Lol, "within 5 days". Some people are so very unreasonable... nor does it massively sound like they know what they're talking about. 5 days appears to be a little too short imo, wouldn't most of these kind of things be measured by the week/month or is this just scare tactics.
Can I send a cease and desist that says minus 10 seconds? (meaning they've already failed to comply with it :D )
Frankly I thought the tone of "hey, we need to ask you to stop" was a refreshing and reasonable change from the usual threats and bluster to be found in most C&D letters.
Whether they have a valid claim or not would be for a lawyer to decide, but if they do have a registered trademark for Magnolia that relates to computer/internet services they're in pretty good shape.
Yes. If you do not defend a trademark you run the risk of having it deemed abandoned, after which people can use it freely or even re-register it for themselves.
The details are worth remembering. They had an enormous database (half a terabyte or so) due to their decision to store cached content in database tables. Their backup strategy was to try to sync their live DB files to another machine over firewire. When the master database eventually got corrupted, they dutifully rsynced the corrupt files over to the "backup".
Once the database finally rolled over and died, they claimed to be unable to recover any user data at all from the hard drives. But it seems they never bothered to go to a vendor specializing in MySQL recovery. Offers of help from Percona went unanswered, at least in public.
Full disclosure - I run a competing site (pinboard.in). Magnolia's stunning negligence in securing user data, and Larry Halff's attempts to cast himself as a victim of internet trolls when confronted by his angry users, are pretty much what motivated me to start the project.
This is a much better reply than someone else's a few levels up. You analyzed the mistakes and you decided to learn from them and create a competing product.
That is much more enjoyable to read about than "that guy is an idiot". I wish I could upmod twice.
He demonstrated pretty clearly that he had no idea what he was doing when he lost all the data behind the site, and then revealed that he had set whole thing up to run on OS X (a sure sign of a dilettante, as someone who had to administer other people's boxes running Mac OS X Server for several years) and that his backup scheme naively synced the in-use database files.
Now he's decided to change the name based on a ridiculously weak letter that anyone who'd even bothered to look at the introduction to the Wikipedia article on Trademarks would have brushed off with laughter.
Yeah, your social bookmarking site did much better.
(My point here is that maybe things aren't as simple as you are making them seem. It is easy to critique other's mistakes, but it's not quite as easy to avoid them in the first place.)
Running a public, for-profit website for years without generating a single usable backup is a fireworks-party-on-the-hindenburg class of mistake. There is no excuse for that level of incompetence.
The lawyers that I used to work with would advise merely putting the letter in a filing cabinet and taking no action on it ("Even if they have no case, having you flapping your lips in print just makes my job potentially more difficult later").
That said, I'd be inclined to write him something like this:
Dear CEO:
I received your letter regarding your belief that ma.gnolia.com is in violation of your trademark for "Magnolia" in the United States.
In the future, you may find that when sending a cease and desist letter, it is helpful to include pertinent details of your trademark registration such as reference numbers, a detailed sample of the registered mark, and what classification you are registered under. Your legal representation can explain the significance of these to you. Without them it is impossible for me to conclusively evaluate whether ma.gnolia could possibly infringe on your registered trademark.
As a matter of US law, your trademark is likely not to the word "Magnolia" in all senses, but probably scoped to its use in CMS software. As ma.gnolia does not sell CMS software, there is no possibility of market confusion with regards to the purchase of CMS software. We both have presences on the Internet, but frankly, trademark law is not a guarantee that you will be the only mention of the word Magnolia on the Internet.
You claim that "[ma.gnolia's] graphic appearance can be totally related to our CD". It is unclear to me that you are making a claim here based in trademark law. If you are, I would need a copy of your registered specimen to compare it to our logo to determine whether the claim is valid. That being said, a cursory inspection of the logo present on your website shows the word Magnolia. A cursory inspection of our logo shows the word Ma.gnolia with a giant flower on it. Your claim that these are confusingly similar is baseless as a matter of law.
Your lawyers are welcome to contact my lawyers if they have any other questions.
In the UK at least any other use of a similar mark to your RTM in that classification is potentially infringing.
Whilst USA is a signatory to the Nice Classification I don't think that means anything beyond the requirement to use the Nice terms as classifiers, presumably finer classification can be used as the region of exclusivity.
Four EU and UK results from ipo.gov.uk in classes 9,24:
Trademark law generally requires them to defend their trademark or lose it. This means lots of letters from Apple inc's lawyers to small orchards in the middle of nowhere.
The general response is either to ignore it or send back a simple letter saying "thank you - we don't believe there is sufficent similarity"
If they mean it they will try an take you to court, then you can decide wether to fight or change your name. At the moment they probably don't expect you to do anything - this is just something they have to send out in case anyone ever does a direct copy of their software and calls themselves magnolia. In which case they have to prove they have always protested.
"Trademark law generally requires them to defend their trademark or lose it. This means lots of letters from Apple inc's lawyers to small orchards in the middle of nowhere."
No, it doesn't.
You don't automatically lose a mark through lack of enforcement. There are specific ways that marks may be weakened (genericization, tarnishment, dilution) depending on the action or inaction of the trademark holder, but someone defending an alleged infringement would still have to argue in court that one of these specific cases applied.
And in no case does it mean that Apple Inc. has any reason to contact fruit growers. (This should be obvious from the fact that Apple does not in fact send cease-and-desist letters to fruit growers.)
You can lose a trademark case if you have been too selective in who you complain about. Especially if you are seen to be ignoring small time infringers but only going after those with big pockets, the case can be thrown out.
