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Trademark Issues

by batkins (Chaplain)
on Aug 16, 2003 at 02:54 UTC ( #284300=perlmeditation: print w/replies, xml ) Need Help??

I've been working on an open-source Perl/Tk-based IM client over the past few months. It's almost ready for a stable release (0.4), but lately I've been having some concerns about trademark issues with its name.

When I first started this project last November, I decided to call it milkbone, mostly on a whim. But now I'm beginning to wonder if that could cause legal problems in the future. IANAL (nor do I know any), but I've talked to some people about the problem and the answer I keep getting is that I should be safe because my project and the products made by the Milkbone company are in different industries. In other words, the milkbone software wouldn't compete with Milkbone dog biscuits, so everything should be copacetic.

However, since I've never heard this from someone who knew exactly what they were talking about, the issue still bothers me. My question is this: Can I be sued for trademark infringement for using the name milkbone?

Also, the project's logo is a small white bone (visible in my home node). Would this also cause a problem?

If this does indeed look to be a sketchy situation, can anyone suggest a better name? :)

I apologize if this is too far offtopic, but I'm not sure where else to ask this. I considered Ask Slashdot, but there are three problems with that. 1) They could reject the question 2) The slashdot effect could easily cause my hosting account to exceed its monthly bandwidth cap and 3) the folks on Slashdot aren't generally as.....receptive as those here (to put it diplomatically).

Thanks for your time,
Bill

Replies are listed 'Best First'.
Re: Trademark Issues
by liz (Monsignor) on Aug 16, 2003 at 09:40 UTC
    ...Can I be sued for trademark infringement for using the name milkbone?

    It's good to realize that anybody can sue you for anything at anytime, especially given enough resources. I speak from experience, I'm afraid ;-(.

    If you know of a company that is already using that name, please find out how they registered that name (in what areas of business, particularly). That they're doing dogfood now, does not mean they didn't trademark it for software development. That they're doing dogfood now, does not mean they couldn't be in software development in two years from now. Stranger things have happened.

    So, make sure you're not infringing on their trademark beforehand. If there is only the slightest doubt that you may be infringing, get a dead tree document from them that they're agreeing with you using "their" name for your software product. If they don't want to give that to you, I seriously consider one of the following:

    • Change the name of your product.
    • Have them involved: IM for dog owners as marketing idea.
    • Have them invest in you: they become co-owners of your idea.

    Even if you are proven right in the end, you're going to have a hard time getting any damages from them. So in the end it's going to cost you a lot of money and headaches. Trust me, I've been there.

    Liz

    Update:
    Check Abigail-II's take on this, particularly the part about coughing up blood.

    Update:
    Changed title of above link from "Get a lawyer" as this was apparently misunderstood.

      That they're doing dogfood now, does not mean they couldn't be in software development in two years from now. Stranger things have happened.

      The most famous example of this of course being Apple - in 1981, Apple Corps Ltd (the Beatles recording company) allowed Apple computers to continue using the name on condition that they never ventured into the music business. When Apple started producing music software/files a few years later, they had to pay Apple Corps $26 million - and it looks like they may now be at war again over the iPod & iTunes.

      I'd agree with liz - get in touch with them and check it out. You may even end up with some sponsorship money :)

      Cheers, Ben.

        When Apple started producing music software/files a few years later,
        And that's when they added that alert tone they call "sosumi".

        Read it out loud, if you don't get it.

        -- Randal L. Schwartz, Perl hacker
        Be sure to read my standard disclaimer if this is a reply.

      Your "update" probably should have been the first bit of advice you gave. And you probably shouldn't have said anything else.

      Your advice:

      So, make sure you're not infringing on their trademark beforehand. If there is only the slightest doubt that you may be infringing, get a dead tree document from them that they're agreeing with you using "their" name for your software product.
      is especially questionable. I highly doubt that a lawyer would recommend that his client take the position that the name is "their" name (at least for purposes under discussion) in any communication with the company there may be a dispute with. That would probably put his client at a severe disadvantage if he should try to argue that the name was actually "his" in the future.

