Help the Gnome Foundation Defend the Gnome Trademark Against Groupon | Hacker News Reader

Help the Gnome Foundation Defend the Gnome Trademark Against Groupon

gnome.org

722 pointsPaulSec208 comments

Wow, all evidence suggests that the team in charge of this at Groupon is acting in bad faith, trying to bulldoze over a non-profit with fewer financial resources. (I doubt Groupon would ever attempt something like this against a financially-well-backed brand such as, say, "Apple.")

Consider: (1) it's essentially impossible that no one involved had ever heard of the Gnome desktop (it's the top result when I search for "gnome" on Google); and (2) after being contacted by the Gnome Foundation, Groupon filed even more trademark applications.

There are a lot of decent, hard-working hackers at Groupon, and quite a few of them, I'm sure, regularly visit HN. They won't be happy to find out about this.

Are there any Groupon insiders here willing to comment on this, maybe anonymously?

UPDATE: Groupon just released an official response: https://news.ycombinator.com/item?id=8590343 -- they now say they will be "glad to look for another name." If they really mean it, kudos to them for changing their position!

The move comes across as particularly hypocritical after reading this recent Groupon Engineering blog post titled Sharing is Caring: Open Source at Groupon:

https://engineering.groupon.com/2014/open-source/sharing-is-...

Follow-up, even more confusing post from Groupon:

https://engineering.groupon.com/2014/misc/gnome-foundation-a...

This post makes it even more clear that the Groupon people behind this have a poorly developed understanding of ethics and scruples.

"Trying to come to a resolution" looks like code for "we've been threatening Gnome with costly legal expenses."

I e-mailed Groupon directly about it, they sent me the same response, word-for-word. It's clearly a canned text their PR firm gave them to paste.

The most confusing part is how a post on HN with record breaking up votes suddenly falls off the front page just as Groupon issues their response. Is there biased moderation occurring? I reached out to YC for clarification and help. Hopefully I'm wrong and just jumping to conclusions without knowing all the facts. :)

I agree with 2 but not with 1. I think there are loads of people out there who have heard that there is something like Linux, but have never used it. If you never used any *nix you probably don't even know that desktop environments can be switched or changed. Then how would you know about a specific desktop environment? Not accepting to respect a 17 year old trademark is very, very bad though.

Then those people have no business filing software-related trademarks.

There's not one single engineer that saw the conflict with the name 'GNOME'? If so, their engineering team is hopeless.

(Note that I don't think erikb deserves the downvotes, I think a lot of people will give them the benefit of a doubt by saying 'maybe they don't know', but someone at Groupon had to know, and that person was ignored, and now Groupon deserves the wrath of the community)

What about this guy?[0]

(Stolen from this post: https://news.ycombinator.com/item?id=8589879 )

[0] https://dl.dropboxusercontent.com/s/93i0gkawa4q15lh/2014-11-...

You think the team creating a POS terminal at Groupon hadn't heard of GNOME?

The very first thing you do when considering customer facing names for products is a web search: first page of hits for me is filled with GNOME desktop.

> The very first thing you should do [...]

Yes, but often people don't do what they are supposed to do. I did the same mistake with an open source project I've written for my thesis. Things like that happen all the time. Especially for people in Windows world there is not much else outside. They probably haven't heard about TextMate or XCode either.

Groupon takes the pole position for the amount of douchebagery they dished out within such a short period of their existence.

What about ÜBER?

What has Uber done?

Very questionable tactics when fighting competition, particularly Lyft. Google it (I don't want to misrepresent it from memory), it's been on HN quite a few times.

This for example.

http://www.theverge.com/2014/8/26/6067663/this-is-ubers-play...

Except that was actually good.

http://www.newyorker.com/business/currency/virtues-ubers-ope...

And this:

http://avc.com/2014/11/messing-with-a-competitors-fundraisin...

Not only unethical, but quite possibly a tortious interference with contract. Uber is turning out to be even worse than the worst taxi companies.

I'm definitely not a fan of Uber, but even I wouldn't put them in the same league as Groupon. Uber falls in the 'not great for their employees, but generally useful for society' category, which is really the same bucket as Amazon.

Groupon falls in the 'disingenuous startup that enriched early investors on pumped up numbers and dumped it all on society later', with an extra kicker of screwing a bunch of small businesses along the way.

I don't get it either. If GNOME (the desktop environment and the foundation) have a trademark on GNOME, why do they need $80k to defend it? Shouldn't the trademark office then simply reject any further application for GNOME name related to computers, software and operating systems? Is this because of the idiotic defunc. justice system the US is imposing on themselves? Where you can sue mall owner for millions because you slipped on his floor? sigh

IIRC, the rule is that if you don't step up yourself to defend your trademark whenever someone else tries to use it, your trademark becomes void.

Could you kindly explain me then what's the point of registering a trademark? Is it something you can then wave with in front of jury? Do you really need $80k for that? Do you need $80k to print out your accepted trademark application, and prove that you're in the business for 17 years? Sorry this is just complete non-sense and failure of the system.

Well what they say is "if it costs less we will put the rest into our product"...

Yes, it is a disappointment. And yet, it is the reality. As a result, the GNOME team does still need to pay their lawyers.

This is really disappointing and could be use to harass a company, what stops a malicious group of people do a "copyright ddos" by just forcing a company to pay 80k each time they need to defend it's trademarks?

That's how patent trolls operate. Cheaper for companies to pay their fee than to fight the battle.

