OpenSource project name infringing a TradeMark

October 31, 2008 4:33 PM

Should I rename my Open Source project because someone owning a trademark with the same name wants me to?

I have an Open Source project called "TouchMap" that allows iPhone Developers to easily add maps to their applications. The code is part of my TouchCode repository (large portions of TouchCode went into the Obama iPhone app) and is freely available to anyone.

I've just been contacted by the owner of the TouchMap trademark who is demanding that I stop using his trademark. I'm a coder not a lawyer damnit. So help me out here. I'm trying to avoid any legal expenses, I don't release the code for profit but to help do my part for the Open Source community. It isn't a huge hardship to rename the project, but it is an inconvenience and one I'd rather just avoid.

TouchMap isn't a product as such, it's just a loosely defined collection of source code to help other people add mapping to their iPhone applications. Because of this and because I'm not selling TouchMap do I still need to change the name?

posted by schwa to law & government (30 answers total)

Oh and I haven't received anything from a lawyer yet. Just a phone call and follow up email from the trademark holder. The tone of the email was a little bit bullying but nothing unreasonable.
posted by schwa at 4:36 PM on October 31, 2008

Is there really any reason not to change it? I know it's a minor hassle, but at the very least it's a reasonable courtesy even if you don't receive a C&D.
posted by Class Goat at 4:41 PM on October 31, 2008

Well it is a minor inconvenience but not the end of the world obviously. But what I'm really wondering is if I even have to. It isn't a competing product, heck it isn't even a product. I'm really wondering how much a trademark can cover. It seems a bit silly that someone owning a trademark can stop pretty much all usage of that trademark.
posted by schwa at 4:44 PM on October 31, 2008

What does the trademark in question apply to?
posted by Inspector.Gadget at 4:47 PM on October 31, 2008

IANAL, IANYL, you should really talk to your lawyer. Wikipedia, which is also not your lawyer, says that "failure to . . . enforce the registration in the event of infringement, may also expose the registration itself to become liable for an application for the removal from the register after a certain period of time on the grounds of "non-use". It is not necessary for a trademark owner to take enforcement action against all infringement if it can be shown that the owner perceived the infringement to be minor and inconsequential." IE, if TouchMap(tm) doesn't come after you, some future party seeking to use the name could point to this incident in court and say "They weren't defending their trademark! They let schwa keep using the name, therefore the trademark is invalid, and we should be allowed to sell our competing product as TouchMap!"

With regard to "Minor and inconsequential," Wikipedia points out that "The test is always whether a consumer of the goods or services will be confused as to the identity of the source or origin." I'm not sure that the TouchMap(tm) at www.touchmap.com would necessarily meet this definition because it seems to deal with geolocation and not general mapping, but since the TouchMap(tm) folks have contacted you, it would seem that they aren't taking the view that this infringement is "minor and inconsequential."

My read would be that unless you feel like lawyering up and dealing with a legal conflict, you should probably just change the name. They do have an interest in making you stop using it.
posted by Alterscape at 4:52 PM on October 31, 2008

"Providing an on-line interactive, customized computer database for enterprises to capture attributes about customer relations that allows the enterprise to model the impacts of changes and add updates during the implementation of changes to the customer relationship."

Which really has NOTHING to do with mapping.
posted by schwa at 4:52 PM on October 31, 2008

@alterscape, Yeah that's more or less my reading too. But the trademark has nothing to do with mapping at all. But yeah IANAL. Bugger.
posted by schwa at 4:54 PM on October 31, 2008

TOUCH-MAP: "automated telephone and data network locators services for use to provide location and contact information for nearby locations, from a universe of total locations to a caller or requestor, based upon the caller's location or geographic preference"

LIVING TOUCHMAP: "Providing an on-line interactive, customized computer database for enterprises to capture attributes about customer relations that allows the enterprise to model the impacts of changes and add updates during the implementation of changes to the customer relationship."

It seems a bit silly that someone owning a trademark can stop pretty much all usage of that trademark.

Isn't that kind of the whole point of trademarks?

