6 ms·

IANAL, only an entrepreneur, but this should surprise no one even passingly familiar with trademark law. Failure to enforce your trademark's registration can e

by jfarmer 13y ago

IANAL, only an entrepreneur, but this should surprise no one even passingly familiar with trademark law. Failure to enforce your trademark's registration can expose you to claims that your mark is no longer "in use." Sure, this guy might be 100% innocent, but it won't matter when someone less innocent comes along and uses the fact Tumblr didn't enforce their trademark against this other guy to be annoying. It's easier to just shoot an email to your attorneys and have send a C&D than it is to enter into a more protracted, ad hoc conversation. It costs virtually nothing to do this. Some associate at the firm types it up using one of a bajillion templates, sends it out with a partner's name attached, and bills the client for <30 minutes worth of time. You, too, can hire an attorney and pay them a few hundred dollars to reply! Or you can try replying yourself. C&Ds are not legally binding, of course, and the recipient can choose to comply, respond, or ignore as they see fit. Because of how trademark law works I wouldn't recommend "ignoring" since the complaining party is pretty much obligated to escalate matters. For example, a friend of mine created a parody website of a world-famous newspaper and predictably received a C&D. This was more than just the trademark: it repurposed content, used the same typefaces, mimicked the same layout, etc. They agreed to let him use it after he replied and agreed to include a prominent disclaimer up top stating that "<Newspaper> trademarks used with permission of <Newspaper Corporation>" and explaining that this was a parody. I don't know if the OP tried to do this, but I will say turning to the "court of public opinion" as a first course of action makes this outcome somewhere between incredibly unlikely to impossible. Tumblr isn't trying to be evil -- you're using their name, after all -- they're just trying to take care of it in the most time-efficient manner possible. The #1 most time-efficient manner is sending a C&D. For folks whose infringements are minor and inconsequential, it's likely that the #2 most time-efficient manner is to let them use the name in the domain with a prominent disclaimer and an explicit, albeit revokable, license.

