Many of you have no doubt already heard about popular YouTubers Fine Bros. trying to get a trademark on the word “React.” You already know about it, because you are way more in the loop than I am. But, this morning, I came across this article by attorney Ryan Morrison, and I felt the urge to weigh in on the matter. So, after a very modest amount of research, including the Trademark Office records, here is an alternate take on the situation. For the record, I do not know Mr. Morrison, and nothing that I say here is any sort of attack on him. For all I know, he is an excellent lawyer. And I appreciate his enthusiasm on this matter, but I want to offer a more nuanced presentation of the law.
First, as a general matter, this whole things doesn’t seem intrinsically evil. Fine Bros. have apparently been using “REACT Channel” on YouTube since October 16, 2010. That’s a long time, as far as these things go. And, as a professional who deals with these exact issues all day for a living, the mark “React” for “an on-going series of programs and webisodes via the Internet” doesn’t strike me as so egregious that I would tell the client that he’s out of his mind. It seems weak, especially since the people in the videos are just “reacting” to things, but I’ve seen worse cases get through the Trademark Office. In this case, I’m surprised, but not grossly appalled. And even if React, as applied to their videos, is merely descriptive (and therefore not inherently protectable); after five years, mark-holders can try to show that they have gained enough awareness and notoriety in their descriptive mark that they should get the federal registration for it, anyway. (We call this “secondary meaning,” as some of you may know.) This issue of secondary meaning is the same reason that anyone named Joe McDonald can’t open a restaurant and call it McDonald’s. Wendy Smith can’t have a fast-food place called Wendy’s. An airliner that does flights in the southwestern U.S. doesn’t get to be “Southwest Airlines.” Etc. (If anyone needs an explanation on the strength of trademarks, I just so happen to have written one.)
Second, the filing date for this mark was July 10, 2015. This means that anyone who was using “react” for Internet videos before that date will not be affected by this registration. Trademark rights accrue from being used. It is a separate matter whether Fine Bros. have any rights in “React” apart from the trademark application at issue. Maybe they do, and they could possibly enforce those rights against any other “React” video series that came up after October 16, 2010 (or maybe some middle date, depending an a number of factors that aren’t worth getting into here), even without the federal rights.
Third, trademark law protects words used in a trademark sense. This might be hard to explain. Some of you are probably aware of a cereal called “All-Bran.” All-Bran is the name of that cereal. Now, let’s say that you made a competing cereal. You can’t name the cereal All-Bran, because that’s taken. So, let’s call it Murphy Flakes. Now, Murphy Flakes is composed of 100% bran flakes. Therefore, you could legitimately state that your cereal was, quite literally, “all bran,” and you could say that right on the box. As long as you don’t make the words “all bran” look like this cereal box produced by Kellogg’s, then you have done nothing wrong. So, if people use the word “react” to legitimately describe their Internet videos, then they aren’t running afoul of trademark laws, as long as they aren’t trying to make it seem as though said videos actually came from Fine Bros. For the record, you could also have called the cereal “React Flakes” and not run afoul of the Fine Bros.’ trademark, because marks only protect the term in question for a specific set of goods and services. And Internet videos are not close enough to cereal to cause any trouble.
Finally, I do have to flat-out disagree with the claim that “[t]rademarks are much more broad and powerful protection than copyright.” I don’t think that trademarks are more powerful than copyrights, and certainly not in this case. A trademark on “React” for Internet videos will not stop anyone from making reaction videos. You are still free to film anyone reacting to anything without running afoul of this trademark application (although other laws might still apply (e.g. trespass, stalking, etc.)) You just have to use a different name, and then you are free to produce the exact same goods and services as Fine Bros. You could have a series of videos called “Wow!” or “Shocking!” or maybe even “Wendy’s” or “Southwest,” for that matter. Trademarks are only concerned with words, not content. Specifically, the words that a business uses to identify its products. I think that any trademark claims or copyright claims would be rather thin on protection, in this case, but I can’t agree that a trademark offers “much more broad and powerful protection than” a copyright. Especially not as a general matter, as Mr. Morrison seems to be alleging. So, when Mr. Morrison says, “These guys didn’t come up with the idea of filming funny reactions from kids. And they certainly don’t own an entire genre of YouTube videos. It wasn’t their idea, and it’s not theirs to own or police,” in charity, I’m going to assume that he’s accusing Fine Bros. of trying to use their trademark to claim ownership over an entire genre of YouTube videos. Otherwise, he is expressing a gross misunderstanding about what trademarks do and don’t cover. (For the record, copyright wouldn’t cover the blanket idea of “reaction videos” either.)
And on the matter of the other trademarks (“DO THEY KNOW IT?, KIDS VS. FOOD, LYRIC BREAKDOWN, PEOPLE V. TECHNOLOGY, and TRY NOT TO SMILE OR LAUGH),” again, I don’t see those as awful. Some of them strike me as somewhat weak, some don’t. “Lyric Breakdown” seems like a decently strong trademark to me; “People v. Technology” less so, but I wouldn’t be shocked if a trademark examiner let it through. And, for the record, speaking in legal terms, a mark cannot be both generic and descriptive at the same time. To be fair, I think that “Kids React” and “Elders React” are even weaker than just plain “React,” and I agree that those never should have gotten through application process.
Now, with that said, this trademark does seems to be evil as applied in this case. If Fine Bros. are sending out hundreds of cease-and-desist letters to YouTubers who have posted reaction videos, then this might be one of the first cases of trademark trolling that I’ve heard of. I’ve dealt with patent trolls and copyright trolls before, but not trademark trolls (although I can think of one notable prior case). Just because a YouTuber is totally justified in giving his video the title “My sister reacts to a werewolf attack,” I fully understand that Fine Bros. aren’t going to play nice, regardless. Even if the YouTuber in question would ultimately win the resulting trademark infringement lawsuit, that lawsuit would still be really expensive to fight. If Fine Bros. are hoping to use this mark to bludgeon anyone who posts a reaction video to YouTube, or to extort unnecessary licensing fees from them, then I wish Mr. Morrison all the best in his efforts to oppose them. However, it doesn’t seem like this will be necessary, since, according to Trademark Office records, the mark was expressly abandoned yesterday.
As always, this is just legal information, not legal advice, and (unless you hired me recently) I am not your lawyer.
© 2016 Sam Castree, III
SamCastree [a.t] crawfordpatents [d.o.t] com