5 ms·

I don't get it either. If GNOME (the desktop environment and the foundation) have a trademark on GNOME, why do they need $80k to defend it? Shouldn't the tradem

by skratlo 12y ago

I don't get it either. If GNOME (the desktop environment and the foundation) have a trademark on GNOME, why do they need $80k to defend it? Shouldn't the trademark office then simply reject any further application for GNOME name related to computers, software and operating systems? Is this because of the idiotic defunc. justice system the US is imposing on themselves? Where you can sue mall owner for millions because you slipped on his floor? sigh

Cthulhu_ 12y ago
IIRC, the rule is that if you don't step up yourself to defend your trademark whenever someone else tries to use it, your trademark becomes void.
- skratlo 12y ago
  Could you kindly explain me then what's the point of registering a trademark? Is it something you can then wave with in front of jury? Do you really need $80k for that? Do you need $80k to print out your accepted trademark application, and prove that you're in the business for 17 years? Sorry this is just complete non-sense and failure of the system.
  - voidz 12y ago
    Well what they say is "if it costs less we will put the rest into our product"...
  - jabbernotty 12y ago
    Yes, it is a disappointment. And yet, it is the reality. As a result, the GNOME team does still need to pay their lawyers.
    - crorella 12y ago
      This is really disappointing and could be use to harass a company, what stops a malicious group of people do a "copyright ddos" by just forcing a company to pay 80k each time they need to defend it's trademarks?
      - maaaats 12y ago
        That's how patent trolls operate. Cheaper for companies to pay their fee than to fight the battle.
  - icebraining 12y ago
    Could you kindly explain me then what's the point of registering a trademark? Mostly so that you can get (triple) damages and lawyer fees from the infringer in case you win the lawsuit.
  - deleted 12y ago
    [deleted]
  - bad_user 12y ago
    Not only that, but those $80k could have paid for quite a few months of development, but instead those will be money going down the drain because of a broken justice system. And they have the nerve to say that IP laws are fueling innovation.
    - ekianjo 12y ago
      Trademark has barely anything to do with IP laws. You are referring to patents, and trademark legislation has nothing to do with patents.
      - gavinballard 12y ago
        Trademarks are a form of intellectual property.
        misterbishop 12y ago
        'Intellectual Property' is not a legal classification, and shouldn't be. Patents, Trademarks, Copyrights, and looser-defined 'trade secrets' all have distinct purposes. Saying "Intellectual Property" when you mean "Trademark" gives the impression that the holder has all kinds of legal protections which don't actually apply. Over the long term, there's danger that legal theories will change to further expand the rights of corporate publishers.
        dragonwriter 12y ago
        > 'Intellectual Property' is not a legal classification, and shouldn't be. Intellectual Property isn't a classification defined in law, but it is an analytic classification used in law, the same way that various other subcategories of "property" are, to discuss related protections. ∀X : X ∈ { Copyright, Trademark, Patent, ... }, X ⊂ Intellectual Property ⊂ Intangible Personal Property ⊂ Personal Property ⊂ Property.
        dalke 12y ago
  - akmiller 12y ago
    The system is a mess. I have a small side project and I trademarked the name, yet a competitor of mine used my trademark to promote their site and after speaking with several people about my situation they made it clear that unless I was willing to put up about six figures to fight it there isn't much I could do.
    - parfe 12y ago
      None of those people you spoke to sound like lawyers. It won't cost six figures to have a lawyer send a letter. Your competitor might not like the six figures prospect of defending themselves.
      - akmiller 12y ago
        Actually they were business people who have been through this battle before spending in the six figures to defend their marks (along with my brother who is a patent attorney). But yes, you are correct that sending a letter is the first step but if that step is ignored then the next step will cost money...and too much money for a single developers side project!
  - weavie 12y ago
    Surely though, if Gnome win the case then Groupon would become liable to pay the costs?
    - matt_morgan 12y ago
      Not necessarily. There are a lot of circumstances in which the case could end in Gnome's favor, without that judgment.
      - weavie 12y ago
        Do you have an example of such a circumstance?
        matt_morgan 12y ago
        I'm not going to Google it for you. But they could settle the case, e.g. Groupon could agree not to use the name after it becomes clear that Gnome has spent enough to assemble a legal defense. And Gnome decides that the cost of pursuing further action makes it too risky.
        deleted 12y ago
        [deleted]
  - dragonwriter 12y ago