Could you kindly explain me then what's the point of registering a trademark?

Mostly so that you can get (triple) damages and lawyer fees from the infringer in case you win the lawsuit.

Not only that, but those $80k could have paid for quite a few months of development, but instead those will be money going down the drain because of a broken justice system. And they have the nerve to say that IP laws are fueling innovation.

Trademark has barely anything to do with IP laws. You are referring to patents, and trademark legislation has nothing to do with patents.

Trademarks are a form of intellectual property.

'Intellectual Property' is not a legal classification, and shouldn't be. Patents, Trademarks, Copyrights, and looser-defined 'trade secrets' all have distinct purposes. Saying "Intellectual Property" when you mean "Trademark" gives the impression that the holder has all kinds of legal protections which don't actually apply.

Over the long term, there's danger that legal theories will change to further expand the rights of corporate publishers.

> 'Intellectual Property' is not a legal classification, and shouldn't be.

Intellectual Property isn't a classification defined in law, but it is an analytic classification used in law, the same way that various other subcategories of "property" are, to discuss related protections.

∀X : X ∈ { Copyright, Trademark, Patent, ... }, X ⊂ Intellectual Property ⊂ Intangible Personal Property ⊂ Personal Property ⊂ Property.

Those are not true subsets like you suggest. Consider that moral rights, which fall under intellectual property law, don't fit into the "property" category. For example, the "right [of the author] to prevent the destruction of a work of art if it is of 'recognized stature'" is not something which is true of anything I know of outside of creative works.

In German law, the inventor of a patent has the right to a share of the profit even if developed as an employee of the company making the profit; again, something not shared with tangible property.

I think of the relationship between "intellectual property" and "property" is more akin to "Pluto is a dwarf planet, but it's not a planet."

> Those are not true subsets like you suggest.

Yes, they are.

> Consider that moral rights, which fall under intellectual property law, don't fit into the "property" category.

Moral rights absolutely fall under the property category.

> For example, the "right [of the author] to prevent the destruction of a work of art if it is of 'recognized stature'" is not something which is true of anything I know of outside of creative works.

Well, yes, the fact that element x is an element of set A and set A is a subset of set B, and set C is a subset of set B does not imply that x is an element of set C.

The whole point of named subsets of property (and, named subsets as analytic categories in general) is that the names come from features that are shared within the named subset that are distinct from other subsets in the broader set. So, yes, Copyright has features that are dissimilar to Patent or Trademark, IP generally has features that are dissimilar to other intangible personal property, intangible personal property has features that are dissimilar to tangible personal property, and personal property generally has features that are dissimilar to real property.

You are right. My examples were not valid counter examples.

I think of a property right as something which is transferable. The two examples I gave were of rights that were not transferable. However, if "Personal Property" also includes non-transferable rights, then there's no conflict.

As a clear counter-counter-example of why my counter-example is wrong, tenancy rights are part of real property law, and may or may not include succession rights.

My comment then transforms to the (trivial) observation that intellectual property ⊄ real property.

Copyright, trademarks, patents, industrial design rights, trade dress, trade secrets are all lumped together under the intellectual property term. Yes, you can argue that the term itself is incorrect as property is used here in a way that contradicts the law itself, also lumping together different laws under the same umbrella, preventing rational discussions about specifics, but there you have it.

https://en.wikipedia.org/wiki/Intellectual_property

I didn't see any comments that applied to patents (e.g., that they cover inventions, that they require the inventor to disclose all relevant details of the invention, that they have definite lifetimes, etc.), so while I agree with you and Stallman that it's important to be explicit about when you're talking about copyright, trade secrets, patents and trademarks, I don't think anybody's created any confusion yet.

Besides, for amusement's sake, the USPTO stands for "United States Patent and Trademark Office."

> I didn't see any comments that applied to patents

Well, when someone mentioned "fuel innovation", I assume they did not talk about trademarks, because trademarks have NOTHING to do with protecting innovation. That's what patents are for (in theory, while I don't agree with that, but that's a different topic).

You're right: I had overlooked that statement.

Well, without these IP laws GNOME wouldn't have any recourse, would they?

Without IP GNOME would not care. GNOME users would know not to associate Groupon with GNOME, and without IP you could call all your stuff anything you want, and that does not mean anything to anyone else, unless you manipulate people into seeing the wrong brand in the wrong place. IE, deception.

Your misunderstanding highlights why we need to demolish the term "Intellectual Property".

Patents and Copyright stifle innovation and should be reformed or abolished. Trademark is essential consumer protection against fraud and manipulation and is extremely important to keep, although it needs to be fixed not to require prohibitive costs to defend one's trademark.

There was no misunderstanding. Trademarks, as you yourself have said, are also an exploitative tool of abuse by entrenched interests. Impersonation and slander should still be illegal, but the claiming of ownership of a name is only rife for abuse. I'm against IP in general.

The system is a mess. I have a small side project and I trademarked the name, yet a competitor of mine used my trademark to promote their site and after speaking with several people about my situation they made it clear that unless I was willing to put up about six figures to fight it there isn't much I could do.

None of those people you spoke to sound like lawyers. It won't cost six figures to have a lawyer send a letter. Your competitor might not like the six figures prospect of defending themselves.

Actually they were business people who have been through this battle before spending in the six figures to defend their marks (along with my brother who is a patent attorney). But yes, you are correct that sending a letter is the first step but if that step is ignored then the next step will cost money...and too much money for a single developers side project!

