Dispute Over Legal Hackers Mark Highlights Why Descriptive Phrases Aren't Valid Trademarks
from the do-as-i-do dept
Not all things can be trademarked, and one of the most common reasons a term, word, or phrase is refused protection is if it is purely descriptive. The stock examples of this make sense to us inuitively: a company couldn’t trademark “Black Computers” as part of their business, since the term is neither unique nor does it do anything besides simply describing the product. But I think real-world examples of this sort of thing drive the point home even more.
Via the wonderful Five Useful Articles newsletter (a comedic newsletter about intellectual property that you should subscribe to), we learn that there is a company called “Legal Hackers LLC” and that the company has a trademark application in for the term “Legal Hackers.” We also learn that there is a cordial but healthy discussion going on throughout the legal hacking community over whether or not this should be allowed. Indeed, one hacker-lawyer (which is an awesome title) has filed a dispute against the mark (embedded below) and fleshed out his reasoning in a blog post.
From a trademark law standpoint, I think the term “Legal Hackers” is descriptive and therefore should not be eligible for protection on the primary trademark register. In reviewing the application record at the USPTO, the examining attorney did not raise the descriptiveness issue, although such oversights are not uncommon.
I don’t think anyone would deny that the term “hacker” has been in use since well before April 2012 to describe a certain type of activity (the earliest Urban Dictionary entries date to 2003 and reference pop-cultural use of the term relating to computer hackers at least as early as 1982 (Tron) and 1983 (War Games)). Since then, “hacker” (or “hack” or “hacking”) has been used to near-ubiquity to describe innovation in just about any thing or activity you can think of: Ikea, Gardening, Running, Walking, apparently even Sex (thanks Buzzfeed). In fact I challenge you to think of some activity and run a Google search on that activity plus “hack.” Any of these categories are simply descriptive of the activity being hacked–I can’t see how “Legal” is any different.
It’s not different, of course. What is different in this particular case is that you don’t have one company fighting another over the trademark application. Instead, you have a cadre of legal hackers going up against a single company, Legal Hackers, for attempting to lock up a term the the former thinks applies to what they do. This would be the grassroots version of trademark disputes, with a subsection of the public balking at a company’s attempt to lock up the language describing what they do.
The post doesn’t only make the legal argument, however. Common sense plays a role as well.
Beyond the formal legal argument, however, I think having the term “Legal Hackers” under trademark protection is a bad idea. For one, the notion that someone could tell someone else they can’t call themselves a Hacker of any sort seems inappropriate, if not unheard of. I can see a legitimate argument that “my hack is better than your hack,” or “I’m a better hacker than you are,” or even “your hack isn’t truly a hack because it’s something most people would normally do so it isn’t hack-worthy.” But I can’t find legitimacy in a claim that “your hack isn’t a hack because I own the term “Hack” and I get to say what is or isn’t one.” Or, “You aren’t a hacker because I control the term “Hacker” so I get to say who is and who isn’t.” Taken further, the idea that the ability to bestow or withhold the “hack” or “hacker” label would carry the weight of federal trademark law is preposterous.
Look, the good news is that both sides of this discussion appear to be friendly, cordial sides that genuinely have good interests. That said, I love this story because to me, it means more to see trademark opposition come not from an economic interest, but from a genuine community and language interest. This isn’t someone trying to make a buck, it’s a group of people who love their community and love what they do and don’t want to see the ownership of some of the language surrounding their activities.