    > Could you kindly explain me then what's the point of registering a trademark? --- * Public notice of your claim of ownership of the mark; * A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration; * The ability to bring an action concerning the mark in federal court; * The use of the U.S. registration as a basis to obtain registration in foreign countries; * The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods; * The right to use the federal registration symbol ®; and Listing in the United States Patent and Trademark Office’s online databases. --- from http://www.uspto.gov/faq/trademarks.jsp#_Toc275426681 http://www.uspto.gov/faq/trademarks.jsp#_Toc275426681
  - vec 12y ago
    No, you need that 80k to argue that Groupon's proposed product would infringe your trademark. US trademarks are only good for the line of business I'm in. If I were to publish a software product called Mustang, for example, Ford wouldn't be able to sue me for copyright infringement. My product shares a trademark with one of theirs, but it's in a different enough market that the two trademarks don't conflict with each other. It sounds like Groupon's proposed product is point of sale hardware. That's different enough from a desktop window manager that Groupon can quite possibly get a lawyer to convince a jury that they're different businesses. Therefore GNOME Foundation has to pay a lawyer to stand up and argue the other side of the case.
- philipn 12y ago
  That's if someone is using it, not someone trying to register it. I always imagined that the US Patent and Trademark Office had a period where people could file complaints about pending trademarks, which is a different process.
- listic 12y ago
  What is the rationale behind that?
  - grabeh 12y ago
    The rule is not a strict requirement although broadly speaking a trade mark owner is required to enforce their trade marks in relation to third party use which is likely to confuse the public. The rationale is that trade marks are designed to be a badge of origin & to guarantee to consumers that the goods are from a particular entity. If I do not show due regard for maintaining that distinction by taking action against third parties making confusing use of an identical/similar mark then I should not have the right to continue making use of the mark, or at the very least could be said to have consented to the third party use and cannot subsequently stop them.
- pbhjpbhj 12y ago
  This is widely believed and wrong. Your registered trademark fails when you stop paying your renewal fees. The only other way is for it to become genericised, which is about public use and not about others using it for doing business [1]. Previous commercial use however is an absolute defence in trademark law, making it also impossible to steal a trademark (another oft repeated falsehood): just to anticipate the idea that "Groupon will get an RTM and sue GNOME". [1] - http://digitalcommons.law.scu.edu/cgi/viewcontent.cgi?article=1072&context=historical http://digitalcommons.law.scu.edu/cgi/viewcontent.cgi?articl... - Elliott v Google, trademark genericisation.
FooBarWidget 12y ago
It's because lawyers are that expensive.
- lucb1e 12y ago
  Let's assume they cost $500 an hour, which is probably enough to pay three of them but I have no idea about the price so let's assume it's that. Then $80k / 500 = 160 hours. Does it take 160 hours, or 4 work weeks full-time, to write a letter or fill out some form saying that "hey, we registered this back in 2006, you should reject these applications"?
  - deleted 12y ago
    [deleted]
  - iancarroll 12y ago
    Plus $300 per trademark opposed: http://www.uspto.gov/web/offices/ac/qs/ope/fee010114.htm#tm http://www.uspto.gov/web/offices/ac/qs/ope/fee010114.htm#tm
  - valarauca1 12y ago
    You are assuming that is all that it would just take sending a letter. Likely they want to put a single lawyer on retainer for the duration of the copyright battle to ensure that a longer legal battle does not draw from other sources in the gnome project.
  - nodata 12y ago
    I'm not sure what you are suggesting here..
    - lucb1e 12y ago
      That I have no idea what in this whole process takes so much money. If trademarks take this much money to defend, you might as well just sue anyone trying to use your name without filing a trademark.
      - 12y ago
rayiner 12y ago
The issue is, of course, "how related is related?" The USPTO will do a trademark search to see if an application conflicts with an existing mark. The $80k the foundation is spending isn't for that, it's to convince the USPTO that "GNOME" for a point-of-sale system is unacceptably close to "GNOME" for a desktop shell.
samspot 12y ago
I believe the idea is that if I register "Bruiser's Cars", that name doesn't automatically become unavailable to others for hundreds of years. I need to prove that I am still using the trademark somehow. Unfortunately that results in me needing a lawyer, which really sucks for a small business. Note that the patent system (in theory) works the way you describe, but it hasn't eliminated the need for lawyers. Finally, in the mall example, what usually happens is the judge finds that the mall saved millions by never cleaning their floors, so the company is punished by losing all the money they made. It is extremely rare for someone to get millions over something small.

