Hacker News Reader

Comment by smt88 | Hacker News Reader

That's not necessarily true if Kik were planning to open up some kind of API. Also, the way the law works in the US encourages corporations to overreach. If you don't try to protect your trademark from every possible angle, it can lead to your loss of it in a court battle. A lot of times, lawyers will send out letters without caring how the recipient responds -- they only need to have sent the letter at all to have covered their bases.

View on HN

> That's not necessarily true if Kik were planning to open up some kind of API.

Surely opening up a new API doesn't give them retroactive rights to the name in that space.

It doesn't have anything to do with the API. Kik (the company) registered the name and have rights to the name.

Technically, Kik (the company) registered their trademark in the class "Computer Software" [0]. That means that no-one else can use the word Kik (and the logo) for this class of activity. The key issue is when the registration happened. Since they've been going since 2009, and Kik (the software project) only started in 2015, Kik the company was there first.

The reason their lawyers are asking for "Kik the project" to change name is because trademarks can become generic if you're not seen to protect your mark [1]. As a private company (particularly VC funded), IP has a lot of financial value: the business will be valuing their trademark. If they don't protect it then they'll be "throwing money away".

The fact that the business world (and VC's generally) highly value IP is why most people over-register. If they didn't go for wide classes, and then in a few years decided to work in a particular area they might not have rights to their "own name" in that class.

It's a case of the Open Source and Business world-views clashing.

[0] Someone else in the thread found the specifics but the link doesn't work for me. [1] Everyone knows the example of Spam.

> Everyone knows the example of Spam.

Please show an example of someone other than Hormel Foods Corporation marketing a meat product using any derivative of the name 'Spam' and getting away with it.

Spam was mentioned because it's a brand name that became generic because it wasn't protected aggressively enough. Coke, Xerox, and Kleenex are other classic examples of brands that are commonly used generically, and the company owning their trademarks must aggressively send threats (that they rarely follow up on) just out of legal necessity.

Spam very aggressively protects their trademark. So aggressively that it lost a trademark lawsuit against Spam Arrest. (They lost cause people don't get food and junk mail confused)

Indeed, Hormel once sent nastygrams about their trademark to the ASF over our Apache SpamAssassin software. Trademark owners can ask everyone to use or not use their own names. Actually going to court - or actually winning - is far far rarer.

As someone pointed out in another thread, you similarly couldn't name a package something like "facebook" even if Facebook had no API.

there is a package called facebook: https://www.npmjs.com/package/facebook and it doesn't seem to be owned by facebook?

facebook may be a bad example. they named themselves after a generic directory that many colleges have been giving out for decades.

See also: YellowPages.com, Salesforce.com, etc. Just because something exists in real life (and used to describe a non-digital version of the same thing) doesn't mean it can't then be trademarked.

Sum had to change the name of its yellow pages application to nis because yellow pages is copy righted.

You don't seem to be very well informed.

> A lot of times, lawyers will send out letters without caring how the recipient responds -- they only need to have sent the letter at all to have covered their bases.

That is not what happened here though.

Any chance someone at Kik the company wanted to create an npm module and decided the escalation to lawyers was the right way to resolve things? Seems like the lawyer was more interested in getting possession of the name on npm then actually fighting for a trademark. It doesn't even sound like they bothered with a formal cease and desist.

https://medium.com/@mproberts/a-discussion-about-the-breakin...

Guess that answers that. Bob may have been going beyond what he should have or what they intended but in the end he represented Kik and they have to take responsibility for that.

Reply on news.ycombinator.com