A $160M-funded company named Deepki (Trademark 1751952) came along and filed for cancellation at EUIPO since they needed the trademark now after getting lots of funding. They won. Now my trademark is gone.
The frustrating part? The EU actually does allow open-source (even free projects) to have trademarks, but you have to prove "genuine use" in the EU for the goods/services your trademark covers. Which seems to force you in collecting user sensitive data otherwise you are entirely unable to prove that you have actual users in the EU. I generally try to collect as little information as possible (also because I don't care where my users are coming from). I had google analytics running for some time on the main page (not documentation), but most of the time it didn't work and it seems most of my users block it anyway.
Here's what I gave the EUIPO and why they said no:
- Google Analytics for my site with a full country breakdown from 2018–2023. A few hundred to ~1,800 EU visitors per year per country. They said that’s "too small" to count as real commercial exploitation for my Class 9 software. Also, they said they couldn’t tell which goods those visits were actually for.
- npmjs + GitHub stats - hundreds of thousands of downloads and thousands of stars. Rejected because there's no location data, so they couldn't confirm if the usage was in the EU. In some cases, they said the timeframes weren't even clear.
- They basically kept repeating that they couldn't clearly link any of the usage to the specific goods/services my trademark was registered for.
The conclusion:
>Conclusion: It follows from the above that the EUTM proprietor has not proven genuine use of the contested mark for any of the goods and services for which it is registered. As a result, the application for revocation is wholly successful and the contested European Union trade mark must be revoked in its entirety. According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 18/03/2024.
>COSTS: According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear fees and costs incurred by the other party.
They even admitted there's no strict minimum for usage, and free software can count, but in their eyes my EU traffic was too low and not clearly tied to the trademarked goods.
I also have the US trademark for the name. This same company tried to register in the US around 2022 (Trademark #79379273) and got blocked because it was too similar (decision made by USPTO). But a few months ago they somehow got it registered there too (Trademark #7789522), not sure how they did that now.
Now I'm sitting here wondering:
- Is it even worth getting a second opinion and appealing in the EU? I mean the project is very small.
- Should I fight the US registration?
- Or should I just walk away from trademarks altogether for my open-source projects. I lost so much money because of this already.
- And for OSS projects in general, is there even a practical, privacy-friendly way to prove EU usage without generating revenue?
- Is it even worth holding the trademark if proving EU usage is this brittle for OSS? If the trademark can be deleted just like that even after spending a few thousands dollars on lawyers. Probably a skill issue, but still, damn.
It sucks to lose the name I've been building for years to a corporation with $160M behind them, especially when this is just a side project I do in my spare time, and to them I'm a nobody. If nothing else, maybe my case can be a cautionary tale for other OSS maintainers.
>Deepki holds the label BCorp certification, thereby strengthening its commitment towards its communities and stakeholders.
https://www.bcorporation.net/en-us/standards/complaints/
>B Lab will investigate material, credible, and specific claims against a current B Corp in one of the two following categories:
> 2. Breaches of the B Corp Community's core values as expressed in our Declaration of Interdependence.
https://www.bcorporation.net/en-us/certification/
>B CORP DECLARATION OF INTERDEPENDENCE
>As Certified B Corporations and leaders of this emerging economy, we believe:
> That we must be the change we seek in the world.
> That all business ought to be conducted as if people and place mattered.
> That, through their products, practices, and profits, businesses should aspire to do no harm and benefit all.
> To do so requires that we act with the understanding that we are each dependent upon another and thus responsible for each other and future generations.
If it's worth it. OP needs to decide.
I worked at one. The BCorp label seemed to do a lot of good in establishing organisational culture and attracting people who were a good fit. The organisation did (and still does) a lot of good.
Nonprofits and public benefit corporations at least have some "teeth" to them: they both allow you (in different ways) to do things that aren't directly in the interest of your fiduciary duties, and that single-minded money chasing is what incentives a lot of "bad" corporate behavior.
