9 ms·

One interesting thing to me, is that it is pretty clear that the kik lawyers pretty dramatically over enforced their trademark. For those who don't know, the p

One interesting thing to me, is that it is pretty clear that the kik lawyers pretty dramatically over enforced their trademark. For those who don't know, the purpose of trademarks is to prevent customer confusion; essentially we don't want people to be able to sell cheap knock-offs of someone else's thing without the general public being able to easily distinguish between them. In practical terms, trademarks are "scoped" by their "goods and services" declarations. For example, Apple the device manufacture[1] and Apple the record label[2] could both be trademarked because they had non-overlapping goods and services declarations... until iTunes started selling music[3]. If you look at kik's trademark application[4], you can clearly see that the trademark is limited to chat/media consumer applications, a pretty obvious over enforcement. [1] http://apple.com http://apple.com [2] http://applerecords.com http://applerecords.com [3] https://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer https://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer [4] https://trademarks.justia.com/858/93/kik-85893307.html https://trademarks.justia.com/858/93/kik-85893307.html

smt88 11y ago
That's not necessarily true if Kik were planning to open up some kind of API. Also, the way the law works in the US encourages corporations to overreach. If you don't try to protect your trademark from every possible angle, it can lead to your loss of it in a court battle. A lot of times, lawyers will send out letters without caring how the recipient responds -- they only need to have sent the letter at all to have covered their bases.
- gpm 11y ago
  > That's not necessarily true if Kik were planning to open up some kind of API. Surely opening up a new API doesn't give them retroactive rights to the name in that space.
  - smt88 11y ago
    As someone pointed out in another thread, you similarly couldn't name a package something like "facebook" even if Facebook had no API.
    - spinlock 11y ago
      facebook may be a bad example. they named themselves after a generic directory that many colleges have been giving out for decades.
      - smt88 11y ago
        See also: YellowPages.com, Salesforce.com, etc. Just because something exists in real life (and used to describe a non-digital version of the same thing) doesn't mean it can't then be trademarked.
        spinlock 11y ago
        Sum had to change the name of its yellow pages application to nis because yellow pages is copy righted. You don't seem to be very well informed.
    - jackielii 11y ago
      there is a package called facebook: https://www.npmjs.com/package/facebook https://www.npmjs.com/package/facebook and it doesn't seem to be owned by facebook?
  - slgeorge 11y ago
    It doesn't have anything to do with the API. Kik (the company) registered the name and have rights to the name. Technically, Kik (the company) registered their trademark in the class "Computer Software" [0]. That means that no-one else can use the word Kik (and the logo) for this class of activity. The key issue is when the registration happened. Since they've been going since 2009, and Kik (the software project) only started in 2015, Kik the company was there first. The reason their lawyers are asking for "Kik the project" to change name is because trademarks can become generic if you're not seen to protect your mark [1]. As a private company (particularly VC funded), IP has a lot of financial value: the business will be valuing their trademark. If they don't protect it then they'll be "throwing money away". The fact that the business world (and VC's generally) highly value IP is why most people over-register. If they didn't go for wide classes, and then in a few years decided to work in a particular area they might not have rights to their "own name" in that class. It's a case of the Open Source and Business world-views clashing. [0] Someone else in the thread found the specifics but the link doesn't work for me. [1] Everyone knows the example of Spam.
    - marshray 11y ago
      > Everyone knows the example of Spam. Please show an example of someone other than Hormel Foods Corporation marketing a meat product using any derivative of the name 'Spam' and getting away with it.
      - smt88 11y ago
        Spam was mentioned because it's a brand name that became generic because it wasn't protected aggressively enough. Coke, Xerox, and Kleenex are other classic examples of brands that are commonly used generically, and the company owning their trademarks must aggressively send threats (that they rarely follow up on) just out of legal necessity.
        nommm-nommm 11y ago
