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Open source invalidates trademark?

December 10, 2006

If you open source your software do you invalidate your brand? Can I call my company WordPress? Zimbra? JBoss? Asterisk? Ankesh Kumar and Rajiv Dutta seem to think so. Let me explain.

In late November I was reading the StartupSquad and noticed a post titled “SocialMail takes email communication to a new level“. At first I thought, VERY COOL, but then I noticed that our logo had changed. Dan Cederholm designed the SocialMail logo (on bottom) in 2005, but this looked more like a LogoWorks design. Then it became clear that someone else had launched a group email service with the same name as our own group email service.

I emailed Ankesh explaining:

We have been running a group email service called SocialMail for quite some time and I was not sure if you had realized the potential conflict. Anyway, let chat via phone next week. What is a good time and number?

I hate getting those lawyerly cease and desist letters and I assumed Ankesh simply failed to realize the conflict. Boy was I wrong. Shortly after our conference call to discuss he filed a trademark application with the USPTO. Since then he has emailed me suggesting that by offering the SocialMail source code as an open source project it is “not part of your core business”. Surprisingly, the company is advised by VERY smart people like Rajiv Dutta, the president of Skype (ebay).

The good news is that our use-in-trade and USPTO trademark filing pre-date Ankesh’s use-in-trade and filing. The bad news is that he is trying to create a precedent that if your brand is for an open source project it is invalid. Clearly I am annoyed that Big in Japan will have to spend thousands of dollars and valuable time prosecuting Ankesh and his team over a clear violation of our trademark. Perhaps when we do we can put the idea that open source brands have the same rights as closed source brands.

Written by Alexander Muse · Filed Under Blog 

Comments

9 Responses to “Open source invalidates trademark?”

  1. Tracey Says:
    December 11th, 2006 at 2:23 am

    I’m not sure about the wording of the last sentence, but Open source does enjoy the same rights as closed/proprietary apps. Even Linux is a trademark that is actively protected by Linus Torvalds. Debian is protected by SPI, and so on.

    IANAL, but Ankesh Kumar is wrong in this case. Your software development model doesn’t have any thing to do with trademarks. Most, if not all open source projects protect their marks.

    I can’t find what i’m looking for but, even SPI, the holder of the Debian trademark, defended the use of Debian against the FOUNDER of Debian Linux. You may find that story interesting.

  2. Todd Says:
    December 11th, 2006 at 8:43 am

    I am confused…

    You support the LogoWorks company, who routinely take other companies trademarked logos and re-purpose them for their own use - at a profit, but are “annoyed” by Mr. Kumar?

    How come one is OK but the other warrants “…prosecuting Ankesh and his team over a clear violation of our trademark.” ?

  3. Michael Bernstein Says:
    December 11th, 2006 at 10:23 am

    You said: “Perhaps when we do we can put the idea that open source brands have the same rights as closed source brands.”

    Interesting. So, how do you feel about misusing other organizations logos and trademarks as a form of false endorsement?

  4. Alexander Muse Says:
    December 11th, 2006 at 10:31 am

    Todd - not sure what you are talking about. We don’t support Logoworks. We have used their services in the past and for a time they were a client of WeblogsWork.

    Ironically, the link in my post was from an earlier post of mine where I was critical of Logoworks - not for trademark infringement (something I am not aware of), but instead for poor quality work. I think logo design is a mixed bag - sometimes you get good quality work and other times you don’t.

    At the end of the day if you use independent contractors for your end product sometimes you will have contractors who steal (in Logoworks case trademarked designs) and in others find great designers trying to earn a living. I certainly don’t support illegal behavior.

  5. Alexander Muse Says:
    December 11th, 2006 at 6:34 pm

    Michael - I am sure there is a point to your comment, but I don’t get it. Perhaps you could explain further.

    Obviously, it is fairly easy to be against misuse ~ sort of like asking if someone thinks “wrong” answers are incorrect.

    There are many examples where someone includes a trademark or brand in a picture or video never intending to infringe on the rights of the brand shown. Did the person taking the photo or video intend to infringe? Did he intend to associate whatever he was shooting with the brand in question?

    If the mark holder didn’t like the use (i.e. felt as though it infringed) it would be his OBLIGATION under the law to notify the person or organization of the infringement, giving them an opportunity to cure the infringement. Assuming the person removed the mark in question I think the person would be acting within the law. If the infringer ignored the notice the mark holder would be entitled to damages (up-to 3x) and lawyer fees.

    Is this what you were asking?

  6. Steven Smith Says:
    December 11th, 2006 at 7:55 pm

    Quite simply, open source does NOT equal public domain.

  7. Blake P. Says:
    December 12th, 2006 at 11:29 am

    Are they not original enough to create their own identity? Any money spent defending their rights on a new brand image that clearly is a rip-off is a waste of resources. Even if they win, they have clearly lost in the end.

  8. 451 CAOS Theory » SocialMail vs. SocialMail Says:
    April 17th, 2008 at 5:38 am

    [...] For more information on this topic, please take a look at Alex’s blog post - “Open source invalidates trademark?“. [...]

  9. Janice Jones Says:
    December 4th, 2008 at 7:03 pm

    Does anyone know how if you need a lawyer to file a trademark application with the USPTO? Or can you do that on your own? Any information would be greatly appreciated.

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