Surely though, if Gnome win the case then Groupon would become liable to pay the costs?

Not necessarily. There are a lot of circumstances in which the case could end in Gnome's favor, without that judgment.

Do you have an example of such a circumstance?

I'm not going to Google it for you. But they could settle the case, e.g. Groupon could agree not to use the name after it becomes clear that Gnome has spent enough to assemble a legal defense. And Gnome decides that the cost of pursuing further action makes it too risky.

> Could you kindly explain me then what's the point of registering a trademark?

---

* Public notice of your claim of ownership of the mark;

* A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;

* The ability to bring an action concerning the mark in federal court;

* The use of the U.S. registration as a basis to obtain registration in foreign countries;

* The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;

* The right to use the federal registration symbol ®; and Listing in the United States Patent and Trademark Office’s online databases.

---

from http://www.uspto.gov/faq/trademarks.jsp#_Toc275426681

No, you need that 80k to argue that Groupon's proposed product would infringe your trademark.

US trademarks are only good for the line of business I'm in. If I were to publish a software product called Mustang, for example, Ford wouldn't be able to sue me for copyright infringement. My product shares a trademark with one of theirs, but it's in a different enough market that the two trademarks don't conflict with each other.

It sounds like Groupon's proposed product is point of sale hardware. That's different enough from a desktop window manager that Groupon can quite possibly get a lawyer to convince a jury that they're different businesses. Therefore GNOME Foundation has to pay a lawyer to stand up and argue the other side of the case.

That's if someone is using it, not someone trying to register it. I always imagined that the US Patent and Trademark Office had a period where people could file complaints about pending trademarks, which is a different process.

What is the rationale behind that?

The rule is not a strict requirement although broadly speaking a trade mark owner is required to enforce their trade marks in relation to third party use which is likely to confuse the public.

The rationale is that trade marks are designed to be a badge of origin & to guarantee to consumers that the goods are from a particular entity. If I do not show due regard for maintaining that distinction by taking action against third parties making confusing use of an identical/similar mark then I should not have the right to continue making use of the mark, or at the very least could be said to have consented to the third party use and cannot subsequently stop them.

This is widely believed and wrong.

Your registered trademark fails when you stop paying your renewal fees. The only other way is for it to become genericised, which is about public use and not about others using it for doing business [1].

Previous commercial use however is an absolute defence in trademark law, making it also impossible to steal a trademark (another oft repeated falsehood): just to anticipate the idea that "Groupon will get an RTM and sue GNOME".

[1] - http://digitalcommons.law.scu.edu/cgi/viewcontent.cgi?articl... - Elliott v Google, trademark genericisation.

It's because lawyers are that expensive.

Let's assume they cost $500 an hour, which is probably enough to pay three of them but I have no idea about the price so let's assume it's that. Then $80k / 500 = 160 hours. Does it take 160 hours, or 4 work weeks full-time, to write a letter or fill out some form saying that "hey, we registered this back in 2006, you should reject these applications"?

Plus $300 per trademark opposed: http://www.uspto.gov/web/offices/ac/qs/ope/fee010114.htm#tm

You are assuming that is all that it would just take sending a letter. Likely they want to put a single lawyer on retainer for the duration of the copyright battle to ensure that a longer legal battle does not draw from other sources in the gnome project.

I'm not sure what you are suggesting here..

That I have no idea what in this whole process takes so much money. If trademarks take this much money to defend, you might as well just sue anyone trying to use your name without filing a trademark.

And then lose spetacularly, since you don't own the trademark.

At least in Europe you're not required to register a trademark to be able to use it. If I've been selling red toy cars in Dutch toy stores for five years and they all had a clearly recognizable logo on them, then someone else uses a logo that is almost identical to sell orange toy cars in the same or nearby toy stores, I might very well win that lawsuit.

It is geographically limited and limited to the market segment, and I'm not sure about international laws, but technically they just stole something you've been using for years. If the trademark system is this expensive for legitimately protecting a registered trademark, I see no use for the whole registered trademark system.

The laws you mention are long-standing, but the trademark system was developed to sort out all border cases that this approach inevitably fails to address. Does it matter if toy cars are orange or green? What if they are toy trucks? Etc etc. Trademark is not compulsory, but it's advantageous in most cases.

Without trademarks, each doubtful claim would require a full run through the courts; and depending on whether you do or don't use Common Law (i.e. in France, Italy, Spain etc), legal precedents wouldn't even hold in most cases, so every single time you'd have to repeat it. That's expensive for everyone involved, including the State.

With trademarks, you have to specify fairly-precise categories at registration, and then there is no dispute. If you file for "BestCars" in "toys", that's it, nobody else gets to make any toy with your name, regardless of whether your cars are red or yellow or even look like a car; if they try, you first threaten them (which will solve 90% of cases right away), then easily slap them in court with a quick process (judge looks at trademark filing, looks at toys, and rules for infringement).

Trademarking works, to be honest. It's one of those things you only ever hear when they fail, which they do, occasionally. In this case we all believe Groupon should have been told "your name is too similar to another in category 021" by an automated system while filing, rather than being allowed to file and wait for a challenge, right? Except companies file trademarks and then they die, and what happens to their trademarks then? Should the state actively scan the business market, going door-to-door telling people "you can't do that because the other guy was doing it first"? That's a huge burden, especially in a global marketplace. It's much more efficient to just timestamp files (which is basically what the office does, by accepting a request) and then deal with the few complaints when they arise -- which they likely will only if the two companies really occupy the same marketplace, incidentally. Believe it or not, most people would rather stand out for originality and won't willingly try to steal someone else's trade name; it's better to just wait for the occasional sociopathic Groupon and then slam it like it deserves (hopefully).