        Spam very aggressively protects their trademark. So aggressively that it lost a trademark lawsuit against Spam Arrest. (They lost cause people don't get food and junk mail confused)
- raquo 11y ago
  > A lot of times, lawyers will send out letters without caring how the recipient responds -- they only need to have sent the letter at all to have covered their bases. That is not what happened here though.
  - brazzledazzle 11y ago
    Any chance someone at Kik the company wanted to create an npm module and decided the escalation to lawyers was the right way to resolve things? Seems like the lawyer was more interested in getting possession of the name on npm then actually fighting for a trademark. It doesn't even sound like they bothered with a formal cease and desist.
    - vskarine 11y ago
      https://medium.com/@mproberts/a-discussion-about-the-breaking-of-the-internet-3d4d2a83aa4d#.t9rbguvoh https://medium.com/@mproberts/a-discussion-about-the-breakin...
      - brazzledazzle 11y ago
        Guess that answers that. Bob may have been going beyond what he should have or what they intended but in the end he represented Kik and they have to take responsibility for that.
tantalor 11y ago
They have the responsibility to defend their trademark, otherwise it could be abused by a rival claiming they did not adequately defend it. That said, NPM could have just said, "No, stop bothering us" and the lawyers might have backed down, satisfied their attempt to defend the trademark fulfilled their duty.
- iancarroll 11y ago
  You do not have to defend your trademark against people who are not infringing it. You can only infringe a trademark when you use the mark in the same context it's registered in. IANAL.
- dublinben 11y ago
  >They have the responsibility to defend their trademark This is not limited to only issuing cease and desists. Kik Interactive can offer a zero cost license for the trademark if they want to assert their ownership, but let the project continue to use their name.
  - jessaustin 11y ago
    Some lawyers do not favor low-conflict resolutions, and would not recommend such to their clients.
- bsder 11y ago
  > They have the responsibility to defend their trademark, otherwise it could be abused by a rival claiming they did not adequately defend it. Agreed, but you can do this without pissing off everybody in the universe. http://www.businessinsider.com/jack-daniels-wrote-what-has-to-be-the-nicest-cease-and-desist-order-of-all-time-2012-7 http://www.businessinsider.com/jack-daniels-wrote-what-has-t... Before, I had no idea who kik was. Now, I know them as a bunch of jerks. Big fail for a "social media" company.
  - antihero 11y ago
    Yeah but literally nobody is going to care about this outside the programmer community, and we're not their target audience.
jahewson 11y ago
Yep, I was going to say the same thing. As you say we can look up the US trademarks [1, 2] and see that this mark covers: Computer software for use with mobile phones and portable computing devices to: - download audio, video, digital photos and programs; - electronic payment systems, namely, a computer application software used for processing electronic payments to and from others; - computer software for use with mobile phones and portable computing devices to create video and digital photos to share with other users; computer software for use with mobile phones to launch other applications and connect to other software services. That's it. [1] http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4804:liro6q.4.1 http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4804:lir... [2] http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4804:liro6q.4.15 http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4804:lir...
- deleted 11y ago
  [deleted]
- ShaneCurcuru 11y ago
  USPTO Trademark Pro Tip: search links are session specific. Use the blue TSDR button's link instead: https://tsdr.uspto.gov/#caseNumber=86930821&caseType=SERIAL_NO&searchType=statusSearch https://tsdr.uspto.gov/#caseNumber=86930821&caseType=SERIAL_...
delinka 11y ago
"Providing an interactive website featuring online non-downloadable software" indicates to me that there could indeed be confusion in a repository of software code to be used by other applications. I'd suggest it's certainly not obvious over-enforcement.
- jessaustin 11y ago
  But TFA's "Kik" seems to be sort of a "project generator" like yeoman or something. There is no overlap between that and even the generously expanded description of the litigious "Kik" that you cite.
  - delinka 11y ago