As much as I'm conflicted about intellectual property issues, I think this one's pretty easy: change your project's name. It'll save you the hassle of having to do it later, once you've got more invested in the project.
posted by hades at 4:54 PM on October 31, 2008

If it's this Touchmap , then I would go ahead and change it. IANAL, but: the harm (wasted money, wasted time) from ligitation will accrue to you whether or not this company prevails in court. As this project is valuable to you primarily in terms of an investment of time and labor rather than potential earnings, I would seek to avoid that.
posted by Inspector.Gadget at 4:56 PM on October 31, 2008

I'm not a lawyer and this isn't legal advice. Before you give up rights or fight this you should consult a competent trademark lawyer.

Just because your project is open source does not mean you aren't necessarily using the name in commerce within the definition of the federal trademark laws (the Lanham Act). Just distributing it to the public via the internet suffices. The fact that money isn't changing hands is irrelevant. See Planetary Motion v. Techsplosion, 261 F.3d 1188.

Anyway, looking at the trademark in question, I would guess that you have enough of a case that you should feel confident contacting a lawyer to defend you if you get a proper cease & desist and like the name enough to fight for it.

Some points in your favor: the trademark is for "Living Touchmap" not just "Touchmap" and the area of goods and services it's registered for does not appear too similar to yours. Also, I can't easily find any references to TouchMap in connection with Carlson Marketing Worldwide, so it may not be all that important to them. It's most likely that they're just motivated to aggressively defend the mark because not policing the mark is a good way to lose rights to it due to abandonment, genericization, laches, etc.

Also, there's already a registered mark for "Touch-Map" (owned by the touchmap.com people), so a good argument can be made that since the mark is already in use by multiple parties, there's room for more.
posted by jedicus at 5:00 PM on October 31, 2008

This is definitely one of those 'talk to a lawyer' questions. And not only am I not a lawyer, I also always lose when I play that old 3M bookshelf game 'Point of Law' (that's why I prefer 'Facts in Five'). But here goes: You say you're not a lawyer either, and you don't want to pay any lawyers. You also say that changing the name wouldn't be a huge hardship. Bearing those things in mind, I think it's probably the path of least resistance.
posted by box at 5:00 PM on October 31, 2008

@hades Isn't that kind of the whole point of trademarks? Isn't it in the name trademark? I am trading nothing (hence my shouts that TouchMap is not a product).

Obviously I'll change the name if I have to. Although I'm not actually clear what the trademark holder wants me to do. I can't go back into google code and fix the names of the project in previous revisions.
posted by schwa at 5:01 PM on October 31, 2008

@jedicus I think the actual trademark is "Touch-Map", the living prefix just means the trademark is current and up to date. Did I mention that the USPTO website sucks? ;-)
posted by schwa at 5:03 PM on October 31, 2008

Actually it looks like the trademark in question is "Touch-Map" ("IC 042. US 100 101. G & S: automated telephone and data network locators services for use to provide location and contact information for nearby locations, from a universe of total locations to a caller or requestor, based upon the caller's location or geographic preference. FIRST USE: 19870800. FIRST USE IN COMMERCE: 19870800")

Does TouchMap vs Touch-Map make any difference?
posted by schwa at 5:09 PM on October 31, 2008

IANAL (but I am a Law school graduate, not-yet-lawyer, who took a decent number of IP law classes in law school...)

Here's the problem you have: Trademark is often full of murky and open-to-interpretation issues. You might think that bodes well for you, but it absolutely does not. First off, you are using in commerce (you will not win on this point just because your product is free) a mark identical to one which is registered to someone else. That's an automatic strike against you. You're fighting an up-hill battle. Not that you can't win it, but...

The corporation that owns the registration, if it were so inclined, could drag you through a trial. Trials are expensive, for both parties, in terms of both time and money. If they want you to change your name badly enough, you will have to put up big bucks to avoid it... and even then there's no guarantee that the court would agree with you.