But what I see here in France is mostly young companies getting certified as a proof of them being built better than the big ones that they are competing with
For instance, most of the new IT consultancoies are B Corp certified and promote it a lot, even though they work for the same customers as the big old ones
So now there are companies that are getting rid of their B Corp cert because they say it lost its meaning and being BCC is getting more and more a sign of being a bad company doing virtue signaling
Overall I think that business certifications can't work above a certain scale, because then they become just a hoop that needs to be addressed and not an actual engagement leading every business decisions.
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.
Life is too short for lawsuits.
This comes from someone who dated someone for three years who was in a lawsuit when I got to know them, and was still in a lawsuit when we split. It affected them daily, hundreds and hundreds of hours were lost, thousands and thousands of dollars went to a nice, well-intended family lawyer.
But the best advice they could have got:
When given the chance, walk away.
Life is too short for lawsuits.
If you’re up against a behemoth, figure out how to get out ASAP.
But I’ve learned that small claims lawsuits can actually be quite fun! Earlier this year I sued a former landlord in small claims court. He had entered my rented space while I was away (without notice, multiple times) and then refused to return my security deposit when I moved out.
I went into it with a “let’s have fun and learn” attitude. I had never sued someone and I’d never represented myself in court. I read a lot, had some good conversations with LLMs (and then fact-checked them!) about the laws and case history in my area, then filed my suit.
After he dodged the summons three times, I discovered I could file a motion for alternative service (post on his front door, post in a newspaper, etc). When I went to court to argue for that motion, he actually showed up in court! So I asked the judge if he could be served right there, and he was!
Our trial was highly entertaining, I caught him in a bald-faced lie, then looked at the judge and said I’m not sure how both of these things he said could be true, I can’t figure out how it adds up but maybe you can.
I won the case, the judge awarded me less than I was asking for, but more than I was actually owed.
I was kinda hoping he would not pay (that’s common) in which case I was looking forward to learning about how to garnish his wages or put a lien on his property. But he’s actually paying me in monthly installments for the next very many months. He could pay me all at once so he’s being a bit of a jerk, but at least he’s paying.
All-in-all, I knew I had a solid case, had fun along the way, and didn’t spend more than a few bucks on court fees. In that specific context, it made sense for me and I’m happy I did it.
I’ll admit enjoying my newfound knowledge. I’m not actively looking to be litigious, but it’s great to know I’m ready if it comes to that again.
On a more practical note, the whole process was lengthy, but very clear and fair. We have a justice system, someone committed fraud against me, so I turned the cranks on the machine and got some justice. fwiw, I was also mentally prepared to lose, and learn what I did wrong if that happened. Not being too emotionally attached to a legal situation is a very good policy.
Nice job anyway, and an interesting read. Let's hope he'll be more honest hereafter (although I doubt it)
I paid with my time. If I was sour about it, I might say “that’s time I’ll never get back”, but I consider it a wonderful learning experience and time well spent.
> So I made my landlord pay me rent, with the help of some LLMs....
It took 4 years of legal process before he saw a penny as the other party tried to wriggle out of everything... even so far as fake lawyers and wrongly claiming to have moved out (which the judge did not look to kindly upon).
Recently he received a cheque for the remaining balance - 8yrs after he sent his first letter by registered post which is the first step in a small claims court.
There was a case before mine, an elderly couple swindled by a landscaper who took a bunch of money, did a tiny bit of crappy work, then disappeared.
Landscaper didn’t show up at trial and they won a default judgement; but good luck collecting from a ghost.
If he has assets to his name and the action was against him, I don’t see him doing that. In most countries you can hire private recovery, so the process will be very fast to collect.
I'm happy it worked out for you, and that you had fun doing it. I could imagine going your route.
But for most people, sifting through legal papers and preparing for court is neither enjoyable nor affordable.
I don't know if I agree that that is correct every single time, but it strikes me as a very useful heuristic at the least.
Danny DeVito
My wife is a lawyer so I collect amusing statements about them ;-)
Even seemingly simple issues can turn into never ending money pits that consume thousands of hours of your life spread over months or years.
If you’re really committed to something then you should evaluate how much time and money you’re willing to put into pursuing it. Unless both of those values are uncomfortably high numbers, just move on.