    So, in your opinion, if I built a software application that let you design and order plate glass in decorative form to be placed in the walls of your house and named this app "Windows" would Microsoft's inevitable attempts at protecting their trademark be overreaching? The windows I named my app for are physical things and Microsoft's are virtual, but I'm releasing a software product called "Windows." Both kik names exist in the realm of software. There's an argument to be made for confusion.
    - jessaustin 11y ago
      Yes, even this faintly ridiculous fake example of painstaking mental construction would be overreach. No one would ever download your hypothetical architectural software expecting to get an operating system. As a public service, some toilet or compost bin manufacturer ought to start "violating" trademarks by naming toilets etc. after litigious companies. We'd all get a kik out of hearing them argue that database consumers are likely to confuse the Oracle database with the Oracle water closet. [EDIT: "Sure it's a CRUD app, but I'm more interested in Deletion than Retrieval!"] Of course there are arguments to be made; lawyers are involved.
      - delinka 11y ago
        People with experience in software wouldn't likely confuse the two pieces of software. But most people think "computers" and stop there. Most people visiting an app store would see "Windows" for 99 cents, buy it, then complain when it wasn't Microsoft Windows. They wouldn't read descriptions, and they don't know what an operating system is. Confusion. Microsoft is very likely to prevail in the infringement lawsuit.
overgard 11y ago
The Apple thing doesn't work though, for a specific reason: it's a very common word/name. Smith is a very common surname. If one person starts the Smith Automobile Company and another person starts the Smith Farm, obviously there's no issue there. That's because none of us invented "Smith", it's understood to be a common name, etc. On the other hand, if I start "The Google Paper Company", I'm pretty damn sure I would quickly and easily lose that case, despite the fact that google does not sell paper. And nobody would think that is weird, because Google is very obvious an invention (Yeah, I know, "googol", but the spelling makes it unique). "Kik" is a lot closer to the "google" situation than the "apple" situation.
- jhall1468 11y ago
  That is not how trademarks work. Feel free to start the Google Paper Co. Uniqueness is not a merit for trademark infringement. To infringe you have to be a competitor.
  - tempestn 11y ago
    That is incorrect. You are also infringing if people could reasonably assume an affiliation due to your use of the trademark, which would definitely be the case with Google Paper Co. You're basically piggy-backing on (and diluting) the brand recognition they've built.
    - jhall1468 11y ago
      You are correct in that my Google example would likely be trademark infringement because Google is a famous mark. Kik is not a famous mark, so for this case the famous/well-known aspect of trademark infringement is entirely moot. And keep in mind that the OP I was responding to was arguing that if the name is unique it gets extra protection. That's false. Fame offers extra protection, uniqueness does not.
      - tempestn 11y ago
        "According to Kik Interactive, as of December 2015, Kik Messenger had approximately 240 million registered users, and was used by approximately 40 percent of United States teenagers." https://en.wikipedia.org/wiki/Kik_Messenger https://en.wikipedia.org/wiki/Kik_Messenger Are you sure a court wouldn't consider that qualifying as a famous mark? I'm not going to dig into case law, but my guess is it very well could be. "Evidence relevant to the fame of a trademark may include sales, advertising and revenue figures; geographical scope of use; channels of trade; registrations in home and other countries; past enforcement efforts; and the results of consumer recognition surveys (provided the survey methods are approved by the courts in that jurisdiction)." http://www.inta.org/TrademarkBasics/FactSheets/Pages/FamousWellKnownMarksFactSheet.aspx http://www.inta.org/TrademarkBasics/FactSheets/Pages/FamousW...
vincent_s 11y ago
Most Germans wouldn't know that kik is also a chat app ;-) "KiK is the largest textile discounter chain in Germany and operates about 3,200 stores in Germany, Austria (since 1998), Slovenia and Czech Republic (since 2007), Hungary and Slovakia (since 2008), Croatia (since 2011) and Poland (since March 2012)." https://en.wikipedia.org/wiki/KiK https://en.wikipedia.org/wiki/KiK
- krylon 11y ago
  Being from Germany, I had initially assumed that was in fact the company in question. I was wondering why a textile discounter would care about some NPM module...
  - thatguy_2016 11y ago
    Haha. There is a British company selling eCigs called Kik.co.uk too. Seems Kik is a fairly common term, even for companies.
- therealmarv 11y ago
  This shows the claims from kik messenger are not valid, at least in Germany.

