The changing role of social justice in trade marks

14th Sep 2021

In response to social media and shifting societal values, predicting changes in how a trade mark will be perceived has become an invaluable skill.

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This piece is inspired by a webinar given by Megan Carpenter, Dean of the University of New Hampshire Franklin Pierce School of Law, and John R. Sommer, who argued and won Iancu v. Brunett in the U.S. Supreme Court. 

The webinar was titled Ethical Considerations in Advising Clients in the Era of Renewed Focus on Social Justice, and explored how we can better advise clients in a changing world.

Regardless of whether a trade mark will be allowed registration, it’s crucial for brand owners and legal professionals to consider the social response to a trade mark.
Broadly, it is evident that governments are ill- positioned to offer particularly useful guidance on what may or may not be considered to be offensive.

A government is not a neutral party, and cannot hope to accurately and consistently represent that broad spectrum off public opinion. 

The perception of a word, image or idea will of course depend on the social contexts of the people who encounter it, including language and religion.

The connotations of this vary, but, for example, the European Union contains 24 official languages. A mark registered in this jurisdiction would need to question if a word or phrase registered as a trade mark contains a different meaning in any of these languages.

However, the decision to adopt a mark should be should not be as simple as whether the government has a law in place to prohibit it. Trade marks allow ideas to be identified and presented  to the world- however they also allow the world to respond. 

Prior to 2017, the registration of offensive marks claims was legally preventable in the US under Section 2(a) of the Lanham Act, which prevented registration of marks that scandalous or immoral marks, or marks that disparage individuals or groups. 
 In Matal v Tam and Iancu v. Brunetti,  the U.S. Supreme Court found the Disparagement and Scandalous Claims Clauses, to be unconstitutional. It relied upon the the First Amendment to the U.S. Constitution, which holds that “Congress shall make no law… abridging the freedom of speech”

In the last decade, the growing power and reach of social media has allowed opened companies up to the possibility of being boycotted en masse in response to perceived cultural slights.

The use of social media a mixed blessing for brand owners.  While it allows for far larger and more diverse markets to be reached, it also allows those markets to take collective action more easily. 

Perhaps especially during the pandemic, social media has more than ever offered a platform for ideas to be shared and opinions to evolve. Therefore, social consensus on language and cultural norms can change faster than ever before.

In the absence of legal restrictions on what may and may not be registered as a trade mark  in the US, it is nonetheless crucial for applicants to consider reception. The renewed focus on social justice in recent years has significantly changed what is acceptable. Marks that had received some moderate level of criticism as socially insensitive, have, within the last several years felt compelled to change.

The Washington Redskins, who had prevailed in the courts after nearly two decades of litigation, lost in the court of public opinion and had to drop its name.  Groups, and often the public in general, no longer no longer tolerate real or perceived slights by the use of demeaning words or imagines. 

Brand owners need to be forward thinking, predicting how social perception of a word or name may change in the future, both immediate and more distant.  When the direction of societal views can be predicted it is it is far preferable to pick a name which will not be subject to scrutiny and disapproval in five or 10 years’ time.

Essentially, the question of whether a specific mark is advisable does not need to come down solely to the opinion of the law. If a notable proportion of the population would find the mark to be at odds with their social principles, it may be best to select another mark, or make the hard decision to change now, instead of waiting for a crisis caused by public opinion. 

There can also be a moral judgment when advising clients. The advisor should not neglect to raise such concerns.

The concept of ‘offence’ is, ultimately, virtually impossible to pin down. We can never fully predict what will or won’t be offensive to another person, particularly outside of contexts which are familiar to us. However, it may be advisable to think broadly about what is currently or might be in the future, offensive.

Just because a mark would be accepted for registration does not mean that it is right, or what it will be well received. 

Therefore, taking a wider and more forward thinking view, considering perception and feelings of all sectors of the market, would certainly be advisable.