Yes, that's right, through the magic of ESPN holding a trademark on the term "Saturday Night Football", a Saturday was transformed into a Thursday. I've already contacted my nine-to-five employer to assure them that I was unaware of this sorcery and to see if I will be disciplined for not coming into work on Sathursday. They've assured me that they have no idea what I'm talking about.
And, of course, what makes all of this so damned infuriating is that ESPN's trademark is so unbelievably and obviously purely descriptive that it makes one wonder how in the world it was ever granted to begin with. The NFL's lawyers in particular appear to have been muzzled by whoever in the league is negotiating with broadcast partners, because ESPN's mark is just begging for opposition. Instead, we got "Thursday Night Football: Saturday Edition", which would make as much sense as "Thursday Night Football: Baseball Edition." Which is to say, no sense at all.
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.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.
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.
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.
The latest example of trademark overreach comes from PNC Bank, who threatened a reporter at the San Francisco Chronicle for having the gall to use the phrase "virtual wallet" in an article. PNC sent a legal nastygram, telling the SF Chronicle that it must "refrain from misuse of our client's VIRTUAL WALLET trademark." Except, of course, that's hogwash. Nothing in trademark law could possibly make that true, and the Chronicle's James Temple responded appropriately:
To which I say: virtual wallet, virtual wallet, virtual wallet, virtual wallet.Furthermore, he notes that the trademark itself is almost certainly invalid, as the phrase was in widespread common usage for many years before 2008 when the bank sought the trademark (and, ridiculously, the USPTO granted it).
In late 1994, Newsweek published an article titled "The Age of Cybercash" that informed readers: "Your virtual wallet may soon be here."Temple goes on to call out others who have sought to abuse trademark law to "homestead" the English language -- including our favorite trademark troll ever, Leo Stoller, who "trademarked" all kinds of words including "stealth," "all goods and services," "chutzpah," and (oh yeah) "Google" which he claimed to have been using since 1981.
By the end of 2007, the term "virtual wallet" had appeared more than 700 times in the English press, including in American Banker, the Economist, the New York Times and Consumer Reports.
Nevertheless, the following year, PNC Financial Services Group launched a "Virtual Wallet" product. It sought trademark protection, asking to own the commercial rights to two consecutive words that had been pushed together by the press and industry more than a decade earlier.
As Temple notes, PNC is trying to avoid having the phrase "virtual wallet" be declared generic such that their registered trademark can be eliminated, but if they didn't want that to happen, they probably shouldn't have gone with such an already generic and descriptive phrase. ]]>