The state already needs to keep track of companies for tax purposes, so it seems strange that it couldn't simply void any trademark owned by a company that died.

Then define point of death as a company not paying taxes for two years and not declaring the company to be in some special tax-exempt state.

$500/hr is the price of 1.5 IP lawyers, based on the median hourly rate in Oregon:

https://www.osbar.org/_docs/resources/HourlyRatesSurvey/Inte...

On the other hand, it only affords 1/2 a lawyer if you're talking white shoe partner in SF or NYC.

Seriously have you ever worked with lawyers? If not, you should probably think twice before commenting :)

No I haven't which is why don't understand why they need the money. If someone could explain, that'd be nice...

I think it's basically "because doing the lawing is a lot more complicated than most people think"

e.g. http://blogs.findlaw.com/law_and_life/2013/03/why-do-lawyers...

And another view: http://abovethelaw.com/2011/10/why-are-lawyers-so-expensive-...

The issue is, of course, "how related is related?" The USPTO will do a trademark search to see if an application conflicts with an existing mark. The $80k the foundation is spending isn't for that, it's to convince the USPTO that "GNOME" for a point-of-sale system is unacceptably close to "GNOME" for a desktop shell.

I believe the idea is that if I register "Bruiser's Cars", that name doesn't automatically become unavailable to others for hundreds of years. I need to prove that I am still using the trademark somehow. Unfortunately that results in me needing a lawyer, which really sucks for a small business.

Note that the patent system (in theory) works the way you describe, but it hasn't eliminated the need for lawyers.

Finally, in the mall example, what usually happens is the judge finds that the mall saved millions by never cleaning their floors, so the company is punished by losing all the money they made. It is extremely rare for someone to get millions over something small.

I'm one of the folks working on the GNOME defense campaign. Happy to answer any questions people might have.

Can you guys just rename it to genome to skirt this whole issue please? :)

We have no intention of just giving up, no.

I think the people replying to this thread think you are working for groupon. That is the only way this makes any sense.

Gah! No, definitely not; I'm helping with the GNOME defense campaign.

They say Groupon's Gnome is an operating system, do you know any details of how they built it? Is it Linux based, etc?

It seems to be based on iOS.

Wait what? They built an 'iOS based operating system'? I don't understand how that would be possible?

Probably just iOS with a full screen app that's started by default and some changes in the default settings.

¿Apple lets you do that? Seems quite against their usual policies of "My device, my user experience".

Have you opened a dialog with Groupon and if so, can you share anything of that communication?

From the article we posted at https://gnome.org/groupon/:

> we nevertheless got in touch with them and asked them to pick another name. Not only did Groupon refuse, but it has now filed even more trademark applications

Hi Josh. Can you give us Groupon's perspective on this issue?

I'm working with the GNOME foundation, not with Groupon. Our perspective on Groupon:

> It was almost inconceivable to us that Groupon, with over $2.5 billion in annual revenue, a full legal team and a huge engineering staff would not have heard of the GNOME project, found our trademark registration using a casual search, or even found our website, but we nevertheless got in touch with them and asked them to pick another name. Not only did Groupon refuse, but it has now filed even more trademark applications

https://engineering.groupon.com/2014/misc/gnome-foundation-a...

"We love open source at Groupon. We have open sourced a number of projects on github. Our relationship with the open source community is more important to us than a product name. We’ve been communicating with the Gnome Foundation for months to try to come to a mutually satisfactory resolution, including alternative branding options, and we’re happy to continue those conversations. And if we can’t come up with a resolution, we’ll be glad to look for another name."

Can you also sue them for frivolousness or something like that?

We're exploring many options. :)

I can't say anything about specific plans for legal actions, sorry.

If you guys could bankrupt Groupon, take all the money, and hire an army of devs to make Gstreamer, Pulseaudio, Avahi, CUPs, Telepathy, Wayland, etc great (I think the GNOME desktop itself is in really good shape, just the internals need love), I'd go to the victory parade.

Why that amount of money? Is that how much the SFLC needs? I assume you're picking the SFLC to represent you, right?

Does the FSF handle any of Gnome's finances? As a GNU package, I thought there still was a relationship between the FSF and Gnome.

I ask because as a fellow GNU-in-arms, I might be able to make a case for sending you a bit of Octave's money. We gotta look out for each other, right?

> Why that amount of money?

Our counsel has advised us that we will need that much to oppose the registration of the first set of 10 trademark applications.

> Is that how much the SFLC needs? I assume you're picking the SFLC to represent you, right?

We're currently working with pro-bono counsel from an independent attorney. The amount is how much we've been advised that we'll need to successfully defend the trademark.

> Does the FSF handle any of Gnome's finances?

No; the GNOME Foundation is an independent 501(c)3.

> As a GNU package, I thought there still was a relationship between the FSF and Gnome.

Not a financial relationship, but GNOME is still part of the GNU project.

> I ask because as a fellow GNU-in-arms, I might be able to make a case for sending you a bit of Octave's money. We gotta look out for each other, right?

The thought is appreciated, but if you're talking about funds donated to GNU Octave, I don't think that'd be appropriate. We're raising funds specifically for this defense campaign, rather than using general donations to GNOME; for the same reason, we shouldn't be using donations people offered to Octave for Octave development. But thanks for your consideration.

