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.
