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Ask HN: Cease & Desist on using the word egress. Sign it away for eternity?
I'm a small time founder of a TLS firewall. It is published on AWS and GCP marketplaces as 'secure egress gateway' and allows outbound/egress VPC traffic to be filtered by TLS versions and hostnames (which are set through the parameter store in AWS for example.) It's DPI and not a proxy.
Last month, received a C&D from lawyers of a co that holds trademark over the e word. So far, I have agreed to remove all use of the word except in a descriptive context and the time has come to sign an agreement with the other co.
The proposed agreement is perpetual. My lawyers strongly suspect the other co would refuse to agree to include a term that the agreement terminates after a set period of time, or if they were to lose all of their registered trademark rights in that word. Lawyers are funded by an insurance policy I had luckily taken out and bill every 6 minutes of their time.
Should I push back on the perpetuity of this agreement? Should I get a second opinion?
- thaumasiotes 6y agoWhat are you getting out of this agreement? They already can't stop you from using a word descriptively. They can sue you and lose, but they can also do that after you sign the agreement, on exactly the same theory they'd use anyway ("this use isn't descriptive"). Also: The product name "secure egress gateway" is obviously a descriptive use of the word (it's a gateway for egress traffic), and therefore cannot violate a trademark. Are they asking you to avoid non-descriptive use of the word ("for your email security needs, contact Egress Software Technologies!"), or are they asking you to avoid using the word in product names regardless of whether the use is descriptive?
- new23d 6y agoIt's about the use of that word in the name of a product.
- stargrazer 6y agoCan you state who this company is? Isn't "secure egress gateway" descriptive as well?
- thaumasiotes 6y agoI assume OP is running https://chasersystems.com/ https://chasersystems.com/ , and he's being threatened by https://www.egress.com/ https://www.egress.com/ . But yes, obviously "secure egress gateway" is descriptive and can't violate a US trademark. Both companies are located in the UK; who knows what their trademark law says. Maybe there's a bakery over there with exclusive rights to the word "biscuit". But I doubt it.
- new23d 6y agoWe could argue whether the use is descriptive when the word is used in the name of a product, but it's the unwillingness on my part to test this in the courts.
- EVurja 6y agoEgress is such a generic word in technology. Wonder if anyone can even trademark a generic word.
- deleted 6y ago[deleted]
- thaumasiotes 6y agohttp://tsdr.uspto.gov/#caseNumber=87289033&caseType=SERIAL_NO http://tsdr.uspto.gov/#caseNumber=87289033&caseType=SERIAL_N... > Mark Literal Elements: EGRESS > The mark consists of standard characters without claim to any particular font style, size, or color. > For: Computer software and mobile device software for application and database integration; computer software and mobile device software for use in data security, namely, email and data classification, email and data encryption, secure file transfer, secure automated file transfer, secure online collaboration, secure access to encrypted email and data, secure email and data management, and secure email and data backup, archive and recovery (I guess you'll have to redo the search for case number 87289033 yourself. I'm so glad the government keeps up to date with modern single-page-web-app design principles for what is literally just a document store. >_> )
- luckman212 6y agoGuess you never heard about Facebook trying to trademark simple words... "book"..."like"..."face"... https://www.theatlantic.com/technology/archive/2010/08/can-facebook-trademark-the-word-face/344369/ https://www.theatlantic.com/technology/archive/2010/08/can-f...
- tothrowaway 6y agoIf you don't mind sharing, what kind of insurance policy did you obtain? It's surprising to hear an insurance product would cover your legal fees for something like this.
- new23d 6y agoIt's a professional indemnity insurance for business in the UK. Covers defence costs as long as they can arrange the defence and everything is done with their prior approval, and the area of intellectual property infringement is in scope.
- DrScump 6y agoIs it too late to sue P.T. Barnum? http://www.ptbarnum.org/egress.html http://www.ptbarnum.org/egress.html
- rckoepke 6y agoI wonder, when www.egress.com picked the name Egress, did they have a discussion where they decided it would be a normal part of their business plan to sue unrelated companies ad infinitum, for the life of their business?