VC-backed company just killed my EU trademark for a small OSS project
A $160M-funded company named [name-redacted] (Trademark [number-redacted]) 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 ...
70 comments
[ 3.0 ms ] story [ 83.4 ms ] threadOn 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.
>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.
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"
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."
Tbh...use should already be satisfied by having a Github or website and using the registered name.
Keep us posted.
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.
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.
This is the best advice you can get.
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
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.
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
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.
What order of magnitude are those, if you are at liberty to say?
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.