One thing you could do: we'd appreciate it if you promoted the campaign further across other projects, such as via the news feeds and social media accounts of those projects.

> The thought is appreciated, but if you're talking about funds donated to GNU Octave, I don't think that'd be appropriate.

The funds were donated to the FSF for Octave. However, many of us in Octave use Gnome, so I could see a point in saying that we in Octave need to ensure that Gnome works well for us. Also, we collect the funds in a rather ambiguous language, without any promise of how they will be spent, within the boundaries of the FSF's 503(c).

> One thing you could do: we'd appreciate it if you promoted the campaign further across other projects, such as via the news feeds and social media accounts of those projects.

We don't have much of a web presence, but I'll promote the Gnome problem in whatever scanty resources we have. Of course, the FSF is also doing this for you, right?

> The funds were donated to the FSF for Octave. However, many of us in Octave use Gnome, so I could see a point in saying that we in Octave need to ensure that Gnome works well for us. Also, we collect the funds in a rather ambiguous language, without any promise of how they will be spent, within the boundaries of the FSF's 503(c).

I know your intent is good, but reading things like this make me less likely to donate to free software projects without strong management. You should take the intent of the donor into more consideration than what you think is fair use, even if your language is somewhat ambiguous.

Well, rest assured, Gnome doesn't want our funds, and I probably can't make a case for spending them this way either. It was just a thought.

So far all we've done with them is fund developer conferences (travel expenses and the like).

Gnome has definitely had an impact on my career, as it was my desktop of choice for a long time, both professionally and at home. Thank you for your hard work, i've donated $50 (not much but). Go get them boys :)

Given the statement from Groupon (https://engineering.groupon.com/2014/misc/gnome-foundation-a...) that if they can't work something out with you, they will choose another name, do you still plan on raising the $80K?

Obviously Groupon's definition of "working something out" would include doing so by brute force (bulldozing over Gnome's interest with lawyers and money), so you have to read what they say carefully, and not assume they are giving up.

Well said. The tone of that response doesn't match the tone of our previous attempts at discussion. We'll have to see how things go.

I had thought Groupon's core competence is scamming small businesses, not providing POS terminals for them? Do those two things go together?

This will provide bigger surface area for scamming and fleecing them.

You should check out the POS market sometime. They've been scamming small businesses for several decades.

when your business model is easily replicated and done better I guess its only natural to extend it or simply move onto something else and integrate it to your current product.

Does seem like one big privacy risk, really I do not think I want my POS terminals connected to the net for any reason.

You mean, not even to process credit card purchases? What about uploading your receipts and timecard records to your accountant?

It's really only the nearly antiquated systems that are not on the internet these days.

How do your POS terminals differ from a website+cart? Aside from the obvious things like barcode scanner, CC scanner, receipt printer, and till?

Couldn't someone like Google, Apple, or any of the other huge companies who have made billions with the help of *nix and OSS in general step in and help out with what, to them, is a trivial drop in the bucket of money?

Also how is it even legal for someone to so openly and malicious intrude on a trademarked name? I thought that's the entire point of trademarks.. it protects you from this?

Not a lawyer, but it seems that they're applying under a different class of usage.

I don't know about that. The GNOME project links to their trademark here: http://tsdr.uspto.gov/#caseNumber=76368848&caseType=SERIAL_N...

Under "Goods and Services", I see it as being marked "U.S Class(es): 021, 023, 026, 036, 038" (also classes 100 and 101, which appear to be services).

Here's one of the trademarks Groupon's filing: http://tsdr.uspto.gov/#caseNumber=86287930&caseType=SERIAL_N...

In contrast to the GNOME trademark, this one is for goods classes... 021, 023, 026, 036, and 038. That doesn't seem all that different to me.

As a sanity check, here's http://tsdr.uspto.gov/#caseNumber=86287912&caseType=SERIAL_N..., the "FLAVOR FLIP" mark for "Brix controls sold as components of refrigerated beverage dispensing machines". Its listed US Class(es) are: 013, 021, 023, 031, 034. So I feel pretty safe in saying that Groupon applied for the GNOME mark in exactly the trademark classes that the GNOME foundation already owned it in. Also, I'm kind of curious what trademark classes 021 and 023 are.

I've not looked at the marks that GNOME (the linux distro/project) hold - as you say someone else can file for marks in other classes, separation by market area and geography allow for otherwise coterminous use of registered trademarks.

However Groupon's _use_ http://investor.groupon.com/releasedetail.cfm?releaseid=8487... is clearly going to cause confusion [in the legal, TM sense] with GNOME's whether GNOME's mark is registered or not.

I'm not sure about the details of confusion clauses under the USC but it's definitely a thing in trademark law. Also, as your 2nd link shows Groupon's is a current application that is awaiting applicant response: presumably it's the use of the mark that GNOME are fighting at present rather than the ongoing trademark application (which they can simply make observations on that the examiner can use to reject the mark [or not if they're insane]).

They could. But they don't have to, so they wont.

Apple isn't really a stranger to announcing products with already trademarked names..

For those who don't get the reference: https://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer

It would be delightfully ironic to see Apple providing money in support here, but I'm not holding my breath.

I believe parent is talking about iPhone and iPad. "iPhone" was owned by Cisco in the US which Apple eventually bought the trademark from. I believe Apple lost its case in China with either the iPad or iPhone name.

Apple was able to call itself Apple because they were not in the music business (albeit there were a few quibbles about sounds) until they started selling digital songs.