I think I have uploaded a hackernews post about the documentary about patent trolls but it of course didn't get any traction but its still worth a watch.
https://www.youtube.com/watch?v=c4NIFzG8NcU
We're already all dead in geologic time. Make the biggest ripples in the pond.
Attachment is discontent.
Peace is a perfectly valid option for people to pick. If they can master it, they can weather any depredation the world throws at them. Which may be many if society continues to slip slide into fascism.
However I believe most good things in the world came at the behest of violence - again not necessarily physical, but at minimum people sacrificing personal peace. Woman's suffrage, black suffrage in America, the civil rights act, LGBT rights in the UK, the overthrow of the kmt military dictatorship in Taiwan. Endless examples.
I'm still thinking about this all the time, I wrote about it a while back: https://blog.calebjay.com/posts/accept-or-reject/
Absolutely. I would further assert that path of least resistance is very often not the right one. The art, as I think you imply, is in "knowing" when to pick up a fight and persist, vs. when not.
I think you're right on this, and if I implied it I think it's because that's where my thoughts have been heading without me realizing it.
When I wrote that blog post I was still in a mindset of "expend maximum effort at all costs." A new review strategy of my day to day and month to month life made me realize that this way of doing things wasn't making me more effective, just leading to peaks and troughs.
I've recently accepted that energy is a finite resource that needs to be recharged. Practically, that meant I needed to figure out what costs my energy and what renews it, and as I plan my days and weeks, schedule around this paradigm.
I think my activism is one of those things that's trickier because it energizes to an extent because it actualizes my values, but also it's tremendously energy draining because it takes time and huge amounts of willpower to do any given action - like overcoming my poor local language ability and nervousness to confront an illegally parked car blocking pedestrians.
So that's another aspect of this peace vs violence dynamic you've got me thinking about in a new light - yes, you need to choose your battles, if nothing else temporaly so you can put the battle at a time you'll have the energy to deal with it.
Maybe. For me at least, the art is in what you choose to value in different contexts, rather than in absolute terms. Thinking about this specific case, I might value my own peace of mind, money, and time much more highly than justice or retribution.
Other times, something we value is taken from us and living in the past, spending our days wishing for it, etc. can prevent us from "moving on". It can become an anchor or baggage.
For my part, I feel that there's value in critically examining parts of your life and deciding what really matters. If something matters, fight for it. If it turns out something didn't, or it doesn't any more, let it go so you can make room in your life for more important things.
Maybe, just maybe, it's time for the greedy rich to let go.
- Dune, the gom jabbar's test for humanity
Julian Bashir: "It's not your fault things are the way they are."
Lee: "Everybody tells themselves that. And nothing ever changes."
To ignore something means choosing not to notice, acknowledge, or respond to it — even though you’re aware it exists.
This whole thread is a question for a lawyer.
But for real...just change the name of your project. It sucks, but the ruling was handed down, you lost the dispute.
Nobody's going to mind that the name changed. Firefox used to be called Firebird and changed due to trademark disputes. Dozens of open source projects have changed their names when they forked off of a corporate project, like LibreOffice and MariaDB.
I know that OP may be fond of the name but it's just a name.
It was first called Phoenix, then a trademark dispute forced them to rebrand to Firebird, then a trademark dispute forced them off that name too. Firefox was the third public name for that project. I'm surprised they didn't also get sued by Clint Eastwood[1] and have to change again.
[1] https://en.wikipedia.org/wiki/Firefox_(film)
I think we're just trying to keep busy on this lonely planet amist all these stars.
At the end, the only thing that ever matters is the good we tried to do and the love we shared between ourselves and strangers.
But even this doesn't matter. If all goes to dust, even the good we do or the love we share. If we do evil, or if we hate the strangers, it makes no difference. We might as well do that if it satisfies us.
You may get more attention this way, because it can affect the company more than the optics of a legal dispute. It’s not revenge, and you shouldn’t have that intent, if you want it to work.
However this method, and other similar methods used in the U.S. such as filing BBB complaints, are mostly used for harm done to consumers rather than businesses affected by disputes, so it may not be the best advice.
