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From "Marc Poussin" <marc.pous...@gmail.com>
Subject Re: [VOTE] Change JSecurity's Name
Date Mon, 12 Jan 2009 13:07:17 GMT
Emmanuel,

Actually if you file for TMing JSecurity you wont get "sued", but you
may receive oppositions, wich have to be discussed in front of the
trademark office you filed in (USPTO in the US, INPI in France etc...)

Oppositions are not systématically formed, and other people may not
claim their rights on the name.

If you get the TM allowed it will have 3 main conséquences:
You re entitled to sue anyone using it to protect your right (it s not
mandatory but usefull :) )
You have to pay more and more each year to keep your trademark
protected (TM Fees)
You have to USE the TM or it could be dismissed by any intrested third party.

It's never mandatory to TM something, because of the cost. TMing gives
you a right, and allow you to protect yourself. TM system has been
designed to help yourself to protect a name in which you invest
time/money.

It's kind of a race in the same time. If two companies have similar
products (in term of CLASSES), and the same notoriety, then the first
to register the TM is usually the one that has the TM granted.

Then you can force legally the other guy to drop the name for his own products.

About the second question:

Using the name for more than 4 years gives you no right at all. Only
the famous Names are "insidly protected". For example, you could not
register Coca-Cola, or Google for t-shirt or shooes, (in the case they
dont have protected the class) not because the name is not free, but
because it would be deceiving for any consumer.

But i wont say that Apache Jsecurity project is yet as well know to
John Doe than Google or Coca-Cola, so, i will say there is any
protection existing on that ground.

The only intresting point of this aging is the following: if there is
an opposition due to the fact that j-security estimate his use of the
name older, then you could prove, or not, that you were the first in
the business using that name.

If you got other questions dont hesitate,

Cheers,

Marc

On Mon, Jan 12, 2009 at 1:21 PM, Emmanuel Lécharny <elecharny@apache.org> wrote:
> Thanks Marc !
>
> Some questions :
>
> - what are the risks and consequences if we TM JSecurity, and get sued?
> - is it mandatory to TM JSecurity, or the fact that it has been in used for
> more than 4 years is enough to protect the name ?
>
> Marc Poussin wrote:
>>
>> Hi,
>>
>> After cautious reading of that issue i just checked briefly one single
>> element:
>>
>> Trademark registration is done trough a "class" system, defined by the
>> Nice classification.
>> Usually, a trademark is registred trough one or more classes numbered
>> from 1 to 45
>>
>> The trademark form allow you to define what good or service will be
>> covered by the filing, according to the class.
>>
>> When a trademark form is filled, you just choose the class  and not
>> the subdivision that you intend to protect, and you'll be protected
>> against counterfeiting acts for this whole class.
>>
>> It appears that even if jsecurity and j-security have a really
>> different activity, one being on hardware, the other one on software,
>> they both are dependant of class 42 (different subdivision):
>> http://www.wipo.int/classifications/nivilo/nice/index.htm
>>
>> So, i would recommand a quick trademark filing, especially on class 42
>> if you want to preserve the name, especially if:
>>
>> -the name is popular and already widely used by apache users
>> -j-security (apachie) project is older in a public way than jsecurity
>> (hardware)
>> -there is already a wide policy of domain name reservation in favor of
>> apache on jsecurity (like .com, .net, .org etc.) because domain names
>> could be regarded as anteriorizing a trademark...
>>
>>
>> If that name could be used for any identifical/commercial purpose now
>> or later, and it's decided not to protect it, changing name would be
>> the best option, at least on a trademark law point of view.
>>
>> A court argument could always be that they got different activities,
>> and that there is (almost) no risk for the public to be deceived. I
>> would like to point that, in front of a judge wich doesn't understand
>> much on computers (and that shit happens often), that kind of
>> argumentation will be quickly dismissed regarding to classes and
>> trademark law...
>>
>> Concerning google, the trademark is not really an issue anymore,
>> because they re so well known that they could argue mainly on
>> parasitism, and keep the trademark issues around theyr main services,
>> where even if the google could be regarded as a public domain term, it
>> wont deprive them from their right to protect against copyright
>> infrigment.
>> In the same time, i would say that public usage do not allow to do
>> anything, just think about Parmesan cheese, and some other French
>> wine, and italian ham...
>>
>> Cheers
>>
>> Marc
>>
>>
>>
>> On Mon, Jan 12, 2009 at 8:05 AM, Niclas Hedhman <niclas@hedhman.org>
>> wrote:
>>
>>>
>>> On Mon, Jan 12, 2009 at 2:34 PM, Ralph Goers <ralph.goers@dslextreme.com>
>>> wrote:
>>>
>>>
>>>>
>>>> As for Google, I think they actually have a fairly serious problem.
>>>> "google"
>>>>  and "googling" have become synonymous with searching for information
>>>> (see
>>>> http://dictionary.reference.com/browse/google or
>>>> http://www.reference.com/search?q=Googler). From what I've read this is
>>>> exactly how a company can lose control of their trademark. I'd venture
>>>> that
>>>> if you created a product named "Super Googler" that they would sue you,
>>>> but
>>>> given that the term is now in the public domain I'm wondering if they'd
>>>> actually win. OTOH, you'd be pretty stupid to name your product that
>>>> unless
>>>> you want to be sued.
>>>>
>>>
>>> You are right that if you don't protect your marks, you loose them.
>>> Whether that has happened for Google already or not, is a discussion
>>> for the courts...
>>> If there is no JSecurity registered as TM or equivalent, then Alan's
>>> analogy is way off the mark of realism. And speaking of Google, in
>>> today's day and age, people who don't regularly google their marks and
>>> see 'intruders' show up all over the first page, can be argued, are
>>> not really interested in preventing others from using the mark.
>>>
>>> My vote after all this debate is in favor keeping the name, and only
>>> act when/if there is a problem.
>>>
>>>
>>> Cheers
>>> Niclas
>>>
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>>>
>>>
>>
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>>
>>
>
>
> --
> --
> cordialement, regards,
> Emmanuel Lécharny
> www.iktek.com
> directory.apache.org
>
>
>
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