Not in my book. They asked him if he would rename his package, he replied sorry but I’m building a project with this name, and they replied that they were going to send lawyers to do takedowns if he would release his project. This would also rub me the wrong way. Also, the dev was already working on the package before the kik company ever came to NPM. Why would he have to give up on the name for his project?
For United States trademarks, not necessarily. You don’t have to enforce the trademark to keep it; you just have to renew it on time.
The problem with not enforcing the trademark is that it opens the term up to genericization (for example, referring to all types of tissues as Kleenex). Genericization will cause a company to lose the trademark.
I don’t think kik was worried about that. It’s more likely they were bullying the guy into giving up the package name.
I’m not sure you are right. There seem to be an awful lot of lawyers phrasing it less clearly.
Trademarks require constant vigilance. The moment you let your guard down, there’s a chance that someone else might swoop in and use your trademark without permission. This unauthorized usage could lead to confusion among customers and weaken the association between the trademark and the company it represents. Therefore, defending your trademark should be a top priority.
It’s been a few years since I dug through trademark law trying to find an answer to this question, but from my understanding, as long as the trademark isn’t abandoned, doesn’t become genericized, and is renewed, it doesn’t have to be strictly enforced through litigation.
You only really need to enforce your trademark when there’s a chance of it causing confusion about whether goods produced by some other party are actually produced by the trademark holder (which is the scenario your quote is talking about). Take “Apple,” for example. I can’t sell any software or electronics with the name “Apple” on it without infringing on Apple, Inc.'s trademark, but I can sell “Farmer Tim’s Golden Delicious Apples” without issue. If Apple tried to enforce their trademark on a box of apples, they wouldn’t be successful. If they tried to enforce their trademark on Tim Apple’s iJuicer Pro, they probably would succeed.
Anyway, I think a lot of the confusion about this comes from trademark law being oversimplified into the phrase “use it or lose it.” That’s strictly true when it comes to actually using the trademark, but it’s not actually a requirement to liberally enforce it.
That might be true regardless of copyright law :)
A sad truth. You don’t need to win when you can bury your opposition in legal costs (or threats of).
I’m sure it violates other professional conduct rules, but at the very least, intentionally misleading a client or omitting information would likely be considered a lack of competence.
A lawyer shall provide competent representation to a client. Competent representation requires the legal knowledge, skill, thoroughness and preparation reasonably necessary for the representation.
Thanks for your reply. I’m inclined to believe you, as it seems more likely that this was a case of corporate bullshit and not a case of “alas, our hands are tied”.
The dev could claim something like “prior art”, or whatever the alternative is for software. Suppose I trademark the name “is-odd” for a company, should NPM now hand me the “is-odd” package name? This would surely break the internet in the same way is an this case.
But see, that’s the thing. Trademark isn’t formally granted or applied for. It has to be for an established thing that has common name recognition like kleenex or band-aid. The purpose behind this is to give legal recourse for someone to defend their brand. In order to trademark ‘is-odd’, you would have to be able to show that people (society in your country really) use is-odd to refer to a class of thing you do/make/own. You could argue that Twitter as a trademark still belongs to the ass who runs the company (by extension) because everyone insists on calling it Twitter. The expression of Twitter now has no bearing on where the trademark lies, if it exists in the first place. That would be copyright.
Now, I agree that the system is dumb, but npm should also have infrastructure in place to enable renaming so that if a case comes about where a package is renamed, that doesn’t break the internet.
Like NPM said, I’d expect a package named kbin to be about kbin.social, not e.g. some random recycling app. The company wants to open source their stuff. That’s great! And then, kik a bit selfishly doesn’t want some package with only 1 star and 3 watches to confuse the 5 people who would want to look at the source code. NPM doesn’t conflate versions between different packages formerly published under the same name, so virtually no harm done to existing users. People who want Kik’s code would get to find Kik, and people would still be able to use the renamed project. I don’t see a reason for the dev to hold on to their Kik name when it would do a slight bit of harm.
Though, maybe that’s not how it turned out. NPM later took over Kik’s package again as a security holding to this day, and whatever you think, it’s not a good reaction to unpublish all your popular packages, causing massive code breakage around the world and Facebook going up in flames, prompting the world to reevaluate dependency chains and the world’s dependency on JavaScript- that sounds kinda nice, actually, so maybe I’m glad this happened.
I get that, but suppose you start a package on NPM named “bronk”. Sometime later someone starts a company with that name. Should you just be forced to give up your package name, just because people suddenly associate the name with the company?
