Overview

Insights into trademark laws on TWiki.ORG or TWiki.NET.

• A trademark generally constitutes as a distinctive sign, including names, letters, numerals, figurative elements (eg logo, symbols), colour combinations
• "Actual use of the mark" is considered as a legal trademark.
• For any legal action, it is necessary
  • to present past commercial evidence of its use;
  • to fully register the acquisition of trademark rights at the corresponding states/countries
• Depending on the scope of the trademark application, a minimum requirement of one year is needed to process the trademark registration. Not to mention the high costs involved.

• Lanham (Trademark) Act is a legislation specific in the US
  • it prohibits trademark infringement, trademark dilution and false advertising
  • NOT the exclusive trademark law in US; common law and state statutes has control over trademark protection
  • NOT applicable to EU

TWiki's take

What can be constituted as a "trademark" in TWiki?

• Project name "TWiki"
• Logo and colour combination
• Any reference to "TWiki" in source code
  • Doesn't take GPL into account. However, what are the implications beyond?

Bear in mind, depending on the lawsuit, the above would need to be explicated in the trademark registration/application form.

According to the USPTO database, TWiki is a registered trademark. (Search for more)

Word Mark	TWIKI
Goods and Services	IC 009. US 021 023 026 036 038. G & S: Software, namely, downloadable software for use with collaborative platforms, community platforms and web-based collaborative platforms for a project development space, for use as a document management system, a creator of a knowledge base, a groupware tool for structured collaboration and for shared data on a network such as on an intranet or on the Internet. FIRST USE: 19980821. FIRST USE IN COMMERCE: 20010914 IC 042. US 100 101. G & S: Services, namely, consulting services and technical support services, namely, troubleshooting of computer software problems for collaborative platforms, community platforms, and web-based collaborative platforms for a project development space, and for software for use as a document management system, a creator of a knowledge base, and a groupware tool for structured collaboration and for shared data on a network such as on an intranet or on the Internet. FIRST USE: 19980821. FIRST USE IN COMMERCE: 20010914
Standard Characters Claimed
Mark Drawing Code	(4) STANDARD CHARACTER MARK
Trademark Search Facility Classification Code	LETTER-3-OR-MORE TWIKI Combination of three or more letters as part of the mark
Serial Number	77156752
Filing Date	April 13, 2007
Current Filing Basis	1A
Original Filing Basis	1A
Published for Opposition	November 27, 2007
Registration Number	3380581
Registration Date	February 12, 2008
Owner	(REGISTRANT) Thoeny, Peter INDIVIDUAL SWITZERLAND 7203 Via Vico San Jose CALIFORNIA 95129
Attorney of Record	JiNan Glasgow
Type of Mark	TRADEMARK. SERVICE MARK
Register	PRINCIPAL
Live/Dead Indicator	LIVE

TWiki.NET has also registered the following trademarks (this list is by no means exhausted)

• WIKISUMMIT
• WIKINET
• WIKISPHERE
• WIKIFOOTPRINT
• WIKIPRO
• SOXWIKI

An FAQ on Madrid from the USPTO.

International trademark laws

• No single trademark registration applies all around the world
  • Meaning, trademark applicability is territorial-specific

• WTO's Trade-Related Aspects of Intellectual Property Rights (TRIPS)
  • Not necessary register in order to use a trademark
  • Members may oppose the registration of a trademark through petitions * Owner of a registered trademarkhas exclusive rights to prevent 3rd party use which is identical or similar to the respective trademark
  • Owner can determine licensing and assignment conditions

• Madrid System
  • Primary international system for facilitating the registration of trademarks - World Intellectual Property Organisation, Geneva
  • Requires an existing trademark owner (registered) in the member state to extend the protection internationally
  • Substantial costs
  • A search for "TWiki" and "Peter Thoeny" holds no result.

Case studies

SSH vs OpenSSH

• SSH spent $14 million on trademark lawyers to force OpenSSH to change its name
• SSH changing trademark licensing (to include using the term "SSH") during the course of legal actions had further diminished its chances of winning the lawsuit

• OpenSSH developers forked the last completely open source version

References

• US Copyright Office
• US Patent and Trademark Office
• US Trademark FAQ

• Attorneys Handling Trademark, Service Mark, Copyright & Patent Enforcement Cases for Clients Worldwide

• United States trademark law
• WTO: Agreement on Trade-Related Aspects of Intellectual Property Rights
  • TRIPS: trademarks
• Madrid System for International Registration of Marks

• Open source's quiet revenge on OpenSSH vs SSH

-- KwangErnLiew - 31 Oct 2008

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From what I can see from my small research, it's pretty futile for a trademark lawsuit.

Though it might just bite us in 5yrs time when he filed an application at Madrid.

-- KwangErnLiew - 31 Oct 2008

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