How To Resolve A Trademark Issue Politely & Without Legal Threats
from the how-it's-done dept
Another trademark dispute, another horrible and negative story where the mark owner acts like a jackass, right? I mean, the trend is clear, from 60's rock legends suing over penis-apps, to game producers suing over terms nearly a century old, you get the idea that everyone with a trademark is Oscar the Grouch. They just can't help but call in their big shot lawyers, who immediately send out the cease and desist notices, even though they'd rather mail out one of those Harry Potter howler letters or possibly a small nuclear weapon. It's inevitable.Or, then again, perhaps it isn't. Nick writes in with the tale of an absolutely brilliant response to a trademark dispute from the mark holder, who not only left the lawyers at home and replaced them with a polite letter, but was so over the top kind about the whole thing as to suggest other words for the violator's product, turning him into a potential customer.
Early in December here at Wordnik we got a nice email from one of our loyal users, letting us know that there was a word game in the app store using the name “Wordnik.” It didn’t have our heart logo (or even our “gearheart” ) so our correspondent wasn’t sure it was ours … and it wasn’t. So we took a look at the game, and it was called Wordnik. And there was contact info for the developer.This is typically where we'd see a hateful C&D notice sent, filled with accusations of theft, reports of untold gazillions in very real harm done by the violation, and the promise that if the violation doesn't cease the lawyers will swing by soon to eat the faces off of their children.
Pictured: Trademark lawyer
Image source: CC BY-SA 2.0
For some strange reason, however, the Wordnik folks decided that there just might be a better way to go than all out war. While acknowledging that their initial reaction was to be somewhat upset over the use of their mark, they instead chose to send the following email (edited only for formatting):
One of the users of our website, Wordnik.com, pointed out to us that your iOS app is also using the name “Wordnik”. You may not be aware that we have applied for a US trademark for the name “Wordnik” and our application has been approved for registration. Since the Wordnik API powers many word games on the web and on mobile devices, our trademark filing for the name “Wordnik” also includes its use in combination with computer games.
I’d rather not drag our lawyers into this (expensive for both of us) — but given our trademark status, you probably want to consider renaming your app (and maybe even using our API, check it out at developer.wordnik.com). How about:
WordifyThe response was everything they had hoped for. Not only did the other developer respond promptly, promising to change the name of his app and acknowledging that he hadn't realized his error, but the two sides continued to communicate about several topics, including background on the suggestions the Wordnik folks had made and Wordnik's own API and how it could be used to enhance the previously offending app. Not only was this a kind way to handle a trademark request, but it turned out to be an advertisement for the Wordnik product itself. Then, because apparently Wordnik is trying to win some kind of peace award here, they sent the guy a Wordnik T-shirt. The offending app has since changed its name to Wordogram and all is well.
Wordista
Wordian
Wordeur
This list of English suffixes may help, too: http://en.wiktionary.org/wiki/Category:English_suffixes
I hope to hear back from you by Dec 31, 2012.
Wordnik notes that this approach may not work universally, but why shouldn't it be the first attempt in most instances? They say it best themselves:
From our point of view, this was the best possible outcome. We defended our trademark; we met a cool, kindred-spirit developer and had a fun conversation; and we found a new word game to play (and possibly gained another API client). And it’s likely none of this would have happened if we’d sent a pissy email, guns blazing.Let's hear it for kindness and sanity.
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Copyright, trademark, patents are not meant to be used as extortion tools as they are being used today. They are meant specifically for the cases where there's both wrongdoing (as in on purpose) AND refusal to cooperate. Obviously wrongdoing is up to subjectivity but in any case it is the way to go. Kudos for the company and hopefully others will follow the example.
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But what about the unemployed lawyers?
The entire economy may crash. The housing industry won't build multimillion dollar houses. Luxury car dealers may go out of business. The consequences could end our entire civilization.
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Re: But what about the unemployed lawyers?
How dare these people deprive so many people of they hard-earned income. They should be fined heavily, and a general levy should be raised to compensate for all the losses when issues are resolved without involving lawyers.
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Blah blah blah
/s
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Russians because of the level of corruption there use extensively dash cams in their cars, to avoid not only corrupt law enforcement but others trying to make a buck dishonestly.
What we do need is the equivalent of a dash-cam for IP laws, where people can see who that person making the claims are.
IPSearchLight could be a name for such system.
Collect and record all the data from any case, relevant or not at the moment and start compiling a database and upload it to somewhere.
So when people get in trouble they can see if the guy doing it has done it before, how many times he won and how many times he lost, what made him win and what made him lose.
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None of these make me feel fuzzy on the inside, feel good stories.
This post actually made me smile, instead of slowly killing more of my hope and sanity.
For shame.
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Re:
It's times like these that I navigate to the Techdirt search bar at the top of the page and simply type "Lily Allen". I suggest you do the same....
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Obviously, not every case is going to get the same outcome, especially in cases where the offending party actually is deliberately trying to leech off the trademark or deceive customers. But, why not try a free bit of polite communication before firing off the lawyers? Even an innocent person will get defensive at that kind of attitude and make them less willing to work with you.
Seems obvious, but I suppose if you're in the mindset of "us vs. them" and assume that lawyers are needed to stop someone "stealing" whenever you see a potential violation, then things might look different. One reason why trademark and copyright discussions need to be talked about in this way rather than the distortions and FUD so beloved in typical discussions.
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It appears the “Wordnik” folks have someone like Dalton (Patrick Swayze) from the movie "Roadhouse", to deal with problems in a calm and rational manner such as this.
Roadhouse - Be Nice
Perhaps all legal departments should be required to have qualified legal "coolers" in place to keep everything from turning into a screaming match. Even if a company wins legally, they usually end up losing respect and loyalty from their present and future customers, who in turn will take their money elsewhere.
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Nigel
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As a bonus, in case the other party is an asshole you are now justified in pulling out the big guns. Win-win for you.
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Who will think of the lawyers ?
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Flabbergasted!
I think as consumers we would be adrift in a sea of ambivalance, unable to choose one product over another without weight the level of repugnacy offered by the manufacturers of those products. If everyone starts being nice, how will I know where to shop?!?!?!
xoxo,
Walmart
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I'm the Wordogram guy
As a self-funded developer, I can't help but to take this opportunity for some shameless self promotion. Forgive me. If you're inclined to check out the free iOS game in question, I would be grateful if you downloaded it. Here's the short link: http://tinyurl.com/wordogram
I also have a new iPhone game called 4 Clues 1 Word, just released today that I would be very thankful if folks downloaded: http://tinyurl.com/4clues1word
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