register the name of Asian-American band The Slants was challenged all the way to the Supreme Court, producing the landmark ruling in Matal v Tam.

Part of the reason that case caught the public attention was because it seems so straightforward that the use of the term “slants” by a group of politically conscious Asian-American musicians was not offensive. Its net effect was to challenge discrimination, not to worsen the marginalisation suffered by Asian people and people of Asian descent.

According to Simon Tam, one of the band’s founders, their case demonstrates why no IP office is “adequately prepared to deal with contextual judgements in terms of offensiveness”.

“Context can be problematic when it is judged through the eyes of an examiner, one who may not have the same life experiences as the referenced communities in question,” Tam says.

The Slants’ case, together with last year’s Iancu v Brunetti ruling, culminated in the Supreme Court striking down the bans on “disparaging”, “scandalous”, and “immoral” marks as unconstitutional. That’s because, the court ruled, they discriminated based on viewpoint, and therefore violated the First Amendment.

Moral determinations

Does the UK Trade Marks Act of 1994 place any comparable obligations on the IPO?

“The IPO has a responsibility to refuse trademark applications which are contrary to public policy or to accepted principles of morality,” says Natasha Chick, divisional director of the office’s Trade Marks and Designs tribunal.

The obvious problem is that, as with the “scandalous” and “immoral” marks ban in the US, the IPO is then forced to wade into moral determinations. Given ever-evolving moral norms, it’s not surprising that IP offices tasked with making a moral judgement on individual trademark applications can find themselves embroiled in controversy.

How does the IPO face up to these challenges? “We are guided by case law in terms of interpreting the offensiveness provisions,” Chick says.

“This includes recognising the difference between marks which are merely distasteful from those which may justifiably cause outrage,” she adds, noting that there is also the need to balance the potential to cause offence with rights to free expression.

If there is any category of supposedly “offensive” marks that are likely to expose the risks of relying on case law, it is that of reclaimed words. No-one is arguing that “queer” has never been an offensive term, nor that it no longer can be offensive in certain usage or contexts.

However, IP offices must now adapt to the reality that oppressed communities are inverting the abusive language that has traditionally been weaponised against them.

Chick points out that decisions are not always clear-cut.

“This is a very subjective matter of law,” she says. “In the case of ‘Queers & Co’ the examiner initially felt that the reference to ‘queers’, and the derogatory message that might potentially be taken from it, justified the raising of an objection.”

After Kennedy availed herself of the opportunity to respond with evidence contextualising the mark, it was approved for registration. The IPO could therefore argue that the system worked.

Here, as in the case of The Slants, the burden of proof was on the applicant to prove why their use of a reclaimed term wasn’t offensive. There is no guarantee that this will work.

As Tam says, his band’s trademark filing identified ‘slant’ as a term that had been re-appropriated by the Asian-American community. In support of that argument, he produced evidence including letters from Asian-Americans, an independent survey, documentation from Asian-American media outlets, and an expert report from the president of the American Dialect Society.

“That overwhelming evidence wasn’t enough,” Tam says. “Instead, the USPTO fell back to relying on UrbanDictionary.com, other joke websites (including Asian-jokes.com), and dictionaries from the early 1900s, to support its claim.”

In his view, these processes are not fit for dealing with the problem. “The burden placed on applicants for something that should be rightfully theirs makes the process inequitable,” he says.

Policy change

In the UK, Kennedy wants to use her success in registering her brand as a springboard for a change in policy.

“It shouldn’t be that the next person will have to get 16,000 signatures in order to register their brand,” she says, adding that she has written to the IPO seeking a meeting to discuss how their internal policies might evolve in light of her case.

“It’s not enough just to grant my trademark, we would like to see the policy changed,” Kennedy adds.

Whether the IPO’s examination guidelines are adapted remains to be seen, but ‘Queers & Co’ provides a useful case study of a problem that is likely to crop up again. IP offices could do worse than to give some thought to adopting a formal policy around reclaimed words.

As Kennedy says, it’s “exhausting” for minority groups to convince government institutions to acknowledge a social shift that has been underway for years. But, if it’s left purely to the discretion of individual examiners, it is hard to see how consistency can be achieved across the board.

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