WIPR Influential Women in IP 2020
“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
Trademark examiners are trained to contextualise
language, images, and symbols, and make a holistic
assessment rather than stick too rigidly to a
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?
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.
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,
Simon Tam, The Slants