The word “doge” means nothing beyond its association with a viral internet meme. So why does a company best known for making plastic protectors for your Magic: The Gathering or baseball cards want to trademark that word?
Ultra Pro International LLC is in line to control the use of the word “doge” with any clothing if its trademark application goes through on July 8. The move to trademark the word has the Dogecoin community and its meme lovers baring their teeth. The case of whether or not the company can (and will) succeed in trademarking the name of the continuously happy meme has become a messy clash between law and perception. And it provides a cautionary tale to other businesses who might be looking to trademark viral internet content.
All in a name
Memes are harder to trademark as a whole because they typically contain two parts: text and an image. Often, the text portion will change and change again as people refine the joke — which helps the meme go viral, but makes it more difficult for the original meme author (or those who want to make a buck off of them) to trademark parts of the meme.
Doge is not the first time Ultra Pro has been interested in releasing a product line based on a meme, General Manager Jay Kuo told me in an email. But most of the time the company, which makes sports and game memorabilia, will pass on meme-based lines because it can’t secure a license. In fact several popular memes, like Grumpy Cat and Nyan Cat, have trademarked names and images held by their original creators.
“In this case we have a direct license with the original owner of the photograph. We’ve passed on plenty of memes due to non-response from the image owners,” Kuo wrote. “In this case, we got a response, but we simply needed a name to define the line of products.”
Ultra Pro applied for the trademark on May 20. The trademark is only for use of the word ‘doge’ for “clothing, namely, men’s women’s and children’s wearing apparel, namely, shirts, pants, jeans, sweaters, sweatpants, sweatshirts, shorts, T-shirts, and pajamas”. (Another trademark application was filed in March for protector sleeves and game mats, but was sent back to Ultra Pro for additional information.) Since no one else held the trademark, Kuo said the company filed to protect itself down the line from potential competitors who might make a line of doge clothing and then decide to sue Ultra Pro.
“Our intentions were never to block out the current market for ‘Doge’ products, but in fact we hoped to better commercialize the concept, the image and the meme in mass market.”
Despite the company’s alleged best intentions, the Doge community, especially its cryptocurrency supporters, raised their hackles at news of the trademark application.
After the Ultra Pro news came out, financial platform Moolah.io immediately responded that it planned to file in opposition to the trademark application.
Even though Ultra Pro claimed it had no plans to send cease-and-desist letters, Moolah’s CEO said the company is looking into legally disputing the trademark once it publishes.
“A large quantity of our customers (merchants) sell various dogecoin related items. T-shirts, hats, etc. At the end of the day, we will do whatever it takes to protect them from the threat of frivolous legal action,” said its CEO, Alex Green, in an email. “We’re a multi-coin company, but dogecoin is where we started, and we’re still heavily involved with the community. We’ll defend it till the end.”
Moolah’s immediate response did upset some in the Doge community who were not as worried about the registration. Dogecoin’s co-creator Jackson Palmer said in an email that he wasn’t worried about the mark affecting the cryptocurrency.
“Big companies have to protect themselves from that type of stuff, so I don’t really blame them. Especially if lots of their customers are asking for “Doge” themed shirts, that’s actually a good thing,” Palmer said.
Instead, Palmer was more concerned about companies like Moolah stepping in. After Palmer and Moolah’s Green traded blows on Reddit, the dogecoin co-founder has since unsubscribed from the subreddit.
Does an internet meme make it generic?
Many people in the Doge community argue, however, that the trademark will never go through because it’s a generic word. But the fact that it’s an internet meme and a viral word doesn’t make it a generic or a descriptive term when it comes to trademark law.
“Just the fact that there is a meme out there of the word Doge doesn’t give it a monopoly in all uses of that word,” said Andrew Goldstein, an IP lawyer at Freeborn & Peters. “Even if it were in the public vernacular as a descriptive term for cryptocurrency, it’s not necessarily the same for t-shirts, caps, etc. If I were to take the word ‘soup’ and I want to sell t-shirts called soup t-shirts, no one, not even Campbells or Progresso, none of them could do anything about that. If I try to register soup as the trademark for soup, then there’s an issue.”
The U.S. Patent and Trademark Office has already determined that Doge is not a generic word or in need of a disclaimer, said Kevin Keener, the trademark attorney on Ultra Pro’s filing. The trademark office is set to publish the registration for review on July 8. After that, people will have a chance to file an opposition to the mark for 30 days, Keener said. He also noted that the trademark that Ultra Pro filed for is only an “intent to use” trademark, which means the company has to provide proof that they have used the mark within six months after issuance.
Even if Ultra Pro is awarded the trademark down the line, the company would still have to defend it or else possibly lose it because it would become generic.
“If everyone starts registering Doge this and doge that for t-shirts, then it would become generic and their rights would be lost,” Goldstein said. “I’m sure they have whole departments at Kleenex who make sure people don’t say ‘hand me a Kleenex.’ It’s ‘hand me a Kleenex brand tissue.’”
Hackles coming down
Keener, the attorney for Ultra Pro, said that the company’s intentions were to strictly protect themselves from larger companies from mass-producing a national doge clothing line.
The company has publicly reiterated that fact on Twitter and did an AMA on the Dogecoin subreddit.
Its approach to opening up the trademark and offering it royalty-free is unusual though — and one that the company can’t be legally held to down the road.
Corynne McSherry, Intellectual Property Director for the Electronic Frontier Foundation, voiced hesitation about the statements Ultra Pro had made, especially when it came to possibly restricting free speech on the internet down the line.
“You can start out at good with intent, but that’s not how it ends up,” McSherry said in a telephone interview. “My experience unfortunately has been that people who own trademarks have a very strange notion of what rights that really gives them and they think they start owning all uses of the term. Then they start trying to threaten all kinds of people who happen to using the term in all kinds of way. I think it’s worth paying attention to and worrying about.”
Both Goldstein and McSherry questioned the need for the company to obtain the trademark at all if they have no or few plans to restrict its use.
“People do this with domain names a lot,” McSherry said, comparing Ultra Pro’s application to domain squatting. “I think the trademark office should send them back to the drawing board to come up with a trademark that actually identifies you as oppose to all the other things using the term.”
If the company had launched the product line without the trademark, it could have argued that it had the trademark just from actual use of the mark. According to the United States Patent and Trademark Office, “Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application.”
Regardless of Ultra Pro’s stated intentions in opening up the trademark, the doge community is left having to trust Ultra Pro and each other to not take advantage of the good name of doge. The real lesson though is that when you trademark a meme, you have to play nice with its community — or face the wrath of thousands of angry fans. A meme’s built-in virality can be your downfall or your market.