      In any case, batkins, don't take liz's advice and don't take mine. I am not a lawyer. I don't even play one on TV. The only safe advice to give (or take) is: go get legal counsel before you have any communication with the company in question.

      -sauoq
      "My two cents aren't worth a dime.";
      
        I've been thinking a lot about whether or not to reply to this.

        I wanted to give my opinion about the matter at hand. And that's just what I did, to the best of my knowledge and experience. I therefore don't want to have to put any disclaimers at the bottom of every node that I write. And I don't want to be compared to someone playing a lawyer on TV.

        As with all advice that you ask/get in your life, you should make up your own mind (and don't start shouting "We're all indivduals" in chorus now ;-). But seriously, if you don't make up your own mind, you let yourself be lead by others. And you'll get whatever is coming to you. Even when lawyers are being paid for giving advice, it is no guarantee that their advice is right.

        From having to deal with lawyers in a corporate setting in the past 7 years, I have learned a few things. And to keep in context, I chose to word it like this:

        Lawyers are just like programmers
        Some of them work for big companies, some are more or less free-lancers. Some of them are in it for the money. Some of them are in it for the fun (believe it or not). Some of them are in it to better the world. Some of them are in it for themselves. And all of these aspects are mixed in any individual. And the mix can change over time or over a case. Just like programmers.

        Lawyers are not just suits
        Contrary to popular belief, lawyers are not bloodsucking vampires who can survive in the vacuum of space. They're human beings just like you and me getting along in the world and trying to make sense of it. I would agree with the notion that the "amorality" of the judicial system tends to attract inherently immoral people to the profession. But you got immoral people everywhere and they're not all lawyers. Just like programmers: they're not all evil hackers bent on destruction.

        "Get a lawyer"?
        Saying "Get a lawyer" is easy. Too easy. If anything, it should be "Get a good lawyer that you can trust to defend your case and who will stick with you through bad times". A lawyer in the end, should only be the implementer of your design. You yourself must always make the decision. A good lawyer will not make the decisions for you. Just like a good programmer.

        Do lawyers program?
        A programmer has a programming language to work with. So has a lawyer: it's called legalese. Some lawyers are good programmers and will find an efficient solution to the problem quickly. Some lawyers are worried about job security and will make sure that you are going to have to need their services for a long time. Most lawyers know some principles of programming, but have never done anything like what you want. Some will tell you so. Some won't. Just like programmers. The lawyer has the disadvantage that there is no reference implementation of the compiler. They can never know whether the program is right until it has to run. The lawyer however has the advantage that the program only needs to run once, or a few times at best. Efficient use of resources is therefore not an issue, unfortunately.

        Getting back to the case at hand. If you don't want to contact the company about the possible trademark issue to be able to feign "plausible deniability", it's too late for that. The Monastery is public and indexed by Google. Lawyers also know how to use Google these days. Putting the question here already put you at a severe disadvantage in that respect. It is not an option to say you didn't know about them. Googling for milkbone tells you why: they're number 1 in the result, you're number 2. The original node here will only make things worse.

        If you do contact a good lawyer (and I'm a strong believer of "word of mouth" in that respect), the first thing (s)he'll tell you is to change the name of your product/project. That will be the cheapest and least stressful way. Because your resources (an open source project) are going to be way less than whatever resources they (the company) can throw at it. And while it is the most important thing in the world to you now, it is just a side note for whatever manager at the company who decides to put a lawyer on it.

        If you want to get a lawyer at this time. Do it. Make the decision. If you don't want to get a lawyer at this time and contact them on your own. Do it. Make that decision. If you want to get a lawyer and contact the company on your own. Do that. To me, that would make the most sense in your case right now. Because anything a lawyer writes and sends to the company right now, is going to have to be read by a lawyer from the other party. And you don't want to talk to lawyers right now, because they're just the programmers. You don't ask programmers about design decisions. You ask the people in charge. They might bring in the lawyers, but they may do so at anytime anyway. And then if nothing comes out of direct communication with people in charge, you can change the name of your product/project. In any case, you'll be able to prove that you were looking for a resolution beforehand.