by skratlo 12y ago

Cthulhu_ 12y ago

IIRC, the rule is that if you don't step up yourself to defend your trademark whenever someone else tries to use it, your trademark becomes void.

skratlo 12y ago
Could you kindly explain me then what's the point of registering a trademark? Is it something you can then wave with in front of jury? Do you really need $80k for that? Do you need $80k to print out your accepted trademark application, and prove that you're in the business for 17 years? Sorry this is just complete non-sense and failure of the system.
- voidz 12y ago
  Well what they say is "if it costs less we will put the rest into our product"...
- jabbernotty 12y ago
  Yes, it is a disappointment. And yet, it is the reality. As a result, the GNOME team does still need to pay their lawyers.
  - crorella 12y ago
    This is really disappointing and could be use to harass a company, what stops a malicious group of people do a "copyright ddos" by just forcing a company to pay 80k each time they need to defend it's trademarks?
    - maaaats 12y ago
      That's how patent trolls operate. Cheaper for companies to pay their fee than to fight the battle.
- icebraining 12y ago
  Could you kindly explain me then what's the point of registering a trademark? Mostly so that you can get (triple) damages and lawyer fees from the infringer in case you win the lawsuit.
- deleted 12y ago
  [deleted]
- bad_user 12y ago
  Not only that, but those $80k could have paid for quite a few months of development, but instead those will be money going down the drain because of a broken justice system. And they have the nerve to say that IP laws are fueling innovation.
  - ekianjo 12y ago
    Trademark has barely anything to do with IP laws. You are referring to patents, and trademark legislation has nothing to do with patents.
    - gavinballard 12y ago
      Trademarks are a form of intellectual property.
      - misterbishop 12y ago
        'Intellectual Property' is not a legal classification, and shouldn't be. Patents, Trademarks, Copyrights, and looser-defined 'trade secrets' all have distinct purposes. Saying "Intellectual Property" when you mean "Trademark" gives the impression that the holder has all kinds of legal protections which don't actually apply. Over the long term, there's danger that legal theories will change to further expand the rights of corporate publishers.
        dragonwriter 12y ago
        > 'Intellectual Property' is not a legal classification, and shouldn't be. Intellectual Property isn't a classification defined in law, but it is an analytic classification used in law, the same way that various other subcategories of "property" are, to discuss related protections. ∀X : X ∈ { Copyright, Trademark, Patent, ... }, X ⊂ Intellectual Property ⊂ Intangible Personal Property ⊂ Personal Property ⊂ Property.
        dalke 12y ago
- akmiller 12y ago
  The system is a mess. I have a small side project and I trademarked the name, yet a competitor of mine used my trademark to promote their site and after speaking with several people about my situation they made it clear that unless I was willing to put up about six figures to fight it there isn't much I could do.
  - parfe 12y ago
    None of those people you spoke to sound like lawyers. It won't cost six figures to have a lawyer send a letter. Your competitor might not like the six figures prospect of defending themselves.
    - akmiller 12y ago
      Actually they were business people who have been through this battle before spending in the six figures to defend their marks (along with my brother who is a patent attorney). But yes, you are correct that sending a letter is the first step but if that step is ignored then the next step will cost money...and too much money for a single developers side project!
- weavie 12y ago
  Surely though, if Gnome win the case then Groupon would become liable to pay the costs?
  - matt_morgan 12y ago
    Not necessarily. There are a lot of circumstances in which the case could end in Gnome's favor, without that judgment.
    - weavie 12y ago
      Do you have an example of such a circumstance?
      - matt_morgan 12y ago
        I'm not going to Google it for you. But they could settle the case, e.g. Groupon could agree not to use the name after it becomes clear that Gnome has spent enough to assemble a legal defense. And Gnome decides that the cost of pursuing further action makes it too risky.
      - deleted 12y ago
        [deleted]
- dragonwriter 12y ago
  > Could you kindly explain me then what's the point of registering a trademark? --- * Public notice of your claim of ownership of the mark; * A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration; * The ability to bring an action concerning the mark in federal court; * The use of the U.S. registration as a basis to obtain registration in foreign countries; * The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods; * The right to use the federal registration symbol ®; and Listing in the United States Patent and Trademark Office’s online databases. --- from http://www.uspto.gov/faq/trademarks.jsp#_Toc275426681 http://www.uspto.gov/faq/trademarks.jsp#_Toc275426681
- vec 12y ago
  No, you need that 80k to argue that Groupon's proposed product would infringe your trademark. US trademarks are only good for the line of business I'm in. If I were to publish a software product called Mustang, for example, Ford wouldn't be able to sue me for copyright infringement. My product shares a trademark with one of theirs, but it's in a different enough market that the two trademarks don't conflict with each other. It sounds like Groupon's proposed product is point of sale hardware. That's different enough from a desktop window manager that Groupon can quite possibly get a lawyer to convince a jury that they're different businesses. Therefore GNOME Foundation has to pay a lawyer to stand up and argue the other side of the case.
philipn 12y ago
That's if someone is using it, not someone trying to register it. I always imagined that the US Patent and Trademark Office had a period where people could file complaints about pending trademarks, which is a different process.
listic 12y ago
What is the rationale behind that?
- grabeh 12y ago
  The rule is not a strict requirement although broadly speaking a trade mark owner is required to enforce their trade marks in relation to third party use which is likely to confuse the public. The rationale is that trade marks are designed to be a badge of origin & to guarantee to consumers that the goods are from a particular entity. If I do not show due regard for maintaining that distinction by taking action against third parties making confusing use of an identical/similar mark then I should not have the right to continue making use of the mark, or at the very least could be said to have consented to the third party use and cannot subsequently stop them.
pbhjpbhj 12y ago
This is widely believed and wrong. Your registered trademark fails when you stop paying your renewal fees. The only other way is for it to become genericised, which is about public use and not about others using it for doing business [1]. Previous commercial use however is an absolute defence in trademark law, making it also impossible to steal a trademark (another oft repeated falsehood): just to anticipate the idea that "Groupon will get an RTM and sue GNOME". [1] - http://digitalcommons.law.scu.edu/cgi/viewcontent.cgi?article=1072&context=historical http://digitalcommons.law.scu.edu/cgi/viewcontent.cgi?articl... - Elliott v Google, trademark genericisation.

