from the who's-the-boss? dept
Several weeks back, we discussed how Hugo Boss, German upscale clothier, had opposed the trademark application for an artist who has taken to teaching online art classes during the pandemic. At issue was John Charles’ decision to apply for a trademark on the phrase he used to sign off at the end of these classes: “Be Boss, Be Kind.” That he had begun selling shirts and hats with the slogan on it, alongside the trademark application, was enough to get Hugo Boss’ lawyers working on opposing the application and sending a legal threat letter to Charles, despite the fact that any claims about potential customer confusion between the two entities is laughable at best.
As we noted at the time, while any legal letter such as this is at least mildly scary for someone like Charles, it should be stated that Hugo Boss wasn’t overly threatening in the letter. Instead, the letter stated that the company would be opposing the trademark application, but was willing to drop the matter entirely if that application was withdrawn. In public comments, too, Hugo Boss made it clear that it was looking for an amicable resolution to the situation.
And that, almost certainly in large part to the swift public backlash that occurred, is precisely what happened.
Now, Hugo Boss and the popular artist have reached an ‘amicable solution’ – and John has said ‘it was all worth it.’
John said: ‘We’ve now reached an amicable solution and the key thing is that we’re able to continue our free online art classes and release our merchandise to the public officially. I’d like to say a massive thank you to the public for all their support, it’s been really overwhelming.”
As usual, the exact details of this amicable solution aren’t explained publicly, but it’s worth noting that nowhere in any of the coverage currently is the acknowledgement that Charles has been allowed to proceed with his trademark application. And that, frankly, is the detail we should be focused on. Yes, it’s good that Hugo Boss isn’t threatening Charles with legal action. Yes, it’s also good that he’s being allowed to continue his art classes and even sell his merch with the slogan. That’s somewhat more permissive than I expected out of Hugo Boss.
But there was never a valid trademark issue here in the first place and, while I don’t really see why Charles needs this trademark for which he applied, he certainly should have gotten it. “Be Boss, Be Kind” is not going to confuse someone into thinking a t-shirt is a Hugo Boss t-shirt. The reach of Charles’ audience isn’t a threat to Hugo Boss, either. No part of this screamed for a resolution of anything at all, amicable or otherwise.
It’s sort of an offshoot of how trademark bullying is effective. On the one hand, a large enough company can bully smaller entities into not using anything remotely like its registered trademark, validly or otherwise, just because of the costs associated with those threats. Or there are cases such as this, where the big company can bully the smaller entity until it gets news coverage talking about a supposedly amicable deal.
Both are pernicious, if not equally so.