        And to finally stress again what I said earlier: make up your own mind, decide yourself. Don't let anyone else do that for you. Even if you made the wrong decision, it will have been yours.

        Liz

Re: Trademark Issues
by Abigail-II (Bishop) on Aug 17, 2003 at 00:25 UTC
    1. Get a lawyer.
    2. The interesting question isn't Can I be sued for trademark infringement for using the name milkbone?, because the answer is "Yes". You could also be sued for the trademark infringement of "AppleSweet" and for shooting JFK. The question to ask is If I get sued for trademark infringement, what are my chances?.
    3. Get a lawyer.
    4. I should be safe because my project and the products made by the Milkbone company are in different industries. That's just part of the story. *Sometimes*, that will get you off the hook. But sometimes, it won't. Your chances will be slim if you call your software product Coca-Cola. See, the trademark law also recognizes "well-known names". Will Milkbone be recognized as such? I've no idea.
    5. Get a lawyer.
    6. The driving force behind trademarks is that the public can't confuse names/brands/logos. It's not just for the companies, but it also gives the customer some form of protection. It means that if you buy a hamburger next to a giant yellow M, you are guaranteed to get wet cardboard, and no local hamburger joint is trying to pass you some juicy stuff. If you get sued, you might have to prove such confusion is unlikely.
    7. Get a lawyer.
    8. I've said this before, but asking for legal advice on a forum like this is stupid. You wouldn't ask for medical advice here when you cough up blood, would you?
    9. Get a lawyer.

    Did I already suggest to get a lawyer?

    Abigail
    --
    P.S. Get a lawyer.

Re: Trademark Issues
by daeve (Deacon) on Aug 17, 2003 at 01:15 UTC
    I used to work for a company by the name of Stereo Shack. It opened in the mid 60's before there was a Radio Shack anywhere in this part of the state. When the first Radio Shack opened here their lawyers contacted us and informed us that they owned the name Shack. We had had it long before they were here but after a 2 year exchange of hostilities between lawyers we changed the name. At the same time in a nearby town they did the same with another company by the name Shampoo Shack. We were in the same general industry but the other company wasn't. Didn't matter as Radio Shack was bigger and had both more and better lawyers and MUCH deeper pockets.

    My personal opinion is "Don't use the name." Save the lawyers fees and find another name for your product. If you decide to keep the name then listen to Abigail-II and get a lawyer. And if you do decide to approach the Milkbone people about sponsership or even to just ask their opinion about you using the name, get a lawyer FIRST!

    HTH
    Daeve

Re: Trademark Issues
by cchampion (Curate) on Aug 17, 2003 at 09:03 UTC

    They can sue you even if the trademark is different!

    Check out the Obelix vs. Mobilix case

    Has anyone already told you to get a lawyer? ...

Re: Trademark Issues
by chunlou (Curate) on Aug 16, 2003 at 09:58 UTC
Re: Trademark Issues
by revdiablo (Prior) on Aug 16, 2003 at 04:40 UTC

    With my (meager) understanding of trademark law, it seems like you should be ok. It's in a vastly different industry and seems like a completely unrelated product. That said, they can still send you threatening letters and potentially file a lawsuit against you, but I think you would end up winning a if you had the resources and desire to do battle. Of course, I'm no lawyer. You really should ask one, if you're genuinely worried. The costs associated would probably be far less than any potential future legal struggles.

Re: Trademark Issues
by batkins (Chaplain) on Aug 17, 2003 at 04:15 UTC
    Thanks for the answers, everyone. I've been thinking about changing the name to avoid the hassle of the trademark and just for the reason of having a name that makes sense. :) I wanted to rename it Mercury, which would be a little more logical, since Mercury was the Roman messenger god. The only problem is that mercury.org, mercury.net, and mercury.com are all taken (as well as .cc, .tv, and .us), as is the mercury name on SourceForge.

    So I guess my best bet after all would be to just change the name and not deal with this, since I'm really not interested in paying a lawyer. I just have to figure out a way to make a memorable domain name.