Sounds like it was maybe about custody for children?
Then it is hard to walk away, I think. What to do, if the other party does not cooperate and you still want to see your children?
Best advice for both sides still is obviously, avoid the need for lawyers in the first place and maintain basic level of communication.
Besides money and hours, it will also affect your psychological wellbeing as it will dominate your mind every day.
Not worth it.
We met her ex once randomly on the street, and the first thing he asked was if she was still in her lawsuit.
Since the other part in the lawsuit lived in another part of the same house, you became paranoid about whether they would hear what you said through the walls, and you would be made painfully aware of the conflict every morning on the way to work.
It felt like a curse.
I would never wish for anyone to end up in a lawsuit.
And then the loser may request a next level court to consider the case, potentially leading to more stressful years and a lot of additional financial risk.
https://www.youtube.com/watch?v=Y5XfYTgm4x8 (that’s only part of a longer scene, where he basically tells the guy not to proceed).
This is the best advice you can get.
See if you can "shop" around (start local) to see who's interested in publishing a story something along the lines of "The EU has declared war on small businesses. I'm being forced to pay thousands of euros because a brand-new company decided they wanted to steal my years-old project name."
Bad publicity is still publicity.
More generally: don't treat the lack of registered mark as something you need to act on. You were doing your thing just fine without a registered trademark in the other ~180 countries. Just keep doing what you're doing.
Fighting it will be painful, expensive, stressful and unrewarding. But that doesn't mean you need to go change your name.
Tbh...use should already be satisfied by having a Github or website and using the registered name.
Keep us posted.
A lot of posts on HN are about things that should have happened already. Every few days there is a story about a person doing something pretty boring and standard, but they can't because a payment processor or large regulatory body got involved and the computer went "boop boop" and now someone can't have money or continue to invent things. Sorry, pull the slot machine again and see if you get lucky?
are they actually pursuing use of "Deepkit" or possibly did you just piss them off? Either way, I wouldn't expect to win anything going up these majors. Also, isn't clear there's any tangible benefit even if you were to win appeal.
It's a bit disturbing that that doesn't appear to be true any more.
I don't know why you decided to trademark your project name, but I think the biggest issue here is that trademark law is naturally the domain of IP rightsholders and an outlook that presumes and enforces scarcity when it comes to names, name spaces, and digital content.
There aren't that many reasons why FLOSS projects need to work within that same domain. My thought is that it is better to try and defend the environment of a digital commons that exists outside of them, than to enter into it and try to participate in a quite alien system of existing IP law, which has a lot of presumptions and standards that, as you say, don't really match the world you work within.
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.
Judge for yourself
https://scr.wfcdn.de/6759/Apple-vs.-Apfelkind-1319197155-0-0...
Or .. maybe you could sell it to them or use it as a lever to get the EU one.
https://deno.com/blog?tag=freejavascript
You will be asked to prove you have marks to do things like be listed in the app store. You need to prove your identity with third party legal companies that look into your company and the marks you are using. If you don't own those marks you probably won't get your app published.
Many examples come to mind, but basically anytime a FOSS app goes into the app stores, like KDE. In the past we mostly argued about who should be the person that has to act as the app owner etc. or created foundations or other legal entities to bridge this gap.
Look at elementaryOS as well. They attempted to assert rights to marks they don't own and it created a fiasco for them. They are virtually irrelevant now in the Linux space. All of the developers left the project besides one who is struggling with mental illness.
tldr; Burger King had to rebrand when they expanded into Australia because there was already a Burger King restaurant here. They're still called Hungry Jacks here.
I think that it might be a good idea to flagpole an OSS trademark just in case some bozos come and spoil the fun
https://deno.com/blog/deno-v-oracle3
On a different note, a quick cursory glance of this company really makes me wonder who even gave them $160M? The company site is soulless and filled with corporate jargon, and the whole company smells of bloat and leadership team is a long list of people in bullshit jobs. Is this where VC money goes these days? I am dumbfounded by the degree of mismatch between capital and utility
Another notable investor is a french public entity (bpifrance) which might very well have similar reasons but on the country level, having to allocate funds to "AI" to demonstrate France leading role in future technology.