If I were in your shoes -- and this is not legal advice, something which you should certainly seek -- I would probably hold out until they started playing a little tougher with me. I'd politely decline. I might even pay a lawyer (the same one I would be consulting in this situation) to draft a "no, I don't think I will" letter. I would refuse to negotiate, but would not be antagonistic. The minute they actually filed suit, I'd fold. I would also, obviously, follow any advice from my lawyer (are you noticing a theme here?).

If you don't want to consult a lawyer, you should probably just go ahead and change the name to avoid any possible repercussions. But, really, if it means anything to you, go see a lawyer. Really.
posted by toomuchpete at 5:23 PM on October 31, 2008

if (cost_of_hiring_a_lawyer > trouble_to_change_the_name) then{
     changeName();
} else {
     hireLawyer();
}

posted by Ookseer at 5:24 PM on October 31, 2008 [6 favorites]

Would like to mark @ookseer's answer as most amusing - (even if his indent style sucks ;-)

So yeah pretty clear that even though I am giving the code away I am in fact "trading a product". Which is silly, but there we go. OpenSource is about helping the community and it is tough enough to name an OpenSource project as it is without having to avoid the trademark minefields too. Thanks to the folks (esp/ @box) pointing this part out.

Am taking the "go speak to a lawyer" advice to heart. I think that's my next step on Monday.
posted by schwa at 5:36 PM on October 31, 2008

IANAL, and it seems quite conceivable to me that a court would consider this trademark infringement with an argument like "Duhhh, they're both computer things! Same kind of product!" but I personally think that even if he doesn't have the legal high ground, schwa has the moral high ground with this argument:

Which really has NOTHING to do with mapping.

The word "map" does not appear anywhere in either their About Us page or their FAQ page except as part of the name. Stupid choice on their part to include "map" in their name if their product has nothing to do with mapping - of course it's going to end up getting confused with actual mapping products!

Also, maybe argue that your use of the term "touchmap" is international in scope whereas theirs was clearly intended to be U.S.-only: here's a product in the U.K. called the "Marconi Touchmap" and as indicated it was around in 1976.

And "touchmap" simply used as an English word: 1980, 2001, 2002, 2004...
posted by XMLicious at 5:43 PM on October 31, 2008

>>It seems a bit silly that someone owning a trademark can stop pretty much all usage of that trademark.
>Isn't that kind of the whole point of trademarks?

The "whole point" of the laws that prohibits the infringement of trademarks is not to stop all usage of a similar or identical name, but rather to stop usage which would be regarded as legally infringing.

I would suggest that the OP go to the Nolo trademark site for some self-help reference information, and then decide whether to consult a lawyer if he still wants to use the name.

An open-source guy, making little or no money, may determine as a matter of economic stratgery that it would not be worth the cost of the effort.
posted by yclipse at 5:43 PM on October 31, 2008

How about changing to iTouchMap?
posted by lee at 6:04 PM on October 31, 2008

@lee the i prefix is oh so 1999. ;-) Also: http://www.itouchmap.com/
posted by schwa at 6:05 PM on October 31, 2008

No, schwa, the trademark I linked to really is "Living Touchmap". Whether the registration is live or dead is indicated by "live" or "dead" in the Live/Dead indicator field not by a prefix in the Word Mark field.
posted by jedicus at 6:25 PM on October 31, 2008

@hades Isn't that kind of the whole point of trademarks? Isn't it in the name trademark? I am trading nothing (hence my shouts that TouchMap is not a product).

You're getting this wrong. Possibly you don't understand that services are covered in addition to products, or possibly you don't understand the breadth of the term "product." Or possibly you don't understand the breadth of coverage that the registrant is entitled to, based on their registration. In any event, none of this has been investigated so I don't understand these issues either.

If you don't want to change the name and avoid all this, then you really ought to get competent, focused advice. Seconding toomuchpete.
posted by JimN2TAW at 6:36 PM on October 31, 2008

@jedicus, Yeah realised that finally. The USPTO site is awful. But that isn't the mark in question.
posted by schwa at 6:36 PM on October 31, 2008

Ignore the letter. If they are really seripous, they will send more letters and start to escalate. When/as/if they do go to the next step, then respond with a legal letter that says, "No thank you." Then if they still continue to pursue it, change the name and move on.
posted by JohnnyGunn at 9:11 PM on October 31, 2008

The word "map" does not appear anywhere in either their About Us page or their FAQ page except as part of the name.

