No, initially they tried to trademark "Deepki" in the US. It was not me blocking that, the USPTO itself decided to block the application on the grounds of "likelihood of confusion" to which Deepki could have appealed, but they did not. I assume it's so blatantly similar, that even the USPTO clerk decided to block it right from the start.
lovely said! I think that's the right way to see things. somewhat forces me to give up on the mark, because nobody and nothing really cares about that in a few weeks, if not even days. On the other side, among the good things that you share while you are on this planes is making sure we live in justice. And I can't stop thinking about this being injustice. I could be entirely wrong though.
That is what fascinates me the most. The basic assumptions of everything I presented was non-EU. Somewhat annoying, but seeing it objectively, I think it was a skill issue on my lawyers side. They should have said to me "Marc, look, we need hard proof. Ask your fucking users on twitter, on github, an discord, we need a list of X users confirming they are from the EU and use this thing". I believe in good-will on the EU side, that they interpret data in a positive way in my favor - but the exact opposite happened.
Following this logic, does this mean if I have a project name like ABC, and some company decided to incorporate in this name plus registering the trademark, I have to give up the name when they decide to come after me? Like I have a github.com/ABC, a npmjs.com/org/ABC. All just gone, because trademarks right gives them the right, and I have nothing that protects me?
If that is the case, ok. It's just that I was naive enough to believe I could protect my little open-source project from this using a trademark. The EUPIO somewhat confirmed in their writing that you don't need commercial activities, but you need "genuine use", which is, again, hard to prove if you don't collect user data.
Right, but I think this case is interesting for the developer community as it targets specifically open-source use-cases, where you usually have neither extensive user per-country data, nor would you usually care about tracking, or have commercial offerings. This essentially means that you either cannot protect your open-source project name or have always to keep in mind to collect user per-country data, otherwise you risk getting deleted.
So, you would spend several thousands of dollars to register a trademark to protect it from other corporations, and then the first thing you would do is give out the right to said corporation for 1000 bucks? I'm not an expert, but that sounds like a bad deal to me and substantially weakens the mark.
No, I started to rename the repo and moved it to my personal account, out of frustration mainly. Not sure yet what the new name is going to be, or if I can keep the old one.
I've written Apache Foundation, Software Freedom Conservancy, Free Software Foundation, and OpenSource Initiative, and asked for help. We will see. If OSS has no value to our law makers and the trademark needs to be deleted, that's fine and I accept the loss. But I'm an open-source contributor since over decade and not only love the spirit, but my whole career is based on it. The last thing I can do is to fight for justice, even if it means I need help from bigger firms/initiatives.
I wrote B corps an email highlighting the issue and asking if this actions align with their principles.
They seem to be very busy. It seems showing that your corporation accompanies positive social impact, fairness, and responsibility is in high demand.
> Thank you for reaching out and for you interest in the B Corp Movement! Despite our high ambition for an inclusive, equitable and regenerative economic system for all people and the planet; we are still a small team. So kindly allow us to come back to you within 2-3 weeks
> Due to a high level of inquiries recently, it may take us longer than usual to respond to your message. We will answer questions in the order received. Response times may be up to 2 weeks.
I decided to protect the name because I liked it and wanted to build upon it in the future. Be it OSS, or further commercial offerings.
I hoped to get also protection against corporations that just try to register the name or very similar ones and then decided to get me deleted or sue me for infringements.
In EU it's first to file principle, which means whoever holds the mark, has the right. This means if I would not have registered it, the company could just register "Deepkit" or "Deepki" and sue me to death. Now that I lost the trademark (not totally final, I can appeal), I risk getting sued for having a too similar name - which is exactly what I tried to avoid by having a registered trademark.
Did I make some mistakes with appealing and not collecting enough user data? Likely. Was it too naive from me? Yes.
But I think reasonable and the whole idea behind trademarks is to protect projects like this. I could be wrong though, am not an expert.
- They started as small firm in France, registered there the trademark Deepki, unrelated to software.
- I created Deepkit around 2018, trademarked in US and EU with software category.
- They raised substantial amount of money around 2022 $150M
- Board/Shareholders likely decided that the brand is important
- They tried to register the US brand under software category. The USPTO declined automatically because of "likelihood of confusion"
- They reached out to me wanting a "Consent and Coexistence Agreement", I told them not for free, to which they never responded with an offer.
- They tried to register in EU later, which I tried to block under the same "likelihood of confusion" ground.
- They started fighting with legal terms to get my brand deleted.
- They succeeded.
It's not necessarily only their fault that the trademark is gone now. As I just learned, the EU requires very strict rules of proving you have legit users. I couldn't convince them. Maybe due to skill issues, missing data, or technicalities. The biggest danger is now though that they can get me deleted from the internet entirely once the protection is gone. It requires just one corporation to decide to start come after you with a cancellation process, and you are done.