lisper 13y ago
> Failure to enforce your trademark's registration can expose you to claims that your mark is no longer "in use." That's true, but C&Ds are not the only way to enforce a trademark. Tumblr could have granted him a license to use the trademark in exchange for a dollar a year. But they chose to be dicks instead.
- jfarmer 13y ago
  Or maybe the recipient just freaked out because he didn't know how to dance to this tune and C&Ds seem like mighty and terrible things to someone who has never received one before? Sending a C&D is fast, cheap, and requires almost no thought on Tumblr's part. Tumblr is optimizing for how they focus their time and attention, not how they treat folks using their name without permission. Why spend a few thousand dollars of attorney-hours going back and forth with every person who puts "tumblr" in their domain name when you can spend a small fraction of that and just reflexively send a C&D? Next up, freetumblrthemes.com, tumblrscripts.com, tumblrbots.com, themes4tumblr.com, officialtumblrthemes.com, etc. Tumblr isn't being a dick. They're being prudent. This isn't an area of their business that is important enough to optimize relative to all the other things they might be working on, so you come up with reasonable defaults, delegate to your attorneys, and stop thinking about it. But, hey, if you get a C&D you now at least know you have Tumblr's attention! Why not be contrite and reply asking for exactly what you propose? There's no downside. Indeed, you now know you're going to receive a prompt and unambiguous answer, whereas if you had asked for permission up front you most likely would've been ignored. There is, however, plenty of downside to complaining that you received a C&D in public, particularly as a first rather than last resort.
  - sudomal 13y ago
    Legal letters breed resentment. I was once threatened by a big business and promised myself never to use their services in the future. If only they had sent an informal email pointing out the error and suggesting a fix, but nope, it was a threatening legal letter through some third party with a short time limit for response. Just makes me angry thinking about it and this is now several years down the line.
    - jfarmer 13y ago
      You could be right. If you are, Tumblr will be the worse for it and you can feel vindicated. On the other hand, maybe that's a risk Tumblr is willing to take. Who's to say the cost in attorney dollars and company focus of having dozens or hundreds of one-off conversations or more every month isn't greater than the cost of all this supposed resentment? Who's to say that the opportunity cost of addressing that resentment is too high to justify spending time on it? If you were Tumblr's CEO and believed either of these were true, would you still spend time fiddling with your trademark C&D process? To be honest, I suspect Tumblr builds up more user "resentment" every time they change the placement of a button on their site than they have from all the C&Ds they've ever sent out. I've received aggressive, company-and-livelihood threatening C&Ds from companies like Groupon, Facebook, and others of similar heft. Sometimes I complied, sometimes I didn't, and sometimes we reached an agreement. There's no reason to take it personally. Lord knows the other side isn't!
philipcristiano 13y ago
Can you explain the reason for this though? It seems like the site is talking about the actual website Tumblr, I'm not confused about the brand in question. I'm not well informed from a trademark stance but it seems like as a consumer (and this response page) this site is not confusing the trademark at all. Was it previously using logos/wording saying that it was Tumblr?
- jfarmer 13y ago
  Although confusion can figure into a trademark action, it isn't the only thing that can. The rule of thumb is that if someone is using your name you should at least attempt to enforce it, lest someone later try to use that lack of enforcement as evidence your mark is no longer "in use." You can read this as "jfarmer's rule of thumb" if you'd like
  - deleted 13y ago
    [deleted]
lifeformed 13y ago
Are they just supposed to send one to every website that says the word "Tumblr" in it?
- jfarmer 13y ago
  It depends on what you mean by "says the word 'Tumblr' in it." I'd give my attorneys carte blanche to send a C&D to the owner of any service using "tumblr" in their domain name, if that's what you mean. I'd ask them to create a template for me to ok and never think about it again, unless it seemed like they were spending too much money on it or other evidence that they were being overzealous came to my attention.
  - Dylan16807 13y ago
    You are a bully. Do you realize that? Even though a C&D has no direct legal power, it abuses your position of having a nice fat legal fund, and will most certainly lead to stronger charges in any actual legal action.
    - jfarmer 13y ago
      Well, ok.
DannyBee 13y ago
"IANAL, only an entrepreneur, but this should surprise no one even passingly familiar with trademark law. Failure to enforce your trademark's registration can expose you to claims that your mark is no longer "in use." " I'm an IP lawyer (though this is not legal advice, of course). This is absolutely not true in cases of what is known as "nominative use" like exists here. Here, he is referring to the Tumblr product properly, and referencing their trademark'd product properly. He is not using their trademark to refer to another product, or confusing users about the trademark. This is pretty much absolutely protected, and there is no real excuse for a C&D.
- jfarmer 13y ago
  Fair enough! I'd probably still do it, mostly as a CYA matter. There's little downside and it takes too much time / attention to discern between the cases. If my attorney told me it was a waste of time I probably wouldn't. Maybe I'm just a jerk. :P This makes the OP's response all the more unproductive, though. Find an IP lawyer and pay him for an hour or two of his time to draft this response. It's also unclear what Tumblr's precise complaint was. I'm just assuming it was the domain and only the domain.
  - DannyBee 13y ago
    " There's little downside and it takes too much time / attention to discern between the cases." Thank you for so aptly explaining why making fair use an affirmative defense was/is not enough. Nobody should have to pay an IP attorney 450 an hour (plus whatever retainer they will surely force you to pay to engage) because some large company has decided to be a dick. Trademarks were created to enable consumers to identify the source of goods. Dilution came later, which the supreme court struck down (requiring actual dilution), and then congress readded in a weaker form (likely dilution). Dilution was and always has been just a way for companies to snipe at each other and screw little guys through C&D. It has never helped consumers.
    - jfarmer 13y ago
      Eh, that's pretty pricey! Happy to recommend a good IP attorney who will charge less than that if anyone is looking, without requiring a retainer. :P As an entrepreneur, I don't want to spend that $450 either, but I especially don't want to have to spend more later. I'm going to send a C&D and stop thinking about it. There's very little downside to sending one but a potentially big downside for not sending one. I'd do this if I were big, medium, or small. If that makes me a dick, well, I'll cop to it, I guess! Actually, I'll say personally that I'd first ask them politely via email and follow up with a C&D if they refused, but in a world where there were dozens of such things happening at any given moment, I'd no longer think it worth my time to ask each and everyone personally and just ask my attorneys to handle it. My point was that Tumblr's behavior was not outrageous, IMO. Alas, I'm obviously in the minority on this.
zachinglis 13y ago
Perhaps I feel that Tumblr is meant to be a free place. And after all you can go to <anywebsite>.tumblr.com and to some people who don't know better - that's an official website by Tumblr. You raise some great points and if they feel the need to protect their brand then I understand. But it was a website to HELP their users.
- jfarmer 13y ago
  I appreciate that you're the OP and have the most sensible, measured reply to my comment, which was meant for other commenters on HN and not you. :D Although I agree with you that the site helped their users overall, it's hard to say how Tumblr thinks of it. For example, they might not like that the domain has "Tumblr" in it but lacks the perceived aesthetic flair of Tumblr. That juxtaposition might cross some (non-legal) threshold for them. I'm just speculating, obviously. My point is more that inside a company of any size, but especially one that's large enough, there are a whole set of concerns being balanced. If it's too hard to balance they're likely to choose the path of least resistance. Who knows? I've done some work with software that integrated with Tumblr and my sense is that as an organization Tumblr really values control over all else. Other companies have different personalities. Facebook is cold, calculating, and absolutely rational. They'll promote the shit out of you if it's advantageous and leave you hanging the second it's not. Google is passive-aggressive. Twitter is afraid of being intermediated. But, yeah, if I were to describe the quality of Tumblr's personality it would be Mini-Me to Apple's Dr. Evil. What would Apple do if someone had a website called "isappledown.com?" That's what Tumblr would do. You've gotta know the temperament of the animal you've decided you want to ride.
  - zachinglis 13y ago
    This is true. But anyone can get a site at foo.tumblr.com and post anything. So there brand can be attached to absolutely anything.