Note that this doesn't mean Deepski and it's leadership can't be great - but the thought experiment of some well networked people noticing they could all benefit over a glass of wine also doesn't seem too far off.
Edit: Maybe there's an angle for someone really serious about this FOSS dilemma here, I hear public entities really hate bad PR - maybe ask bpifrance how they feel about this?
That's often a sign of money laundering
I'm sure it wouldn't work in a real court, but it sounds funny in my head.
> legitimate interests pursued by the controller or by a third party…
There are six lawful bases for processing, consent is only one of them.
Selecting a name that is offensive or unsuitable in some language you don't care about will usually do face no challenge because bigger corporations use consultants who check those things.
Rumpa, or Billen would be a good name.
I built a $10m revenue company, when we were very small I filed for a trademark in the US during the first year of operation and got rejected (but still on the supplemental registry, which doesn’t do much at all)
Another company applied and had the exact same mark accepted, but in a different industry so not competitive with us.
Honestly it has never been an issue. We have resources now to reapply and pursue the official trademark, but I just see no reason to do so.
IIRC EU trademarks operate on a first come (first applied) priority, so the mark gets granted to whoever applies first. That’s unlike the US where the mark is supposed to be granted to whoever was using the mark first, no matter when the application date is.
TLDR: I’ve spoken to multiple trademark attorneys, have applied for multiple marks, and honestly just don’t see the value in spending time or energy on it for an established company, let alone a side project.
For a non-established company, no point. I struggle to see the point for an OSS side project, too, unless there are plans to turn it into a paid product at some point in the future.
I wrote a story about how this plays out, 10 years ago, still relevant: https://startupnews.com.au/news/the-buildkite-story/
Made millions in revenue just launching and definitely would have missed the window doing IP stuff
What I can say... is that I love what you've been doing on your Deepkit, and I was horrified to hear that this was happening to you.
Seriously, I've only lurked in the community so far, but it's possibly the most forward-thinking foundational library in the web space that I've seen.
Strong typing with annotations that can simultaneously influence runtime ORM and frontend generation, while being fully compliant Typescript? A hand-rolled lightning-fast Typescript compiler that emits the runtime reflection capabilities? Full-fledged DI as an inherent part of the design, not an afterthought?
It's such an incredible blend of beautiful tooling with pragmatic applications.
For anyone curious about this, https://web.archive.org/web/20230916074647/https://deepkit.i... is a fascinating read.
https://github.com/microsoft/TypeScript/issues/47658#issueco... provides context on why some of TypeScript's design goals around erasure hold it back from these features. My vision of the web is that it would be an even more vibrant and innovative place if TypeScript were to cast off those restrictions.
DeepKit actually solving this by implementing its own compiler, bytecode, and interpreter... it's truly incredible.
Marc, know that there are people out there who love your work, and who will continue to follow it avidly regardless of the name. You're doing amazing things.
None of the 'normal' eventualities are all that scary or bad.
If a trademark holder asks you to change your name, just change your name - your users don't care as much as you. If done well, you can milk a name change into getting more attention to your project.
If it's a name you've used longer than them and are really attached to, you could gamble and just keep using it - all a trademark does is let them recover costs IFF they can prove your claim of use it is false and harmful by being in the same category.
Lawsuits really aren't the fun kind of thing a 150m dollar company wants to get entangled in, especially held in unfamiliar foreign courts they might lose - unless maybe you go around attacking their trademark.
Given that, could you not write a script that simply pulls that for every user that's starred your project in the EU, and provide that as evidence?
If you had 2 people documented as being in the EU who had purchased software licenses for 'Deepkit' for $10 is that enough? If not, why? Why is being big[1] justification for outright stealing a trademark from someone little? It's gross, is what it is. I'd rather eliminate the whole trademark construct than have it just automatically side with the largest party in any contested case.
[1] also, they may only be 'big' in terms of bank account balance, since they're some startup -- they may not have any EU customers yet themselves. Did they prove they did?