smt88 11y ago

That's not necessarily true if Kik were planning to open up some kind of API. Also, the way the law works in the US encourages corporations to overreach. If you don't try to protect your trademark from every possible angle, it can lead to your loss of it in a court battle. A lot of times, lawyers will send out letters without caring how the recipient responds -- they only need to have sent the letter at all to have covered their bases.

gpm 11y ago
> That's not necessarily true if Kik were planning to open up some kind of API. Surely opening up a new API doesn't give them retroactive rights to the name in that space.
- smt88 11y ago
  As someone pointed out in another thread, you similarly couldn't name a package something like "facebook" even if Facebook had no API.
  - spinlock 11y ago
    facebook may be a bad example. they named themselves after a generic directory that many colleges have been giving out for decades.
    - smt88 11y ago
      See also: YellowPages.com, Salesforce.com, etc. Just because something exists in real life (and used to describe a non-digital version of the same thing) doesn't mean it can't then be trademarked.
      - spinlock 11y ago
        Sum had to change the name of its yellow pages application to nis because yellow pages is copy righted. You don't seem to be very well informed.
  - jackielii 11y ago
    there is a package called facebook: https://www.npmjs.com/package/facebook https://www.npmjs.com/package/facebook and it doesn't seem to be owned by facebook?
- slgeorge 11y ago
  It doesn't have anything to do with the API. Kik (the company) registered the name and have rights to the name. Technically, Kik (the company) registered their trademark in the class "Computer Software" [0]. That means that no-one else can use the word Kik (and the logo) for this class of activity. The key issue is when the registration happened. Since they've been going since 2009, and Kik (the software project) only started in 2015, Kik the company was there first. The reason their lawyers are asking for "Kik the project" to change name is because trademarks can become generic if you're not seen to protect your mark [1]. As a private company (particularly VC funded), IP has a lot of financial value: the business will be valuing their trademark. If they don't protect it then they'll be "throwing money away". The fact that the business world (and VC's generally) highly value IP is why most people over-register. If they didn't go for wide classes, and then in a few years decided to work in a particular area they might not have rights to their "own name" in that class. It's a case of the Open Source and Business world-views clashing. [0] Someone else in the thread found the specifics but the link doesn't work for me. [1] Everyone knows the example of Spam.
  - marshray 11y ago
    > Everyone knows the example of Spam. Please show an example of someone other than Hormel Foods Corporation marketing a meat product using any derivative of the name 'Spam' and getting away with it.
    - smt88 11y ago
      Spam was mentioned because it's a brand name that became generic because it wasn't protected aggressively enough. Coke, Xerox, and Kleenex are other classic examples of brands that are commonly used generically, and the company owning their trademarks must aggressively send threats (that they rarely follow up on) just out of legal necessity.
      - nommm-nommm 11y ago
        Spam very aggressively protects their trademark. So aggressively that it lost a trademark lawsuit against Spam Arrest. (They lost cause people don't get food and junk mail confused)
raquo 11y ago
> A lot of times, lawyers will send out letters without caring how the recipient responds -- they only need to have sent the letter at all to have covered their bases. That is not what happened here though.
- brazzledazzle 11y ago
  Any chance someone at Kik the company wanted to create an npm module and decided the escalation to lawyers was the right way to resolve things? Seems like the lawyer was more interested in getting possession of the name on npm then actually fighting for a trademark. It doesn't even sound like they bothered with a formal cease and desist.
  - vskarine 11y ago
    https://medium.com/@mproberts/a-discussion-about-the-breaking-of-the-internet-3d4d2a83aa4d#.t9rbguvoh https://medium.com/@mproberts/a-discussion-about-the-breakin...
    - brazzledazzle 11y ago
      Guess that answers that. Bob may have been going beyond what he should have or what they intended but in the end he represented Kik and they have to take responsibility for that.

tantalor 11y ago

They have the responsibility to defend their trademark, otherwise it could be abused by a rival claiming they did not adequately defend it. That said, NPM could have just said, "No, stop bothering us" and the lawyers might have backed down, satisfied their attempt to defend the trademark fulfilled their duty.

iancarroll 11y ago
You do not have to defend your trademark against people who are not infringing it. You can only infringe a trademark when you use the mark in the same context it's registered in. IANAL.
dublinben 11y ago
>They have the responsibility to defend their trademark This is not limited to only issuing cease and desists. Kik Interactive can offer a zero cost license for the trademark if they want to assert their ownership, but let the project continue to use their name.
- jessaustin 11y ago
  Some lawyers do not favor low-conflict resolutions, and would not recommend such to their clients.
bsder 11y ago
> They have the responsibility to defend their trademark, otherwise it could be abused by a rival claiming they did not adequately defend it. Agreed, but you can do this without pissing off everybody in the universe. http://www.businessinsider.com/jack-daniels-wrote-what-has-to-be-the-nicest-cease-and-desist-order-of-all-time-2012-7 http://www.businessinsider.com/jack-daniels-wrote-what-has-t... Before, I had no idea who kik was. Now, I know them as a bunch of jerks. Big fail for a "social media" company.
- antihero 11y ago
  Yeah but literally nobody is going to care about this outside the programmer community, and we're not their target audience.

jahewson 11y ago

Yep, I was going to say the same thing. As you say we can look up the US trademarks [1, 2] and see that this mark covers: Computer software for use with mobile phones and portable computing devices to: - download audio, video, digital photos and programs; - electronic payment systems, namely, a computer application software used for processing electronic payments to and from others; - computer software for use with mobile phones and portable computing devices to create video and digital photos to share with other users; computer software for use with mobile phones to launch other applications and connect to other software services. That's it. [1] http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4804:liro6q.4.1 http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4804:lir... [2] http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4804:liro6q.4.15 http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4804:lir...

deleted 11y ago
[deleted]
ShaneCurcuru 11y ago
USPTO Trademark Pro Tip: search links are session specific. Use the blue TSDR button's link instead: https://tsdr.uspto.gov/#caseNumber=86930821&caseType=SERIAL_NO&searchType=statusSearch https://tsdr.uspto.gov/#caseNumber=86930821&caseType=SERIAL_...

delinka 11y ago

"Providing an interactive website featuring online non-downloadable software" indicates to me that there could indeed be confusion in a repository of software code to be used by other applications. I'd suggest it's certainly not obvious over-enforcement.