Official Groupon response: https://engineering.groupon.com/2014/misc/gnome-foundation-a...

"There is some recent confusion around Groupon’s intended use of a product name that the Gnome Foundation believes infringes on their trademarks.

We love open source at Groupon. We have open sourced a number of projects on github. Our relationship with the open source community is more important to us than a product name. We’ve been communicating with the Gnome Foundation for months to try to come to a mutually satisfactory resolution, including alternative branding options, and we’re happy to continue those conversations. And if we can’t come up with a resolution, we’ll be glad to look for another name.

We will continue to have an open line of communication with the Gnome Foundation until this matter is resolved."

They don't seem to be accepting comments despite the comment box. Tsk.

So essentially this means nothing.

Looking for another name IS the appropriate resolution.

Offering GNOME a bunch of money to use the name in a specific context could be another. That could be a win for the project overall.

I may regret this, but based on this response there's only one conclusion to come to:

You folks (Groupon) are full of shit!

Possibly not the same thing as continuing to register additional trademarks, no? Smells fishy to me.

I feel bad that reason I'm donating for the first time to a project that has benefited me and so many others over the years is to help then fight a legal battle not to help support development.

I really don't know what happened over there at Groupon: http://gnome.groupon.com/#intro/index

Did they truly not know? Did they just think the Gnome project wouldn't care? That they'll win the lawsuit?

Trademarks aren’t universal; they are divided into classifications e.g. market segments. Just because the name is the same, doesn't mean the PTO will think of them as being in the same space.

Groupon’s product is a tablet based point of sale “operating system for merchants to run their entire operation."

Could be close enough... This is no Vax vs Vax.

Also for a lot of people the shell is the OS. So yeah. A big criteria about trademarks - customer confusion is plausible here.

Did you read the article? Here are some of the goods and services covered by GNOME's registered mark:

- downloadable computer software for creating and managing a computer desktop

- downloadable computer software for use as a graphical user interface

- technical consulting services in the field of computer software

whereas the Groupon product is "a tablet based point of sale operating system for merchants to run their entire operation." Except I'm pretty sure they mean "operating system" in the plain-english sense, not the "computers" sense. Groupon could apparently avoid infringing in the goods categories by not making its PoS app downloadable, but it's hard to imagine it not infringing in the category "technical consulting services".

And yeah, going just from my own idiosyncratic views of the world... a PoS app for tablets does not differ significantly, in terms of what it is, from desktop software for PCs. Here's some coverage from 2012 of an effort to get GNOME software to run on android: http://lwn.net/Articles/510465/

The groupon trademark application (linked elsewhere in the thread) specifically mentions "non-downloadable" before every mention of "software".

It does however mention "technical support services" relating to computer software.. is that sufficiently different than consulting services?

I strongly suspect that the totemic use of "non-downloadable" before "software" in the Groupon filings is related to this piece from the article:

I always thought that was more theoretical than real. For instance, could I launch an OS called CocaCola? I don't think so...

Google launched one called KitKat, so I don't see why not. ;)

Google did it with the willing cooperation of the trademark holder [1], who clearly saw it as good marketing.

[1] http://www.bbc.co.uk/news/technology-23926938

It seems very much real.

Someone once wrote me menacing to sue me because of my nickname which was infringing on some of their "IP" (I kid you not).

I did a quick check and it turns out there is a half dozen brands named something like "riffraff".

For the gnome case, just to stay in topic: http://tmsearch.uspto.gov/bin/showfield?f=toc&state=4809%3Ao...

"GNOME: hosting software for use by others for accessing weather information, for use in monitoring and controlling irrigation systems"

My understanding is the outcome of the Apple Computer vs Apple Corps series of legal battles[0] was consistent with trademarks being siloed into market segments.

[0] https://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer

Apple is a common word. I doubt I could launch CocaColaOS.

It's quite real, but there are some marks which are so well-known (like Coca Cola) that they can argue that the use of the mark in any context is likely to cause consumer confusion.

If you did launch an OS called CocaCola, they would argue that there would be some confusion in the mind of the reasonable consumer as to whether there was some association with the soft drink manufacturer.

No, it's real. If it wasn't, the GNOME Foundation would have not been able to trademark GNOME, since that has been a registered trademark of The Lake County Nursery in Perry, Ohio since 1980. They use it for some line of flowers they sell, I believe.

Note that the word gnome existed before the first company that used it as a product name came around. Not so with CocaCola. That word came into existence for a product, and it is also the name of the company that produces the product. That makes it a lot harder to successfully argue that using it on, say, an OS would not cause confusion.

There's a brand of cola called Ubuntu FWIW.

> For instance, could I launch an OS called CocaCola?

Yes. Edit: so long as you don't use Coca-Cola's design marks

For example, EOS is (1) a model of car (2) a sub-brand of camera (3) an operating system.

Neither Volkswagen nor Canon have shown any interest in smashing the Arista group's use of EOS.

The Gnome / Groupon example is much narrower in market scope but not so close as Phoenix ( BIOS ) versus Phoenix ( database ), which seem to co-exist OK.

No it is real, however there is another rule called trademark dilution. You can't use someone else's ubiquitous trademark, even if it is totally unrelated.

You could call your store Gnome Bikes, but you can't call it Google Bikes. Google is too famous and too unique.

One of the lead security people at Groupon has a big GNOME sticker on his laptop in a pic on LinkedIn. This tells me that groupon is about to get pooped on.