Weird. I wonder how Apple got a trademark for computer stuff... apples have nothing to do with computers.

</snark>

Okay, I tried to refrain from this earlier, but lots of people seem to have some really bizarre ideas about what a trademark is and is for. Here goes:

A trademark is a source identifier. Protecting a trademark is a way to protect producers and consumers by allowing you to link a brand to a producer. Obvious example: if it weren't for trademarks, you wouldn't have any way of knowing that the "coke" you bought at the store was made by Coca-Cola... it could be anyone making a product pretending to be coke.

It matters absolutely zero if your mark has anything to do with your product (not true, actually: the less like your product your mark is, the more likely it is to receive protection because it is more likely to be a unique and easy-to-remember source identifier - generic terms vs. descriptive terms vs. "arbitrary" terms).

The whole point is that the producer should be able to build up good will with consumers and leverage that good will. Consumers should be able to place their trust in brands (should they so choose) without worrying about imposters. Anything that might throw a wrench into those works is going to be restrained by trademark law.

I think this case is nearing the line, but it's close enough that it could be hell to litigate on both sides.

PS: This... "The 'whole point' of the laws that prohibits the infringement . . . is to . . . stop usage which would be regarded as legally infringing." is the most circular description ever.
posted by toomuchpete at 11:19 PM on October 31, 2008 [1 favorite]

It matters absolutely zero if your mark has anything to do with your product

No, but an important factor is the definition of what trade or market your trademark operates within. That's why there's both an Apple in the computing field and an Apple Records.

And it's also why neither of them would ever be able to successfully sue a company that sold apples for having the word "apple" in its company name. This is an equivalent situation, in my opinion; but as I said above, I wouldn't expect a court to agree with that opinion. (Because a court can't usually work with the same degree of familiarity I have with the software and computer industries.)
posted by XMLicious at 12:33 AM on November 1, 2008

"And it's also why neither of them would ever be able to successfully sue a company that sold apples for having the word 'apple' in its company name."

Not really. The reason Apple Computers can't sue people who sell the fruit for using the name is because there's nothing else to call an apple. If some company that sold apples started using the Apple Computers logo, you can bet there would be a law suit over it.

Also, keep in mind that the "how similar are the goods/services" is only a factor for infringement by likelihood of confusion. Trademark owners can also bring suit for infringement on the theory of dilution where the similarity of the goods/services matters even less. Even within likelihood of confusion, similarity is only one of six or seven factors and not at all dispositive. If the other factors were in the plaintiffs favor, they could (and probably would) win even if the goods/services were completely and totally different.

This is why seeing a lawyer about issues like this is so important... when it comes to law (and especially intellectual property law) the stuff that "everybody knows" is generally wrong.
posted by toomuchpete at 7:32 AM on November 1, 2008

Just to pile on and hope it's not a derail: The reason Apple Computers can't sue people who sell the fruit for using the name is because there's nothing else to call an apple. If some company that sold apples started using the Apple Computers logo, you can bet there would be a law suit over it.

Listen to toomuchpete. If someone began selling, say, clothing under an "Apple" trademark, you can bet that both Apple Computers and Apple Records would take interest.

First, it's possible (I haven't researched it) that both of those companies may already have clothing listed as one of the goods on their TM registrations: People wear distinctive clothing in both the computer and the music fields to show their allegiance to a specific brand. I would guess that both companies do distribute T-shirts from time to time.

And second, even if those marks weren't already registered for clothing, both companies would consider advancing a theory that the clothing field is a natural direction of expansion of the fields for which their marks are registered. Either way, they would not be laughed out of court.
posted by JimN2TAW at 2:27 PM on November 1, 2008

Someone suggested privately over email that I contact the Software Freedom Law Center.
posted by schwa at 9:12 AM on November 3, 2008