Trademarking and protecting a name

[First Draft] Moving with RoomWare to new areas and more exposure, the question rises how to protect the RoomWare concept from being washed away into a meaningless thing. So here is an investigative article to get the pro’s and cons clear.

Trademarking and protecting a name

When you trademark a name within a specific branche, you become the “owner” of that name. Anyone who uses or abuses your registered name can be forced to withdraw. Secondly, the trademark can be linked to all kinds of merchandise, creating spin-off revenue like George Lucas did so cleverly with Star Wars. Trademarks have to be registered per country or union and when you enter countries like China or Nothern African cultures, you also will have to protect the sound / pronouncation of that trademark.

The European community has made trademarking easier and cheaper for the entire union. For a something like 1000 euro you can have a trademark spanning all of Europe.

What does it do for you?

Where does the trademark help?

You can use the trademark for the following things:

1. To claim the ownership of the use of a name in a specific branche: you and you alone are allowed to attach that specific name to a specific product or item to ensure clarity. Read this
2. To set down the rules regarding the use of your logo and/or trade name by others. See this is done for open source products like mySQL and   Also see where it can go wrong with for instance Google Android.
3. To protect the brand or name from identity theft or obstruction. Say that you do not have the trademark and someone else claims it to cut your activities down for whatever reasons. It means that the brand name you have been building is destroyed.

How far does the trademark stretch?

A trademark is local. It is limited to the area it is issued to. A trademark registered in the UK will only be valid in the UK. A trademark registered for Europe is valid for most if not all countries in Europe. Second, your trademark is limited to a specific branche. Let’s say you have a bakery. If your register your brand for that branche, it will only cover that trade. A manufacturer of car-parts can claim the same name for his or her branche without infringing you.

What are the alternatives?

The value of a brand is defined by the users, followers and fans. If they like it, they will embrace it and help you build it further by their contributions, references, posts and responses. If you use the fan-base as a starting point, the brand name becomes a disposable item. When I call my brand “GeneratorX” this year and “Algemerabra” the next does not make a big difference as long as my fan base is notified.

Big corporations change brand names from time to time when fusing or changing strategy or simply because they think the brand name has lost it’s relevance in the current time. So one of the alternatieves is to:

1. Claim the most obvious main domain names where people will look for your brand/name, like yourname.org, yourname.net, yourname.com.
2. Claim your name on prominent (November 2009) social sites and prominent publishing environments like Twitter, Flicker, YouTube, Vimeo, WordPress and so on.
3. Set up a clear definition regarding your brand / name on any of these spaces of what YOU think your name represents.
4. Make sure this is re-quoted anywhere by you and others so that your brand and it’s definition are traceable.
5. Make referrals to your official site: where you will post everything regarding your brand, including your view regarding false claims on your brand or brand name.
6. Set it free / let your community deal with it.

Arduino article http://p2pfoundation.net/Arduino\

What can be the implications of not registering your trade-name as a trade mark?

1. When you produce software or hardware or any product under a brand name, without registering the brand name, other people can release similar products using your popularity
2. Unfair competition: other people can claim they were first with the product or solution.
3. Loss of your domain-name – a trademark owner can claim the domain name you hold based on the ownership of that trademark, even if this trademark was registered later than your registration, this case shows a comparable situation.
4. If you want to block a person from registering your brand name as a trademark, you can, but it will cost you 3 times as much as registering it on time yourself
5. It will be harder to protect the value of the brand name you are building

What is the lazy way to hold your trademark?

When it regards online activities / software or a group of people you can simply

1. Take distance from those parties who are claiming your name by referring to them stating that you are not associated to them, or vice versa.

What are cases regarding possible infringement and open source projects?

Here is one regarding WikiPedia. Quote:

The artists, Scott Kildall and Nathaniel Stern, have created a noncommercial website that documents the project, called Wikipedia Art. [..] they used the term “wikipedia” in their domain name. “Wikipedia” is a trademark owned by the Wikimedia Foundation. And now the Foundation has demanded that the artists give up the domain name peaceably or it will attempt to take it by (legal) force.