You should definitely save that pic and a timestamp or something to that effect. Bonus points if you do it in front of a lawyer in the right jurisdiction.

Already done yesterday while we were getting all this prepared. :)

Excellent. Groupon already was pretty high on my shit-list, they just elevated themselves to the top 10.

It's a bit more extreme than that; read his summary; https://dl.dropboxusercontent.com/s/93i0gkawa4q15lh/2014-11-...

Edit: cannot be the one you meant? He is part of the GNOME foundation...

Exactly. :/

Message him pretending to be a recruiter and ask him which one he works on.

Yes, because if there's something that every developer does, it's answer their recruiter spam :)

This just went from trademark infringement to calculated, evil, purposive attempt to co-opt someone else's trademark. Seriously, I hope Groupon get crushed under the court - countering this sort of activity is the entire purpose of TM law.

Whoever is steering things at Groupon must be pretty evil to try and play this out.

For those without access to the full LinkedIn page: https://i.imgur.com/ocyqh2N.png

GNOME Foundation - January 2002 - Present (12 Years 11 Months)

4 times member of board of directors...

WTF?!

Or that he's going to be fired for being a liability to the company.

From Groupon, I expect the worst.

How is it possible for Groupon to not know about GNOME? they probably have so many development machines running GNONE in their offices..

I find it hard to believe that none of their tech team has never heard of gnome..

Infact they should be grateful for GNONE for it being a huge part of linux operating systems and they must have surely used it during the course of groupon's existance

> How is it possible for Groupon to not know about GNOME?

A hypothetical sociopath-laden company might have heard of another organisation's trademark and decided to steal it anyway and trade on their competitor's good name. Especially if the hypothetical sociopath-laden company felt they could lawyer-up and defeat the smaller, less wealthy competitor. Could just be a dumb mistake but sometimes malice is the answer.

Or maybe they even work for both companies? https://news.ycombinator.com/item?id=8589879

wow.. i am just thinking that how did a company like Groupon thought they can get away with "did not hear" about gnome.. either they are extremely dumb to not think this through or they have already planned on how to defend and lawyer up with the big bucks

IANAL, but legal protection for trademarks extends to any usage wherein it would create sufficient consumer confusion.

Great example: Apple v. Apple. The computer company agreed to not enter the music industry. To the extent of which they got sued when they added a sound card and multimedia features to their computers. They settled for a boatload of money rather than let a judge decide that they couldn't add any sound/media features.

The bigger issue is that the GNOME foundation lawyers are attempting to deal with these competing registrations individually, rather than as a class, and trying to convince a judge that Groupon is acting in bad faith and attempting to use the legal system to force them to abandon the trademark in the face of excessive legal fees.

> They settled for a boatload of money

I wonder if the GNOME foundation would "sell out" - who should decide, and how much is it worth...?

Selling out could be worth it given the right amount of money. Open source projects have changed their names in the past. And a settlement that could fund developers would be a nice benefit for GNOME.

They could rename to DesktopD :)

> IANAL, but legal protection for trademarks extends to any usage wherein it would create sufficient consumer confusion.

Let's be honest though: walk up to any Joe on the street and ask them what GNOME is. They're not going to recognize it as a *nix desktop environment or a retail POS system.

"Any joe on the street" is not the consumer in this case. People purchasing retail POS systems would know what it is. They are the consumer. They could easily be fooled into thinking that Groupon's product is affiliated with the well known Gnome software when it clearly isn't.

No, but I bet the IT people who decide which computers to buy for POS know what GNOME is.

The standard is not "ask any joe on the street" but "Will the create confusing among the target consumer"

I say yes, People making purchasing choices over a companies IT infrastructure will know what the Gnome Foundation is, that they create software of high quality, and I can see the case for Confusion. ie

IT Manager: WOW Gnome is now making a great looking POS System.

So the fact that "Avg joe" does not know what or Who Gnome is does not matter in the least bit

Shame on you Groupon. Allow me to suggest an alternate name for your PoS tablet: iPad

Donated.

I hope that Groupon finds its ability to attract and retain engineering talent substantially degraded.

In laymans terms, can someone explain why does it costs 80 grand to protect something you registered to be legally yours 8 years ago? If they registered the GNOME trademark in 2006, isn't that supposed to protect them from this kind of shit instead of cost them more money when some big guy comes along and tries to take it?

Lawyers write laws.

Lawyers want to make money.

Lawyers write laws in a way that makes them more money.

How would you write trademark laws to make cases like this easier?

I've created a snapshot of some of the related pages, in case they ever get taken down:

Original GNOME page: https://archive.today/glAva

Groupon Gnome press release: https://archive.today/MQk7o

USPTO page 1: https://archive.today/xWlTk

USPTO page 2: https://archive.today/FpeeU

USPTO page 3: https://archive.today/CpI0s

Groupon Gnome page: https://archive.today/yGhPF

Did I miss the announcement that Darl McBride was taking over as Groupon CEO?

Does Paypal still randomly freeze accounts when they get an influx of money?

What strikes me even more odd is that they reached their daily Bitcoin limit.

If only there was some sort of blockchain technology that allowed us to declare ownership over things and used algorithms and cryptography instead of policies and lawyers...

How is this trademark infringement? Generally speaking, you're allowed to use a trademarked word in a different field (and even trademark in that field yourself!).

The classic example is Dominos pizza vs. Domino sugar:

http://www.wolverine-startuplaw.com/2014/03/06/analyzing-the...

