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.

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Comments on “Dispute Over Legal Hackers Mark Highlights Why Descriptive Phrases Aren't Valid Trademarks”

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16 Comments
John Grant (profile) says:

A minor clarification

Thanks for the coverage and encouragement (I am the hacker-lawyer mentioned in the article).

A quick clarification: I have not yet filed my formal opposition to the TM, although others have. I, along with at least one other interested party, merely filed a motion to extend my time to oppose by 30 days to allow for the legal hackers community to engage in a discussion of the topic.

I should also note that Legal Hackers, LLC has responded by announcing that they have licensed their “trademark” in the term “Legal Hackers” to the general public via a relatively novel approach, an Open Trademark License. They also received an endorsement of this approach from the DC Legal Hackers group.

While I support the creative thinking that led to the adoption of the Open Trademark License approach, for reasons I’ll expand upon on my own blog I continue to think that the trademark itself is invalid due to its descriptiveness. I also still have trouble with the disconnect between the accommodating language on the Legal Hackers website and the one-sided contract they attempt to impose upon anyone who wants to organize an “official” legal hackers chapter.

In any event, I do hope to keep the discussion friendly, cordial, and in the best interest of the legal hackers community.

Anonymous Coward says:

Re: A minor clarification

Thanks for the update!

I was ruminating on the concept of locking up the term “legal hackers” — if they own the mark, does that mean anyone else using the term in their trade area would become de-facto “illegal hackers” ? What would happen if someone registered “Illegal Hackers LLC” ?

Of course, if they’re registering it complete with LLC, then even though they’re using three descriptive terms, it could be argued that the resulting scope is limited enough to be marked. I don’t think there’s going to be confusion between people hacking the law (or people performing hacks legal under the law) with a “legal hacker’s limited liability corporation”.

Thoughts?

John Fenderson (profile) says:

Re: A minor clarification

“While I support the creative thinking that led to the adoption of the Open Trademark License approach, for reasons I’ll expand upon on my own blog I continue to think that the trademark itself is invalid due to its descriptiveness.”

I don’t know enough about trademark law to be able to opine about whether a “Legal Hackers” mark should be valid or not, but I agree that using the Open Trademark License is irrelevant to that issue. I’m surprised that they even took this step as some sort of defensive move.

Either the mark is justifiable or it is not. What terms they may license the mark under doesn’t enter into that question at all.

Anonymous Coward says:

Trademark law can also been used to shut down an existing business, by an adversary trademarking the name that this existing company is using, then suing them over the use of the name that they’ve been using for years.

The typical one or two person business usually can’t afford the cost of a trademark, so that leaves them wide open to this kind of IP abuse.

Anonymous Coward says:

IT makes no sense to allow trademarks on common words and phrases,
and hacker is a common term,
applied to many hobbies,in use by the general public,
not just the tech sector .
ITS like having allowing one company having the design
patent on phones with rounded corners .
I presume legal hackers in the tech sector would call themselves security or software experts ,
who test if a companys tech infrastructure is
vunerable to outside attack.

Rich Kulawiec says:

Historical origins of the term "hacker"

“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)).

And even before that: HAKMEM dates to around 1972, and the Jargon File to around 1975, so I think the word was likely in use in various communities (e.g., MIT, Stanford) by the early 1970’s and quite possibly even earlier.

John Fenderson (profile) says:

The danger of unclear trademarks

It’s interesting. Based on the name alone, I assumed that they were using the term “legal hackers” to mean what we used to call just plain “hackers” — people who love to figure out how things work and alter them in new and interesting ways. I figured they just added the “legal” part to emphasize that they mean actual hackers, not the criminals that most people think of when they hear “hacker” these days. In other words, that they meant hackers who are operate legally.

After reading their blog, though, it’s become very clear that they are actually a group of people who are specifically interested in hacking the law.

That raising two points in my mind. First, the name is rather misleading for a lot of people (or at least for me). Second, that the objection about the name being purely descriptive is even stronger than I originally thought.

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