Not in my book. They asked him if he would rename his package, he replied sorry but I’m building a project with this name, and they replied that they were going to send lawyers to do takedowns if he would release his project. This would also rub me the wrong way. Also, the dev was already working on the package before the kik company ever came to NPM. Why would he have to give up on the name for his project?
Because not enforcing a trademark means potentially losing the trademark. Not saying that makes it right, IMHO the system just sucks.
For United States trademarks, not necessarily. You don’t have to enforce the trademark to keep it; you just have to renew it on time.
The problem with not enforcing the trademark is that it opens the term up to genericization (for example, referring to all types of tissues as Kleenex). Genericization will cause a company to lose the trademark.
I don’t think kik was worried about that. It’s more likely they were bullying the guy into giving up the package name.
I’m not sure you are right. There seem to be an awful lot of lawyers phrasing it less clearly.
Source
This might be done on purpose of course to attract clients.
That might be true regardless of copyright law :)
It’s been a few years since I dug through trademark law trying to find an answer to this question, but from my understanding, as long as the trademark isn’t abandoned, doesn’t become genericized, and is renewed, it doesn’t have to be strictly enforced through litigation.
You only really need to enforce your trademark when there’s a chance of it causing confusion about whether goods produced by some other party are actually produced by the trademark holder (which is the scenario your quote is talking about). Take “Apple,” for example. I can’t sell any software or electronics with the name “Apple” on it without infringing on Apple, Inc.'s trademark, but I can sell “Farmer Tim’s Golden Delicious Apples” without issue. If Apple tried to enforce their trademark on a box of apples, they wouldn’t be successful. If they tried to enforce their trademark on Tim Apple’s iJuicer Pro, they probably would succeed.
Anyway, I think a lot of the confusion about this comes from trademark law being oversimplified into the phrase “use it or lose it.” That’s strictly true when it comes to actually using the trademark, but it’s not actually a requirement to liberally enforce it.
A sad truth. You don’t need to win when you can bury your opposition in legal costs (or threats of).
I just had a thought: is it legal for lawyers to say half-truths to get clients to use them more and thus earn more money?
That’s how you get disbarred for misconduct.
I’m sure it violates other professional conduct rules, but at the very least, intentionally misleading a client or omitting information would likely be considered a lack of competence.
Thanks for your reply. I’m inclined to believe you, as it seems more likely that this was a case of corporate bullshit and not a case of “alas, our hands are tied”.
The dev could claim something like “prior art”, or whatever the alternative is for software. Suppose I trademark the name “is-odd” for a company, should NPM now hand me the “is-odd” package name? This would surely break the internet in the same way is an this case.
But see, that’s the thing. Trademark isn’t formally granted or applied for. It has to be for an established thing that has common name recognition like kleenex or band-aid. The purpose behind this is to give legal recourse for someone to defend their brand. In order to trademark ‘is-odd’, you would have to be able to show that people (society in your country really) use is-odd to refer to a class of thing you do/make/own. You could argue that Twitter as a trademark still belongs to the ass who runs the company (by extension) because everyone insists on calling it Twitter. The expression of Twitter now has no bearing on where the trademark lies, if it exists in the first place. That would be copyright.
Now, I agree that the system is dumb, but npm should also have infrastructure in place to enable renaming so that if a case comes about where a package is renamed, that doesn’t break the internet.
Like NPM said, I’d expect a package named kbin to be about kbin.social, not e.g. some random recycling app. The company wants to open source their stuff. That’s great! And then, kik a bit selfishly doesn’t want some package with only 1 star and 3 watches to confuse the 5 people who would want to look at the source code. NPM doesn’t conflate versions between different packages formerly published under the same name, so virtually no harm done to existing users. People who want Kik’s code would get to find Kik, and people would still be able to use the renamed project. I don’t see a reason for the dev to hold on to their Kik name when it would do a slight bit of harm.
Though, maybe that’s not how it turned out. NPM later took over Kik’s package again as a security holding to this day, and whatever you think, it’s not a good reaction to unpublish all your popular packages, causing massive code breakage around the world and Facebook going up in flames, prompting the world to reevaluate dependency chains and the world’s dependency on JavaScript- that sounds kinda nice, actually, so maybe I’m glad this happened.
(also, he already released it)
I get that, but suppose you start a package on NPM named “bronk”. Sometime later someone starts a company with that name. Should you just be forced to give up your package name, just because people suddenly associate the name with the company?
Azer’s repository for his package was made five years after Kik Messenger was released.