Here, "Gnome" is being used in two "technical" contexts... but that's a pretty broad brush to paint with for claiming overlap.

Considering both projects comprise a software user interface, I'd say it's close enough to be concerned.

I love Gnome and use it daily but obviously it's not a desktop environment and doesn't copy Gnome. I don't think real words like gnome (or windows) should be trademarks and surely not when two companies do two completely different things.

For sure, the gnome foundation doesn't want to sue garden gnome manufacturers as well.

Groupon still exists? Wasn't it on a death spiral a few years ago?

IMHO gnome should spent the money on the people who create and maintain the software, I don't see how funneling resources into the legal system is in any way beneficial to open and free software.

Donated.

What's the point on trademarking something when later you need to pay $80,000 to defend it? The US... smh

Registering the trademark doesn't make it cheaper to fight, it makes it easier to win.

Someone has to pay to do the work of determining if GNOME has a valid complaint. Even if the government were to foot the bill, they would still ask GNOME to put their best case forward, which would involve GNOME hiring lawyers.

The government should do it. If they give you the means of registering a trademark, they should at least be able of determining if a claim is valid.

Right because I really want some randomly assigned government bureaucrat making an argument one way or another on my behalf before whoever decides the matter...

What I mean is that the government itself should evaluate the matter and then decide it, all by itself.

Which is in a sense the same thing - do you trust the government to argue each side of the case and make a decision internally for you? I prefer the court system and an arguer (lawyer) of my choice.

I don't understand. Why do you think a government agency and a court would take a different decision at a trademark matter?

Well you don't have to. You can rock up to the court and say "as the USPTO records show we hold current trademarks for GNOME relating to computing and computing services" and the judge then gets to listen to Groupon's shit about how that's "not relevant" and such and then decides. Just I'm guessing that GNOME don't want to risk that they somehow get an imbecile judge who can't work out which date comes first 1997 or 2014.

Donated few bucks. I encourage everyone to do more than me. Lads, this tiny bit of freedom is in your hands. Please do the proper thing.

Ehm.. so.. GNOME wants our help now. But how did they behave when GNOME 3 was announced to not work without systemd? Or hey, anyone remember that discussion on a GNOME developers' mailing list, where they planned to take out theming support, because "it is going against the ubiquitous experience we envision GNOME 3 to be"?

This smells fishy to me. (I said it more harshly, but realised that I went too far, sorry about that.)

Feel free to shoot holes in my theory.

Following the links to Groupon's Gnome product pages makes it pretty simple to see that the basic claim is quite clearly real.

No idea where you go from "this open source project doesn't develop in the direction I expect/want" to "this open source project deserves to lose their brand".

You have no theory

That's mighty nice of Groupon to drop money on 28 trademark applications just so the GNOME Foundation (who incidentally do more than make the GNOME desktop environment) can boost their end of year donations. They even managed to get Debian and Fedora in on it too!

But really, it must be pretty disheartening to see people accuse your organisation of running a scam, just because they don't like design decisions a number of developers on a handful of your products made. Especially when the software in question has nothing to do with the discussion.

Groupon has indeed filed several trademark applications for the Gnome name, e.g., http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4801:uz6... What is the purported scam?

Regardless of what you think of GNOME, it's still a pretty slimy thing for Groupon to do. That kind of behaviour may be worth opposing on principle.

"First they came for Gnome, and I did not speak out..."

Where exactly was it "announced" that GNOME 3 does "not work without systemd"?

GNOME 3 works on FreeBSD[1][2], you just don't get the robust and secure virtual terminal switching that only systemd's logind running on Linux can provide.

GTK+ 3 is now fully themeable with standard W3C CSS[3]. You may need to use Tweak Tool to change your theme, but is that really too much to ask for?

But please, don't let these facts stop you from cheering on large corporations as they trample all over open source projects.

[1] http://blogs.gnome.org/mclasen/2014/02/19/on-portability/ [2] http://blogs.gnome.org/desrt/2014/03/26/gnome-3-12-and-freeb... [3] https://developer.gnome.org/gtk3/stable/GtkCssProvider.html

The only argument I tried to make, admittedly poorly, is that I notice a contrast between how good they say they are for open source, and actual behaviour from the developers.

I did not say or intend to say "good for them, I hope GNOME loses their brand", well ok I did say that a little. So let me state it differently - that many of their own design decisions also were against open (libre) source philosophies.

I don't think your definition of open source philosophies is widely shared.

The product being free software doesn't entitle you to anything regarding their project policies, steering and development.

It entitles you to a number of rights on the resulting product, nothing less and more. And that's already quite a lot.

If I recall correctly, it's not just virtual terminal switching that you lose but also the ability to shutdown, reboot, suspend and hibernate your PC from the GUI - all of which now require logind - and probably other things like device mounting too. Gnome's also moving those to use Linux-specific kdbus ioctls directly. Oh, and those links are from 6 months ago, I wouldn't be surprised if things have gotten worse since then - Gnome have done stunts like this that they've gone back on in the past, such as their announcement that logind would work on non-systemd systems.

Here is an implementation of the logind API for openbsd:

https://uglyman.kremlin.cc/gitweb/gitweb.cgi?p=systembsd.git...

Still incomplete as of this writing, but it'll be based on an OpenBSD-specific bsd_auth API.

I saw that and it doesn't implement anything - all it does is register the org.freedesktop.login1_manager name with DBus. It doesn't even try and implement so much as a single do-nothing stub version of any API call.

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