Leeja Miller
In November, one adult toy company sued another adult toy company alleging infringement of their trademark rights in the term “ENBY.” The case has caused an uproar within the nonbinary and sexual wellness communities and has incited newfound interest in trademark law. It begs the question: can a company own a term like enby?
The Background
The plaintiff in the case, Boyajian Products,1 does business as Wild Flower, an adult toy company and sexual wellness space that purports to promote “self care, sexual well being, and an all-inclusive atmosphere.” The company launched their first sex toy in June 2019. The toy is meant to be used by people of any gender and, as such, Wild Flower called the toy “enby,” which is short for “non-binary,” a term used by people who do not identify with the male/female gender binary. Wild Flower purportedly sells its enby toy throughout the United States, including in Oregon.
In September 2020, a new adult toy shop opened in Portland and called themselves Enby LLC. Not long after, in October, they received a cease and desist letter from Wild Flower’s attorney claiming that Enby LLC was infringing on Wild Flower’s trademark rights in the term ENBY and demanding that Enby LLC cease using the ENBY mark. When Enby LLC did not respond, Wild Flower slapped them with a lawsuit, claiming unfair competition under the federal Lanham Act as well as state and common law trademark infringement.
The Backlash
Enby LLC took to social media to call Wild Flower out on what they saw as predatory behavior and for striking at the very communities of which they purport to be allies. See, Enby LLC is a “Black/Trans-owned company run by 3 enby’s” and shares many of the same goals that Wild Flower claims to promote in its own work. Many people saw this attack on Enby LLC as antithetical to what Wild Flower claims to stand for and as an attack on the nonbinary community’s control and ownership over a term that has come to be used as an empowering personal identifier. As essayist Sherronda J. Brown succinctly put it:
It is unconscionable, the length to which white people will go in order to claim ownership over things that do not belong to them, that have never belonged to them. Not only are they attempting to steal and then profit from something that is meant for a community of marginalized folks—trying to prohibit enbies from using enby, such is the violence and absurdity of colonizers—but they are also out to destroy a business by and for enbies.
And this isn’t the first time Wild Flower has come under attack for its transgressions towards communities it claims to support. In 2019, Wild Flower, run by a white couple named Amy and Nick Boyajian, was publicly called out by a group of Black femmes who all came together after having similar negative experiences with Wild Flower. Wild Flower’s response to being called out was less than impressive, and, one year later, history appears to be repeating itself.
The Law
To be clear, in a typical trademark case, Wild Flower’s actions are relatively standard. Along with trademark ownership comes the obligation to police the mark, meaning that if trademark owners wish to maintain strong rights in their mark, it is their duty to stay alert to any potentially infringing activity and shut it down before it continues for too long. The more marks in the market that are similar means the weaker a trademark owner’s rights are, which devalues the mark and could eventually lead to the mark owner losing any rights they have altogether. Often, when infringing activity is discovered, the first course of action is to have a lawyer send a cease and desist letter in the hopes of avoiding costly litigation. If the letter is unsuccessful, the business owner must choose whether to pursue a stronger course of action (litigation), seek out a co-existence agreement, or drop the case entirely. The choice is a business decision that depends on a number of factors, including how much time and money the trademark owner wants to spend on the issue. In this case, Wild Flower apparently decided it was in its best business interest to pursue litigation in order to protect its alleged rights in the term ENBY.
What makes this case different from a typical trademark case is the fact that Wild Flower’s rights to the term ENBY in the first place are questionable at best. Back in January 2019, Wild Flower applied for registration of the term ENBY with the U.S. Patent and Trademark Office (USPTO) for use in connection with sex toys. The USPTO denied Wild Flower’s application, stating that the word ENBY was merely descriptive of the toy. The examining attorney found that a mark that describes the context of use, such as the intended users of a product, is merely descriptive of the product itself and thus cannot be registered as a trademark. Trademark law is concerned with descriptiveness because it would impede competition in the marketplace if one company were allowed to own a term that merely describes the product itself. Then, anyone who wishes to sell similar goods would be precluded from using the word to describe its goods, which would squash competition. Here, it makes intuitive sense that an “enby sex toy” would be used to describe any type of toy that is meant to be used by nonbinary folks and, therefore, granting Wild Flower the exclusive right to use the term ENBY in relation to sex toys would unfairly preclude every other company from describing their sex toys as “enby,” a term which is commonly used to mean “nonbinary.”
In October 2020, Wild Flower filed another application with the USPTO for the term ENBY for use in connection with sex toys. It appears that Wild Flower is trying to claim that it has managed to get around the pesky “mere descriptiveness” bar with what is known as “acquired distinctiveness.” Even if a term merely describes the goods or services that are being marketed in connection with the mark, trademark rights can still be acquired if, over time, the user of the mark has established such a clear reputation in the minds of consumers that they have come to associate the descriptive term with the goods or services sold by the user of the mark. Take American Airlines as an example. That mark literally just describes the services: an airline in America. However, when you read “American Airlines,” you know exactly which company is being referred to, and you probably already have an idea of the quality and type of service you will receive. The mark “American Airlines” has acquired distinctiveness. To acquire distinctiveness usually requires an extensive investment of money in promoting the goods and services in connection with the trademark, as well as a long investment of time (sometimes five years or more) in order for the mark to gain that distinctiveness in the minds of consumers.
Based on Wild Flower’s newest application for the term ENBY (which has yet to be reviewed by the USPTO) and what is claimed in Wild Flower’s complaint against Enby LLC, it appears that Wild Flower is now claiming that it has acquired distinctiveness in its use of the term ENBY, meaning that even though it merely describes the sex toy, the term ENBY is now so ubiquitous with Wild Flower’s goods that it is linked in the minds of consumers and has gained that coveted acquired distinctiveness. Therefore, Wild Flower asserts, it can bring this lawsuit against Enby LLC for trademark infringement, even though the USPTO has rejected its past application.
Apparently, Wild Flower believes this has all happened in the span of 18 months since the sex toy was launched. This will have to be determined by the court in Boyajian Products, LLC v. Enby LLC through various and usually expensive means such as consumer surveys conducted by experts who charge anywhere from $100-$1000 per hour (or more) for their services. Likely, Wild Flower is hoping Enby LLC, which is a new and small business without many legal and monetary resources, will concede defeat and change its name before getting to that stage. So far, however, Enby LLC has mounted a legal fight via a crowdfunding campaign, and their lawyers have requested an extension to respond to the complaint, indicating that Enby LLC will not be stepping down at this juncture.
So, can trademark rights to the term ENBY be owned by one company? According to the USPTO, no. But through acquired distinction, maybe. However, whether or not ownership of a personally identifying term that a community has used to gain solidarity and empowerment is ethically the correct business choice for a company that purports to promote an “all-inclusive atmosphere” is an entirely different question–one that the law cannot answer.
1 Boyajian Products, LLC v. Enby LLC, 3:20-CV-01991, (Dist. Or.).
Leeja Miller is an intellectual property attorney by day who moonlights as a YouTuber on a mission to demystify the law and how it affects viewers’ everyday lives through political, current event, and pop culture commentary. She is passionate about making the law more accessible and less elitist through the creation of engaging and entertaining content. Leeja lives in Minneapolis with her extremely fat cat named Bubbles. Bubbles is currently on a diet and greatly displeased. You can find more of Leeja’s content on YouTube, Instagram, Twitter, and, yes, even TikTok.