FooBarWidget 12y ago

It's because lawyers are that expensive.

lucb1e 12y ago
Let's assume they cost $500 an hour, which is probably enough to pay three of them but I have no idea about the price so let's assume it's that. Then $80k / 500 = 160 hours. Does it take 160 hours, or 4 work weeks full-time, to write a letter or fill out some form saying that "hey, we registered this back in 2006, you should reject these applications"?
- deleted 12y ago
  [deleted]
- iancarroll 12y ago
  Plus $300 per trademark opposed: http://www.uspto.gov/web/offices/ac/qs/ope/fee010114.htm#tm http://www.uspto.gov/web/offices/ac/qs/ope/fee010114.htm#tm
- valarauca1 12y ago
  You are assuming that is all that it would just take sending a letter. Likely they want to put a single lawyer on retainer for the duration of the copyright battle to ensure that a longer legal battle does not draw from other sources in the gnome project.
- nodata 12y ago
  I'm not sure what you are suggesting here..
  - lucb1e 12y ago
    That I have no idea what in this whole process takes so much money. If trademarks take this much money to defend, you might as well just sue anyone trying to use your name without filing a trademark.
    - 12y ago

rayiner 12y ago

The issue is, of course, "how related is related?" The USPTO will do a trademark search to see if an application conflicts with an existing mark. The $80k the foundation is spending isn't for that, it's to convince the USPTO that "GNOME" for a point-of-sale system is unacceptably close to "GNOME" for a desktop shell.

samspot 12y ago

I believe the idea is that if I register "Bruiser's Cars", that name doesn't automatically become unavailable to others for hundreds of years. I need to prove that I am still using the trademark somehow. Unfortunately that results in me needing a lawyer, which really sucks for a small business. Note that the patent system (in theory) works the way you describe, but it hasn't eliminated the need for lawyers. Finally, in the mall example, what usually happens is the judge finds that the mall saved millions by never cleaning their floors, so the company is punished by losing all the money they made. It is extremely rare for someone to get millions over something small.