jessaustin 11y ago
But TFA's "Kik" seems to be sort of a "project generator" like yeoman or something. There is no overlap between that and even the generously expanded description of the litigious "Kik" that you cite.
- delinka 11y ago
  So, in your opinion, if I built a software application that let you design and order plate glass in decorative form to be placed in the walls of your house and named this app "Windows" would Microsoft's inevitable attempts at protecting their trademark be overreaching? The windows I named my app for are physical things and Microsoft's are virtual, but I'm releasing a software product called "Windows." Both kik names exist in the realm of software. There's an argument to be made for confusion.
  - jessaustin 11y ago
    Yes, even this faintly ridiculous fake example of painstaking mental construction would be overreach. No one would ever download your hypothetical architectural software expecting to get an operating system. As a public service, some toilet or compost bin manufacturer ought to start "violating" trademarks by naming toilets etc. after litigious companies. We'd all get a kik out of hearing them argue that database consumers are likely to confuse the Oracle database with the Oracle water closet. [EDIT: "Sure it's a CRUD app, but I'm more interested in Deletion than Retrieval!"] Of course there are arguments to be made; lawyers are involved.
    - delinka 11y ago
      People with experience in software wouldn't likely confuse the two pieces of software. But most people think "computers" and stop there. Most people visiting an app store would see "Windows" for 99 cents, buy it, then complain when it wasn't Microsoft Windows. They wouldn't read descriptions, and they don't know what an operating system is. Confusion. Microsoft is very likely to prevail in the infringement lawsuit.

overgard 11y ago

The Apple thing doesn't work though, for a specific reason: it's a very common word/name. Smith is a very common surname. If one person starts the Smith Automobile Company and another person starts the Smith Farm, obviously there's no issue there. That's because none of us invented "Smith", it's understood to be a common name, etc. On the other hand, if I start "The Google Paper Company", I'm pretty damn sure I would quickly and easily lose that case, despite the fact that google does not sell paper. And nobody would think that is weird, because Google is very obvious an invention (Yeah, I know, "googol", but the spelling makes it unique). "Kik" is a lot closer to the "google" situation than the "apple" situation.

jhall1468 11y ago
That is not how trademarks work. Feel free to start the Google Paper Co. Uniqueness is not a merit for trademark infringement. To infringe you have to be a competitor.
- tempestn 11y ago
  That is incorrect. You are also infringing if people could reasonably assume an affiliation due to your use of the trademark, which would definitely be the case with Google Paper Co. You're basically piggy-backing on (and diluting) the brand recognition they've built.
  - jhall1468 11y ago
    You are correct in that my Google example would likely be trademark infringement because Google is a famous mark. Kik is not a famous mark, so for this case the famous/well-known aspect of trademark infringement is entirely moot. And keep in mind that the OP I was responding to was arguing that if the name is unique it gets extra protection. That's false. Fame offers extra protection, uniqueness does not.
    - tempestn 11y ago
      "According to Kik Interactive, as of December 2015, Kik Messenger had approximately 240 million registered users, and was used by approximately 40 percent of United States teenagers." https://en.wikipedia.org/wiki/Kik_Messenger https://en.wikipedia.org/wiki/Kik_Messenger Are you sure a court wouldn't consider that qualifying as a famous mark? I'm not going to dig into case law, but my guess is it very well could be. "Evidence relevant to the fame of a trademark may include sales, advertising and revenue figures; geographical scope of use; channels of trade; registrations in home and other countries; past enforcement efforts; and the results of consumer recognition surveys (provided the survey methods are approved by the courts in that jurisdiction)." http://www.inta.org/TrademarkBasics/FactSheets/Pages/FamousWellKnownMarksFactSheet.aspx http://www.inta.org/TrademarkBasics/FactSheets/Pages/FamousW...

vincent_s 11y ago

Most Germans wouldn't know that kik is also a chat app ;-) "KiK is the largest textile discounter chain in Germany and operates about 3,200 stores in Germany, Austria (since 1998), Slovenia and Czech Republic (since 2007), Hungary and Slovakia (since 2008), Croatia (since 2011) and Poland (since March 2012)." https://en.wikipedia.org/wiki/KiK https://en.wikipedia.org/wiki/KiK

krylon 11y ago
Being from Germany, I had initially assumed that was in fact the company in question. I was wondering why a textile discounter would care about some NPM module...
- thatguy_2016 11y ago
  Haha. There is a British company selling eCigs called Kik.co.uk too. Seems Kik is a fairly common term, even for companies.
therealmarv 11y ago
This shows the claims from kik messenger are not valid, at least in Germany.