by jfarmer 13y ago

lisper 13y ago

> Failure to enforce your trademark's registration can expose you to claims that your mark is no longer "in use." That's true, but C&Ds are not the only way to enforce a trademark. Tumblr could have granted him a license to use the trademark in exchange for a dollar a year. But they chose to be dicks instead.

jfarmer 13y ago
Or maybe the recipient just freaked out because he didn't know how to dance to this tune and C&Ds seem like mighty and terrible things to someone who has never received one before? Sending a C&D is fast, cheap, and requires almost no thought on Tumblr's part. Tumblr is optimizing for how they focus their time and attention, not how they treat folks using their name without permission. Why spend a few thousand dollars of attorney-hours going back and forth with every person who puts "tumblr" in their domain name when you can spend a small fraction of that and just reflexively send a C&D? Next up, freetumblrthemes.com, tumblrscripts.com, tumblrbots.com, themes4tumblr.com, officialtumblrthemes.com, etc. Tumblr isn't being a dick. They're being prudent. This isn't an area of their business that is important enough to optimize relative to all the other things they might be working on, so you come up with reasonable defaults, delegate to your attorneys, and stop thinking about it. But, hey, if you get a C&D you now at least know you have Tumblr's attention! Why not be contrite and reply asking for exactly what you propose? There's no downside. Indeed, you now know you're going to receive a prompt and unambiguous answer, whereas if you had asked for permission up front you most likely would've been ignored. There is, however, plenty of downside to complaining that you received a C&D in public, particularly as a first rather than last resort.
- sudomal 13y ago
  Legal letters breed resentment. I was once threatened by a big business and promised myself never to use their services in the future. If only they had sent an informal email pointing out the error and suggesting a fix, but nope, it was a threatening legal letter through some third party with a short time limit for response. Just makes me angry thinking about it and this is now several years down the line.
  - jfarmer 13y ago
    You could be right. If you are, Tumblr will be the worse for it and you can feel vindicated. On the other hand, maybe that's a risk Tumblr is willing to take. Who's to say the cost in attorney dollars and company focus of having dozens or hundreds of one-off conversations or more every month isn't greater than the cost of all this supposed resentment? Who's to say that the opportunity cost of addressing that resentment is too high to justify spending time on it? If you were Tumblr's CEO and believed either of these were true, would you still spend time fiddling with your trademark C&D process? To be honest, I suspect Tumblr builds up more user "resentment" every time they change the placement of a button on their site than they have from all the C&Ds they've ever sent out. I've received aggressive, company-and-livelihood threatening C&Ds from companies like Groupon, Facebook, and others of similar heft. Sometimes I complied, sometimes I didn't, and sometimes we reached an agreement. There's no reason to take it personally. Lord knows the other side isn't!

philipcristiano 13y ago

Can you explain the reason for this though? It seems like the site is talking about the actual website Tumblr, I'm not confused about the brand in question. I'm not well informed from a trademark stance but it seems like as a consumer (and this response page) this site is not confusing the trademark at all. Was it previously using logos/wording saying that it was Tumblr?

jfarmer 13y ago
Although confusion can figure into a trademark action, it isn't the only thing that can. The rule of thumb is that if someone is using your name you should at least attempt to enforce it, lest someone later try to use that lack of enforcement as evidence your mark is no longer "in use." You can read this as "jfarmer's rule of thumb" if you'd like
- deleted 13y ago
  [deleted]

lifeformed 13y ago

Are they just supposed to send one to every website that says the word "Tumblr" in it?

jfarmer 13y ago
It depends on what you mean by "says the word 'Tumblr' in it." I'd give my attorneys carte blanche to send a C&D to the owner of any service using "tumblr" in their domain name, if that's what you mean. I'd ask them to create a template for me to ok and never think about it again, unless it seemed like they were spending too much money on it or other evidence that they were being overzealous came to my attention.
- Dylan16807 13y ago
  You are a bully. Do you realize that? Even though a C&D has no direct legal power, it abuses your position of having a nice fat legal fund, and will most certainly lead to stronger charges in any actual legal action.
  - jfarmer 13y ago
    Well, ok.

