PORTLAND, Ore. – In the summer of 2019, Boyajian Products LLC, better known by the brand name “Wild Flower Sex,” began marketing the “Enby” pleasure product. As the name of the product (a term which evolved from the acronym N.B., which stands for “non-binary”) suggests, the Enby was envisioned as a non-binary sex toy – “a vibrator for every body” as the product’s marketing tagline goes.

In the fall of last year, an Oregon-based company called ENBY LLC opened an online store, ShopEnby.com, on which it sells a variety of pleasure products. The use of “enby” in the domain name triggered a lawsuit from Boyajian, filed in November of last year, in which Boyajian alleged that ENBY has engaged in unfair competition under both federal and Oregon law, trademark infringement and unlawful trade practices under Oregon law.

For those who follow intellectual property litigation, among the first things that stands out about Boyajian’s complaint is that the company asserts the defendants violated Boyajian’s “common law trademark rights,” which indicates Boyjian company doesn’t own a registered trademark on “ENBY.” As it turns out, the absence of a registered trademark on the term is not for lack of Boyajian trying to register that mark.

Boyajian applied for a trademark on “ENBY” in April of 2019, but the application was refused by the U.S. Patent and Trademark Office. The USPTO found the term is “merely descriptive” of the “intended user for the applicant’s goods,” and therefor does not act as a source indicator.

Boyajian responded to the rejection by arguing that the “fact that a mark has the potential to be used descriptively does not, in and of itself, render that mark generally descriptive in relation to the goods or services offered.” Boyajian further agued that “the ENBY mark does not describe the goods with particularity,” which is required for a mark to be considered “merely descriptive.”

In its “Final Office Action” on the application, the USPTO’s examining attorney disagreed with Boyajian, noting that “product reviews and Internet articles, including interviews specifically of the product owners and designers, show that the goods are specifically designed to be used by persons who are ENBY, or non-binary.”

That trademark application was abandoned in December 2019, when Boyajian failed to respond to the Final Office Action. Boyajian filed a new application on October 15, 2020, for use of the ENBY mark on sex toys, stating that the mark is already in use. The next day, Boyajian’s attorney sent ENBY, LLC a cease and desist letter (which Shop Enby then posted to Instagram with commentary), in which the lawyer claimed Boyajian “has owned the ENBY mark in relation to sex toys since at least as early as June 2019.” Boyajian filed its complaint in district court in Oregon a month later, November 17, 2020, asserting that it never received a response from ENBY, LLC to the cease and desist letter.

In its complaint, Boyajian states the company “has used the ENBY mark in commerce throughout the United States and internationally continuously since as early as June 2019 in connection with the manufacture, distribution, provision, offering for sale, sale, marketing, advertising and promotion of its rechargeable vibrator.”

“As a result of its widespread, continuous, and exclusive use of the ENBY mark to identify its rechargeable vibrator and Plaintiff as its source, Plaintiff owns valid and subsisting rights to the ENBY mark,” the complaint continues. “As a result of Plaintiff’s expenditures and efforts, the ENBY mark has come to signify the high quality of the goods designated by the ENBY mark, and has acquired distinctiveness, incalculable distinction, reputation, and goodwill belonging exclusively to Plaintiff.”

Boyajian contends that ShopEnby’s use of “enby” is infringing and “confusingly similar to Plaintiff’s ENBY mark and is likely to cause consumer confusion as to the origination of the goods and services.”

“Defendant’s infringing acts as alleged herein have caused and are likely to cause confusion, mistake, and deception among the relevant consuming public as to the source or origin of the Defendant’s goods and services,” Boyajian adds in its complaint, “and have and are likely to deceive the relevant consuming public into believing, mistakenly, that Defendant’s goods and services originate from, are associated or affiliated with, or otherwise authorized by Plaintiff.”

In a motion to dismiss the complaint filed last week, ENBY LLC highlights the widespread use of the term to refer to non-binary people, established well before Boyajian’s use of the mark in connection with its pleasure products.

“Although literature, dictionary definitions, and many other publications reflect that the term ‘enby’ for non-binary persons has been in common use since before Boyajian, a New York company, alleges to have started to use the mark, Boyajian claims ownership of a valid, subsisting rights in the unregistered trademark ENBY for a rechargeable vibrator,” the defendants noted in their motion.

Unsurprisingly, the motion to dismiss also cites the USPTO’s rejection of Boyajian’s application for a trademark, observing that the USTPO “also recognized that the term ‘enby’ is merely descriptive and not appropriate for registration.”

“The USPTO determined that the ENBY mark was not registrable, finding the mark to be ‘merely descriptive’ because the mark describes the intended users or group of users of the product,” the defendants wrote in the motion to dismiss. “The USPTO denied Boyajian’s application with finality on December 30, 2019, because Boyajian did not refute the determination that the mark was not registrable.”

In their motion to dismiss, the defendants cite Bayer Co. v. United Drug Co, asserting that the “critical question of any trademark dispute is ‘What do the buyers understand by the word for whose use the parties are contending?’”

“Buyers in the sex-toy market understand the term ‘enby’ in its ordinary usage to be a term to describe non-binary people, who are the target consumers for the Boyajian’s rechargeable vibrator,” the defendants argue. “Boyajian does not, and cannot, allege that the term enby is exclusively or meaningfully associated with its product. No additional allegations would change the fact that enby is a widely used term understood by the general public, and the relevant consumers, to refer to an entire gender identity. The complaint should be dismissed with prejudice.”

Beyond the immediate intellectual property questions raised in it, this lawsuit has relevance to any business that seeks to develop products that make use of terms which have already acquired well-understood meanings within the community or market those products are designed to serve. Can you adopt (or maybe I should say “appropriate”?) such terms into your brand names and protect them from infringement? If you can’t persuade the USPTO that your proposed mark is valid for the purpose of registering it, will the court permit you to rely on common law trademark claims regarding the same mark?

This case is still in its infancy and of course could resolve without full adjudication, should the parties reach a settlement of some kind, or the case be withdrawn. Either way, I’ll be keeping an eye on it and will provide updates if/when there are significant developments. Stay tuned.

Gavel stock photo by Sora Shimazaki from Pexels