What I do think is important is to not disappear or go quietly when these companies attempt these things. I will probably get a lot of flack for it, but an example would be Google with the Go programming language. There was an existing language already developed and being used under that name. Google wanted to call it Go for "bigger" reasons and so they did.
Who is supposed to "fight" that?
In my opinion it's the maintainers of distros and maintainers of repositories. If they want to call their thing "foo" and there is already a "foo" in the repository, that sucks, kick rocks or call yours "foo-company-thing" since you're the one creating issues. You can likewise take the responsibility of explaining to your users why "foo-company-thing" is the name in all of the Internet as a whole. We didn't create those problems and I don't want to spend any of my time "solving" them for free.
It is exceptionally easy to tell someone else to spend time and money for a cause you philosophically agree with.
What will you, specifically, do to help this person in this case?
It's advice I have followed myself and with expense.
> What will you, specifically, do to help this person in this case?
In this case I would be willing to help the NPM listings stay under his control and all of the other places he is already using the name "deepkit". I would help him expand that footprint if needed. I would help amplify his voice by publishing a blog entry. I don't have a large blog, but adding your voice has value. Right now this company sees this as X risk and Y cost and those numbers are low. If they have an invalid trademark ruling they may be able to force the issue eventually in some places, but don't make it easy for them.
If a prison analogy is needed, it's not what you see in the movies. Nobody shows up to prison and does the whole "fight the biggest guy" because they want to look tough etc. In the real world that gets you stabbed in your sleep. What happens instead is bullies who can and will win the fight in the long run are deterred by having to do the work and move to the weakest targets.
I don't know how much work the adversarial company has budgeted, what they think X or Y are, etc. What I think is important is to raise the cost, which is measured in many ways besides money.
On the other hand, a startup with $160M may be willing to pay u for a US trademark w/o going to court or arbitration
Not after this post, they're not. They've already got a US trademark, and if they simply Google it, and find this post, they're going to realize this person is never going to challenge them in a US court over it.
Nobody told you that you can't use the name, right? And you've still got a US mark, don't you? How is any of this harming your project or your career? ... or more importantly, how is this hurting consumers? Consumer protections are the entire legal reason for granting a trademark.
I mean, you can certainly fight their registration. I just don't know what you or your users would actually get out of it?
If setting your usage price to $0 means no trademark, that's a pretty big attack on non-commercial services. Alternatively if it's more about tracking, that's also quite bad in a different way.
I don't know much about this OSS project... but if there's a case that they need this trademark to protect consumers from harm, then that's your winning argument.
> If setting your usage price to $0 means no trademark, that's a pretty big attack on non-commercial services.
If you really are not doing commerce, trademarks are irrelevant. You can't get one, and you don't need one.
Yes, protecting consumers. And people are equally consumers of something whether they pay $1 or $0.
> but if there's a case that they need this trademark to protect consumers from harm, then that's your winning argument.
Other than the normal argument for trademark and the evidence of use they had? If you have to show a specific argument for harm, that's way too high of a bar.
> If you really are not doing commerce, trademarks are irrelevant. You can't get one, and you don't need one.
Define "commerce" here.
If we count competing in the market but your product happens to be $0 as commerce, then sure I can agree but this project passes the test.
If a price of $0 disqualifies you from "commerce" then no way, trademarks are not irrelevant and you do still need one. Consumers need to be able to find your product and avoid imitators.
I am not asking for the evidence of what that commerce is. I personally do not care nor do I make the judgment of what qualifies.
But, if you want a trademark, you need to show the trademark office what trade you are going to do with the mark you want them to grant you exclusive use of.
And if you're not going to do any trade, then you don't need to worry about it. Because you cannot infringe on a trademark without doing trade.
Okay cool, glad we're on the same page there, but then I don't understand why you even made your initial comment saying "I can understand why you're frustrated if you feel like you've lost something, but trademarks serve a purpose for facilitating commercial trade."
By your definition, they are engaged in commercial trade. And that was well-documented in the initial post.
> But, if you want a trademark, you need to show the trademark office what trade you are going to do with the mark you want them to grant you exclusive use of.
