A Texas economist trademarked 'buckynomics.' That doesn't sit well with UW-Madison

The University of Wisconsin-Madison's beloved mascot is tangled in a trademark fight.

The state flagship and its licensed retail manager, Fanatics, are badgering a Texas economist who trademarked the phrases "buckynomics" and "buckymarkets."

UW-Madison argues the terms encroach on its use of Bucky Badger. The university is opposing the bid by Ed Hirs, who teaches at the University of Houston. Hirs said he was unfamiliar with the Bucky Badger mascot when he started using the phrases in his lectures and academic writings.

"I could give one shake of a badger’s tail about the University of Wisconsin," Hirs said about the fight UW-Madison initiated earlier this year. "It’s better to call him Bucky the Troll because he’s trolling me, for God’s sake."

Where did 'buckynomics' and 'buckymarkets' terms come from?

Hirs said he uses "buckynomics" and "buckymarkets" to help students understand network economics, or the complex interdependency of different markets.

His inspriration for the terms came from his time working in the lab of Texas scientists Richard Smalley and Robert Curl, who discovered a form of carbon called buckminsterfullerene, or "buckyballs" for short.

How do trademark disputes work and when will decision come?

The U.S. Patent and Trademark Office is overseeing the dispute, also called an opposition proceeding. It was first reported by the Houston Chronicle. Most trademark disputes lead to settlements early in the process before the office's three-person board issues a decision.

In this case, if the dispute goes that far, a decision by the board likely wouldn't come until early 2025.

What has UW-Madison argued in this case?

Bucky is more than a sports mascot, UW-Madison said in a filing. He attends parades, festivals and academic ceremonies. For example, Bucky has wrapped a stethoscope around his neck for the Medical Alumni Association, slipped on a Roman-style toga for the Classics department and donned overalls to represent the College of Agricultural and Life Sciences.

Bucky also promotes a number of university programs that bear his name, including Bucky's Tuition Promise, a scholarship program for low-income students, and Bucky on Parade, a public art event supporting local charities.

UW-Madison said Hirs' terms “are likely to be confused, mistaken, or deceived" as originating from the university when they do not. That's especially true for the economics department, university lawyers argued.

What do Ed Hirs and his lawyer say?

Hirs doesn't see any risk of confusion in the marketplace. He promised he wouldn't sport a striped sweater nor puff his chest like Bucky does. He believes he's much scarier as an energy economist.

A Texas Monthly headline in 2021: "Ed Hirs Has Been Predicting This Mess for Years." Winter storms that year caused a massive electricity generation failure, swathing the state in blackouts and leading to shortages of water, food and heat.

"I don’t think Bucky's done anything in oil and gas markets, in analyzing electrical grids or making recommendations on public policy issues relating to energy markets," Hirs said. "It's kind of a stretch in his career path."

Karen Tripp, a Houston-based intellectual property attorney who is representing Hirs, said he's got a strong case.

"To the university, I’m sure he’s very famous," she said. "But to me, it’s the character. I don’t think the word by itself connotes Wisconsin. Maybe to people in Wisconsin, it does. Here, when you say Bucky, you think of the gas station (Buc-ee's.)"

How has the case unfolded so far?

U.S. trademark law generally requires owners take action to avoid dilution or the appearance of abandoning its trademarks, UW-Madison spokesperson John Lucas said. Money earned through licensing sales is being used on this case, not taxpayer dollars.

The university has taken "a reasonable approach" to the matter and is working with Hirs to achieve a resolution, while still protecting its rights, he said.

Hirs and his lawyer have a different take. The fight has been aggressive, Tripp said. In her 42-year legal career, she's never had any of her trademark registration proceedings include a deposition.

UW-Madison plans to depose Hirs next month.

Contact Kelly Meyerhofer at kmeyerhofer@gannett.com. Follow her on Twitter at @KellyMeyerhofer.

This article originally appeared on Milwaukee Journal Sentinel: University of Wisconsin-Madison starts Bucky Badger trademark dispute