UW-Madison in trademark fight with Texas economist

The University of Wisconsin-Madison is opposing an economist’s application to trademark phrases that include the word “bucky.”

Ed Hirs, an expert on Texas’ power grid and a lecturer at the University of Houston, applied late last year to trademark “buckynomics” and “buckymarkets” with the U.S. Patent and Trademark Office.

He says the terms come from the name of a carbon particle — buckminsterfullerene, otherwise known as buckyballs. Hirs says he uses the terms these to explain how different markets are interconnected.

“Some of my critics may refer to me as a cartoon character, but I’m definitely not one,” Hirs said.

“I’m a professional economist, and I talk about network economics. And I use this in my consulting practice. I use this in my publications,” he said. “It’s a way of communicating a couple of salient conceptual ideas about how markets are tied together and coordinated.”

The UW and its licensed retail manager, Fanatics, see his trademark application very differently.

The university has its own U.S. trademark application for “Bucky” to be used in apparel and educational services. It also has already registered trademarks in the state of Wisconsin for the name Bucky and Bucky Badger.

In a filing in opposition to Hirs’ application, the university says its Bucky trademarks “are so well-known in connection with UW, that, as of 2015, the general public refers to the substantial economic impact that the University has on the State of Wisconsin as the ‘Bucky Effect’ and the ‘Bucky Economy.’”

The filing says that anyone who receives counsel and advice from Hirs related to “buckynomics” or “buckymarkets” are “likely to be confused, mistaken, or deceived as to the source of such services and believe they originate from the University, when they do not.”

The university’s mascot was named Buckingham U. “Bucky” Badger in 1949, according to the filing.

“Bucky represents various academic departments and groups at the University by occasionally wearing a stethoscope for the Medical Alumni Association, a Roman-style toga for the Classics Department, a lab coat in support of the University’s laboratory sciences, and even wearing overalls and carrying a pitchfork to represent the University’s Agricultural and Life Sciences Department,” the filing states.

Hirs and his attorney argue there is no opportunity for confusion between what he does and the university’s mascot. They point out that there are other mascots called “Bucky,” and many other trademarks that include the name.

“There’s no confusion in the marketplace,” said Karen Tripp, an intellectual property attorney representing Hirs. “People interested in Mr. Hirs’ buckynomics and buckymarkets explanation don’t have in mind anything related to University of Wisconsin or their mascot when they’re thinking about his economics terms. It’s just not any overlap in the market at all.”

University spokesperson John Lucas declined to be interviewed. In a written statement, he said trademark applications are routinely reviewed for possible infringement.

“In general, when an entity attempts to register or infringe on a trademark owner’s marks, United States trademark law requires that the owner take appropriate action to avoid dilution or the appearance of abandonment of its marks,” Lucas wrote. “As a result, the university actively defends its ownership rights in accordance with trademark law.”

Tripp said she does not expect a settlement before the trademark office board makes a decision. The process would likely take until early 2025.