And the issue is the trademark office is not taking their evidence. They're looking at hundreds of thousands of downloads and saying "hmmmm, might be 99% non-EU, we don't care"
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.
I mean, there was some documentation. I don't know if it was well documented.
There's like 160 million reasons why the other company has better documentation.
Ultimately, the a point of holding a trademark is to give you some legal firepower. Going up against the company with $160 million, you're pretty much screwed anyway.
Their best bet in this scenario is to just use the name anyway and not piss them off. There are plenty of organizations, even very for-profit companies, that use the same name and don't have any problem with it because it's not confusing anybody or pissing anyone off.
Better documentation of someone else's user count?
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.
Trademarks are only the right to use a name commercially for a particular good or service.
Anything outside of that is fair game.
I don't think that's happened though.
Of course, if you can't prove to the examiners that you even have a right to the mark, you're probably gonna have one snowball's chance in hell of a time proving that someone else's use of it is invalid in court.
Now that they own the trademark you can't make money off of it but you don't have to give anything up - if you have the url and aren't charging anyone you can hold onto it.
> I dealt with this years ago - it would have been about $250K to challenge the trademark for something that I'd been using for a few years.
They were perfectly happy to coexist with your project -- and nobody was going to confuse "Deepkit", a TypeScript framework, with "Deepki", a real estate sustainability platform.
But then you tried to stop them from registering their own name (which they had been using for years before you started your project). Why would you do this? They responded by filing to invalidate your trademark, which, given the circumstances, seems pretty reasonable. In the end, they won.
You say that you registered a trademark so that you could "live peacefully." Perhaps the lesson to learn is if you want to live peacefully, don't go around picking fights.
[1] https://news.ycombinator.com/item?id=44894521
Should be the same, no? And if it's not, why didn't OP get the right to sell the trademark to that company?
Not sure if it's ok or not, what the TM office did there, because if not, then just registering TMs could also be done in the same way like domain squatting.
Maybe OP should find cases where such demands from powerful companies were rejected, even if they shouldn't have rejected them.
What order of magnitude are those, if you are at liberty to say?
Currently:
https://github.com/deepkit => 404
https://github.com/deepkit/deepkit-framework => 301 redirect to https://github.com/marcj/untitled-code
https://deepkit.io/ => still up
Also note that I already lost some court cases using my logic.
Talk to a lawyer about optimal pricing, then offer to sell them the trademark for a decent discount versus what their strong-arm tactic will cost them (they have to pay lawyers too!)
The company wants your trademark for the lowest price. Just be cheaper than what they have to pay to legally steal it.
Some US company sued because they held a US trademark for "bitmatch". Luckily they sued my employer (Red Hat) and Red Hat's lawyers dealt with it, but we did have to rename the project to "bitstring" (https://bitstring.software/).
If you can handle the costs or find pro-bono (EU) lawyers, then potentially yes.
Also take up a European petition to generate publicity for your case, maybe on the legal abuse of IP rights of open-source software companies.
Compare to e.g. 'Petition at the European Parliament "on the implementation of an EU-Linux operating system in public administrations across all EU countries"' (Petition No 0729/2024): https://www.reddit.com/r/opensource/comments/1glo8tv/petitio...
(Sounds like the EU equivalent of cases that Larry Lessig and the EFF would take in the US; have you contacted them?)
Try to find open-source/startup-friendly MEPs, and for Bulgaria. And start blogging on LinkedIn. And mention your domain (deepkit.io) early and often. All publicity is good publicity. And present at the European open-source confs. Start making noise. Maybe you can't reverse your individual ruling (or maybe you can), but you can alert others.
> - They basically kept repeating that they couldn't clearly link any of the usage to the specific goods/services my trademark was registered for.
I don't get what they're claiming hits on your domain (deepkit.io) don't already show. Sounds bogus. They didn't cite any specific examples of what would have proven it?
Deepki is in a very different space to Deepkit (Although the former is a terrible brand name, and the latter sounds more related to deep learning).
Does an OSS project that doesn't trade have a classification? I have no idea.