DannyBee 13y ago

"IANAL, only an entrepreneur, but this should surprise no one even passingly familiar with trademark law. Failure to enforce your trademark's registration can expose you to claims that your mark is no longer "in use." " I'm an IP lawyer (though this is not legal advice, of course). This is absolutely not true in cases of what is known as "nominative use" like exists here. Here, he is referring to the Tumblr product properly, and referencing their trademark'd product properly. He is not using their trademark to refer to another product, or confusing users about the trademark. This is pretty much absolutely protected, and there is no real excuse for a C&D.

jfarmer 13y ago
Fair enough! I'd probably still do it, mostly as a CYA matter. There's little downside and it takes too much time / attention to discern between the cases. If my attorney told me it was a waste of time I probably wouldn't. Maybe I'm just a jerk. :P This makes the OP's response all the more unproductive, though. Find an IP lawyer and pay him for an hour or two of his time to draft this response. It's also unclear what Tumblr's precise complaint was. I'm just assuming it was the domain and only the domain.
- DannyBee 13y ago
  " There's little downside and it takes too much time / attention to discern between the cases." Thank you for so aptly explaining why making fair use an affirmative defense was/is not enough. Nobody should have to pay an IP attorney 450 an hour (plus whatever retainer they will surely force you to pay to engage) because some large company has decided to be a dick. Trademarks were created to enable consumers to identify the source of goods. Dilution came later, which the supreme court struck down (requiring actual dilution), and then congress readded in a weaker form (likely dilution). Dilution was and always has been just a way for companies to snipe at each other and screw little guys through C&D. It has never helped consumers.
  - jfarmer 13y ago
    Eh, that's pretty pricey! Happy to recommend a good IP attorney who will charge less than that if anyone is looking, without requiring a retainer. :P As an entrepreneur, I don't want to spend that $450 either, but I especially don't want to have to spend more later. I'm going to send a C&D and stop thinking about it. There's very little downside to sending one but a potentially big downside for not sending one. I'd do this if I were big, medium, or small. If that makes me a dick, well, I'll cop to it, I guess! Actually, I'll say personally that I'd first ask them politely via email and follow up with a C&D if they refused, but in a world where there were dozens of such things happening at any given moment, I'd no longer think it worth my time to ask each and everyone personally and just ask my attorneys to handle it. My point was that Tumblr's behavior was not outrageous, IMO. Alas, I'm obviously in the minority on this.

zachinglis 13y ago

Perhaps I feel that Tumblr is meant to be a free place. And after all you can go to <anywebsite>.tumblr.com and to some people who don't know better - that's an official website by Tumblr. You raise some great points and if they feel the need to protect their brand then I understand. But it was a website to HELP their users.

jfarmer 13y ago
I appreciate that you're the OP and have the most sensible, measured reply to my comment, which was meant for other commenters on HN and not you. :D Although I agree with you that the site helped their users overall, it's hard to say how Tumblr thinks of it. For example, they might not like that the domain has "Tumblr" in it but lacks the perceived aesthetic flair of Tumblr. That juxtaposition might cross some (non-legal) threshold for them. I'm just speculating, obviously. My point is more that inside a company of any size, but especially one that's large enough, there are a whole set of concerns being balanced. If it's too hard to balance they're likely to choose the path of least resistance. Who knows? I've done some work with software that integrated with Tumblr and my sense is that as an organization Tumblr really values control over all else. Other companies have different personalities. Facebook is cold, calculating, and absolutely rational. They'll promote the shit out of you if it's advantageous and leave you hanging the second it's not. Google is passive-aggressive. Twitter is afraid of being intermediated. But, yeah, if I were to describe the quality of Tumblr's personality it would be Mini-Me to Apple's Dr. Evil. What would Apple do if someone had a website called "isappledown.com?" That's what Tumblr would do. You've gotta know the temperament of the animal you've decided you want to ride.
- zachinglis 13y ago
  This is true. But anyone can get a site at foo.tumblr.com and post anything. So there brand can be attached to absolutely anything.