Here is one statement from a response regarding the Web2.0 issue in 2006 from Tim O’Reilly

That’s what trademark law is for, to prevent people from imitating other people’s brands for similar products with the result that customers get the products confused. In most cases, though, especially with non-commercial users, we’ve usually found it sufficient to send an email asking the non-commercial user to protect our trademark by acknowledging our ownership of it. We’ve even licensed our trademarks for commercial use when the use is clearly complementary and not confusing in the marketplace.

And a response (not to the above post but to the Web2.0 trademark claim) from Corey Doctorow

But that means that O’Reilly’s ideas are also not uniquely associated with O’Reilly. When I hear “emerging technology,” I think of more than the excellent “O’Reilly Emerging Technology Conference” (even though I’ve volunteered for every ETECH programming jury so far). When I hear “Open Source,” I think of more than the wonderful “O’Reilly Open Source Conferences” (where I’ve spoken on several occasions). And when I hear “Web 2.0,” I think of more than the brilliant “O’Reilly Web 2.0 Conference.”

That means that O’Reilly needs to choose whether it’s going to retain control the word “Web 2.0” for conferences, or retain control over the shifts that created the Web 2.0 phenomenon.

Where does the trademark becomes a burden?

Read this article regarding Linux and enforcing the Linux trademark. Linus Thorveld explaines that the “cease-and-desist or sublicense the mark” letters are a requirement of maintaining a trademark. He highlighted a posting made to the mailing list in 2000, which explained why such letters are necessary. A few quotes from that article:

– I (and obviously a lot of other people) do not want to have “Linux” as a name associated with unacceptable (or borderline) behaviour, and it’s important that “Linux” doesn’t get a name of being associated with scams, cybersquatting, (quote form WikiPedia: [..] is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else.) [..]

– Trademark law requires that the trademark owner police the use of the trademark [..]

This is nasty, because it means, for example, that a trademark owner has to be shown as caring about even small infringements, because otherwise the really bad guys can use as their defense that “hey, we may have misused it, but look at those other cases that they didn’t go after, they obviously don’t care..” [..]
– I’m required to ask people to acknowledge the trademark. When you use the term “Linux” in official marketing literature etc, you should acknowledge it as a trademark owned by me. Not because I love seeing my name in print, but simply because of the “policing” issue (#2) above. [..]

This is where the cybersquatting laws come in, for example, allowing the use of a trademark as a way to make sure that such squatting activity does NOT happen. [..]

Basically, ask yourself the question: “What if somebody else had a project, and happened to chose the same name for his project as I have for mine, how strong a protection do I want for MY version of the project?”

Also, ask yourself: “Would anybody ever have reason to question the name, and do I need to make provisions for protecting this particular instance of it” (and note that “anybody” may not be me as the trademark owner myself, but it may be a competitor who wants to make life uncomfortable for you)

If you decide that you want some official protection from the mark, that probably means that you want to own your own version of the trademark, ie a “service mark” or a “combination mark”. There are obvious cases where such a thing is wanted – you should not be surprised to hear that various Linux companies own their own combination marks, or have at the very least gotten that ownership verbally approved by me pending getting the paperwork done.

Some viewpoints on Trademarking from this discussion on the Arduino forum:

Post by Daniel on 22.08.2007 at 23:21:44: the simple legal fact is that if you can’t enforce it through demand letters and legal action etc, you give up your legal claim to the “mark” by the fact of non-enforcement.  You can’t keep the mark and not enforce it: trademark law doesn’t work that way.

Post by ladyada on 22.08.2007 at 23:33:16: They can enforce it by sending boilerplate C&D emails, which cost nothing. Maybe they’ll represent themselves in court. [..] Most people who trademark aren’t planning to go to court. That doesn’t mean they shouldn’t register the trademark: most violators stop when they get a C&D. According to the interwebs, Linus -didn’t- register the word originally and then regretted it when it was snapped up by some jackass.

Post by wayoda on 23.08.2007 at 08:56:39: Imagine I release a new Beatles CD and put some fake pictures of John,Paul,George and Ringo (I know there are only two of them left) on the cover. But when you start up the player your only hear me strumming away on the guitar and singing along with a voice that makes my dog change into another room!
I guess you would prefer that I had to call my CD “Eberhard Fahle sings his favourite Beatles tunes”. Then you would hear this strange Free Jazz version of “Let it be Arduino” on the college radio and think : Not bad, actually even better than the original, I’ll buy it.

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