- 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.
Man, imagine if you had asked for a thousand euros as consideration.
Not just that, you will also have to solve the mystery of how a one time payment is supposed to strengthen your trademark in the long run.
> I'm not an expert, but that sounds like a bad deal to me and substantially weakens the mark.
Well, the alternative (in hindsight, admittedly) is losing it entirely?
I might have misread - did they initially try and trademark "Deepki" or "Deepkit" when you attempted to block it?
What kind of world do you live in?
It's no more reasonable for a product to trade under "Deepki" in the presence of the established mark "Deepkit" than it would be to name a school "Stamford University".
Deepki was created in 2015. Deepkit was created in 2018.
Deepki is an ESG company that has nothing to do with Typescript server frameworks (i.e. Deepkit).
There's no confusion when searching the names, and there's no confusion when pronouncing them either - "Deepki" ends in a long ee sound while "Deepkit" uses the short i sound followed by a t.
I think this is the key point, according to EU it is not
In neither case is it relevant to the idea that it is "reasonable" for Deepki to desire to use their mark in coexistence with the mark "Deepkit". Your argument is that they didn't want coexistence because the other mark didn't exist.
I'm not claiming their response is any better, but I don't know anything about trademark issuance in the EU so I won't speak on that.
IANAL and dont really know, but my understanding is many places require you to defend it in order to keep it. If you become aware of something and fail to try and block it, that can be viewed as you've lost interest in the trademark and result in it being taken away from you.
You still have the US trademark, right? Unless the domain is .eu i dont see how that would happen.
For a monthly fee, you can have “users as a service”. You will receive traffic from many, many users, who you can freely harvest all the data you want from and prove you have traffic. These users will not block analytics or any trackers, and are fully ready to be data mined.
Subscription tiers scale based on how many users you require.
https://github.com/voided-org
Did they recently rename to Voided Org?
As long as we get our highish salaries, our taxes don't rise and we can live in a nice neighbourhood away from the poor then we literally don't care about wealth accumulation, abuses of corporate power or lobbying.
Sure, pretend it's not true; but we've not done anything about it, we're not doing anything about it, and we're not going to do anything about it.
Google Analytics is not something that's "trademark used for actual trade"
Is the big company being a jerk? 100% But then sign m again the project is self-described as a "small OSS project"
I can understand it being handled like that as it prevents "trademark squatting"
Perhaps I have the wrong idea of what it means to do trademark squatting, or did I misunderstand your point?
The problem is that this way it seems like an impossible battle. Even if you get location data of stuff like downloads (which is not sth you normally get if for example one clones the repo anyway), you cannot prove the software is actually used, unless you use analytics in the software itself. This sounds important for FOSS in the EU.
I'll give you an example:
Linus Torvalds has a trademark on Linux. It's GPL, but there is plenty of evidence of commerce to support that trademark.
Here's the Linux Foundation's financial statement for instance:
https://www.linuxfoundation.org/hubfs/Reports/lf_ar24_121524...
> In 2024 we are forecasting revenues of over $292M. In 2024, the Linux Foundation is forecasting to spend nearly $300M supporting our mission
That's some pretty solid evidence of commerce.
If they had some invoices with that ™ commercial name I'd say it would be viewed differently
I could see the reason if there's no evidence of (constructive) work being done (so a clear indication of someone holding on the trademark, ie. squatting, IIRC).
Now, if I had a forward looking business spirit, I could perhaps conceive the idea on combining a hobby of mine with trademark squatting to masquerade it, so perhaps this isn't so strange after all.
It may seem weird if you're thinking about it from the perspective of a business owner trying to protect their brand. That's why a business would want one. But it isn't why they exist. The legal basis of trademarks isn't brand or business protection, but consumer protection.
The point of a trademark is to protect consumers from being fooled or misled. If there are no consumers, then there's nobody to protect.
if you haven't traded (you say you haven't produced any revenue), there's no mark of trade to protect
What about when you start?
You choose a name, patent it, and start: anytime they can take from you that patent until you trade enough? can somebody define that 'enough' ?