    Thanks again, everyone.

      PIMP - as in Perl IM Program.

      The domain name, pimp.com or pimp.org, is likely already taken. So maybe you can go with www.pimpclient.com? Or www.pimphq.com (sorta like masonhq.com)? Or even better: pimp.perl.org

        Funny you suggest that name. I wrote an image mapper in Perl for a class I took and was going to call it PIMP - Perl Image Mapping Program, but I ended up calling it IMP as I thought the name might somehow affect sensibilities and my grade ;)

        There is no emoticon for what I'm feeling now.

        Careful with that one as well. NullSoft has a distribution software they call SuperPiMP in the NSIS package.

      quicksilver.cc and quicksilver.to are available, and all variations of quicksilver-im or im-quicksilver seem to be available ... variations on im-fast seem to be available ...

      have fun!

Re: Trademark Issues
by Jenda (Abbot) on Aug 18, 2003 at 18:35 UTC

    From what I've read in this thread it seems it would be better never to create anything. Or if you ever dare to create something, type at least ten random characters with your eyes closed, use that as the name and no bastard with more money types the same random nonsense.

    So ... name your program cnegfkwvxidf

    Jenda
    Always code as if the guy who ends up maintaining your code will be a violent psychopath who knows where you live.
       -- Rick Osborne

    Edit by castaway: Closed small tag in signature

      A Trademark Collision Free Project Naming Procedure.. I smell a patent.

      Makeshifts last the longest.

Re: Trademark Issues
by batkins (Chaplain) on Aug 18, 2003 at 18:17 UTC
    Thanks again for your answers, everyone. I agree that my best bet would be to change the name. When I started this project, it was an independent study computer science project - just something I was doing for fun. I figured at the time that the name wouldn't matter too much. But then I decided to go further with it, and the trademark issue has been nagging at me ever since.

    Still, I have no real attachment to the name. The only reasons I hesitate to give it up are:

    • The domain name milkbone.org is pretty nice to have. None of the other names I'm considering have available domain names.
    • The few people who are actively using milkbone are a bit offended at changing the name. Ultimately, though, if it comes down to their feelings about the name and possible legal action, the name will have to be dropped anyway.
    So I guess the only reason I'm hanging onto this name is the domain name issue. I could tweak one of the other names I'm considering (e.g. www.mercuryim.com or www.mercuryhq.com), but ultimately I think milkbone.org is a lot easier to remember than some other name combined with an abbreviation.

    I suppose my best bet would be to contact Milk-Bone and ask their opinion. If they say no, then I'll have to get mercuryhq.com or something to that effect. But if they say yes, then it's all good. I can only hope, though, that my letter doesn't simply bring the project to their attention and incite legal action. :)

    Thanks again.

Re: Trademark Issues
by Notromda (Pilgrim) on Aug 18, 2003 at 15:33 UTC
    You could write to them and ask for their position.
Re: Trademark Issues
by Anonymous Monk on Aug 24, 2003 at 06:50 UTC
    Contact the milkbone people and ask them for their trademark/copyright guidelines. The JavaJunkies.org as well as other forums with the name Java in them got contacted by someone from the SUN legal department, and what they ended up having to do (the website administrators, with all the non-user contributed content -- meaning non-posts) is refer to JavaJunkies.org always as JavaJunkies.org, and add a disclaimer saying that :

    Java™ and all Java-based marks are trademarks
    or registered trademarks of Sun Microsystems, Inc.
    in the U. S. and other countries. JavaJunkies
    is not affiliated with Sun Microsystems, Inc.
    in any way.

    Oh yeah, get a lawyer ;)

Re: Trademark Issues
by theAcolyte (Pilgrim) on Aug 18, 2003 at 16:32 UTC
    From a legal standpoint, you're pretty safe. However, take the case of Domino's Pizza vs Domino's Sugar ... cost the (at the time) small pizza chain a bundle to fight this in court. They eventually won, but the cost was very high. I recommend choosing a different name. Unless you like threatening letters.

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