Lawyers tend to err on the side of sending C+D letters to anyone, such as the case of Sun and the island of Java tourist authority.
The apple/orchards bit was irony - it's in the dictionary.
The other problem is judges/juries and computers. The trademark has to be in the same field, but the courts aren't always as tech savvy as HN readers and frequently regard all 'computer stuff' as the same field.
So while we would see a CRM package and a forum website as completely different as a magnolia plant shop and a magnolia paint company - a judge might not.
That's the exact opposite of the way the law works: you CAN ignore small-time infringers, b/c you don't need to actively patrol for abuse -- enforcement actions only need be sought once an infringement is discovered.
Courts don't have to be tech savvy for trademark law, which predates computers by some 8 or 9 decades. Most of the finer distinctions of trademark law arise not from the computer arena but from the retail arena. You seriously underestimate the level of specificity required to successfully bring a trademark infringement action.
From what I recall, the old Ma.gnolia did have backups. They just weren't tested, and thus, it turned out that they weren't functional. It was a failure of method, rather than an outright failure to try.
The Magnolia trademark hasn't been issued to Magnolia Systems yet. It's only been published for opposition. Which means if the gnolia.com crew have been using the mark in commerce before March, 2006, they can file an opposition claim.
The whole cease and desist letter is bogus until the trademark has been approved. However, if gnolia.com doesn't oppose the trademark claim now, before it's approved, then it's an uphill battle if the other company decides to sue.
Note Magnolia Systems is filing under multiple subsections - the only one you care about is the online commerce section. They can have all the others.
26 comments
[ 3.4 ms ] story [ 64.4 ms ] threadCan I send a cease and desist that says minus 10 seconds? (meaning they've already failed to comply with it :D )
Whether they have a valid claim or not would be for a lawyer to decide, but if they do have a registered trademark for Magnolia that relates to computer/internet services they're in pretty good shape.
At least this time around he's blogging about the uninformed idiocy he's about to do before he does it...
I think he should be able to get away with renaming the site Ma.gnolia (with a dot).
Once the database finally rolled over and died, they claimed to be unable to recover any user data at all from the hard drives. But it seems they never bothered to go to a vendor specializing in MySQL recovery. Offers of help from Percona went unanswered, at least in public.
Full disclosure - I run a competing site (pinboard.in). Magnolia's stunning negligence in securing user data, and Larry Halff's attempts to cast himself as a victim of internet trolls when confronted by his angry users, are pretty much what motivated me to start the project.
That is much more enjoyable to read about than "that guy is an idiot". I wish I could upmod twice.
Now he's decided to change the name based on a ridiculously weak letter that anyone who'd even bothered to look at the introduction to the Wikipedia article on Trademarks would have brushed off with laughter.
(My point here is that maybe things aren't as simple as you are making them seem. It is easy to critique other's mistakes, but it's not quite as easy to avoid them in the first place.)
That said, I'd be inclined to write him something like this:
Dear CEO:
I received your letter regarding your belief that ma.gnolia.com is in violation of your trademark for "Magnolia" in the United States.
In the future, you may find that when sending a cease and desist letter, it is helpful to include pertinent details of your trademark registration such as reference numbers, a detailed sample of the registered mark, and what classification you are registered under. Your legal representation can explain the significance of these to you. Without them it is impossible for me to conclusively evaluate whether ma.gnolia could possibly infringe on your registered trademark.
As a matter of US law, your trademark is likely not to the word "Magnolia" in all senses, but probably scoped to its use in CMS software. As ma.gnolia does not sell CMS software, there is no possibility of market confusion with regards to the purchase of CMS software. We both have presences on the Internet, but frankly, trademark law is not a guarantee that you will be the only mention of the word Magnolia on the Internet.
You claim that "[ma.gnolia's] graphic appearance can be totally related to our CD". It is unclear to me that you are making a claim here based in trademark law. If you are, I would need a copy of your registered specimen to compare it to our logo to determine whether the claim is valid. That being said, a cursory inspection of the logo present on your website shows the word Magnolia. A cursory inspection of our logo shows the word Ma.gnolia with a giant flower on it. Your claim that these are confusingly similar is baseless as a matter of law.
Your lawyers are welcome to contact my lawyers if they have any other questions.
Cordially yours,
http://tess2.uspto.gov/bin/showfield?f=doc&state=4004:ri...
Their trademark is for [Magnolia] is scoped to "in the field of content management".
I cant find the supposed Europe one.
In the UK at least any other use of a similar mark to your RTM in that classification is potentially infringing.
Whilst USA is a signatory to the Nice Classification I don't think that means anything beyond the requirement to use the Nice terms as classifiers, presumably finer classification can be used as the region of exclusivity.
Four EU and UK results from ipo.gov.uk in classes 9,24:
http://www.ipo.gov.uk/madridEU?madridEUnum=U00000909350 - Magnolia Int. Ltd.
http://www.ipo.gov.uk/domestic?domesticnum=2510591 - Magnolia Hi-Fi, Inc.
http://www.ipo.gov.uk/domestic?domesticnum=2422850 - Jayne Nation (Dr)
http://www.ipo.gov.uk/madridEU?madridEUnum=U00000898571 - Boehringer Ingelheim International GmbH
The general response is either to ignore it or send back a simple letter saying "thank you - we don't believe there is sufficent similarity"
If they mean it they will try an take you to court, then you can decide wether to fight or change your name. At the moment they probably don't expect you to do anything - this is just something they have to send out in case anyone ever does a direct copy of their software and calls themselves magnolia. In which case they have to prove they have always protested.
No, it doesn't.
You don't automatically lose a mark through lack of enforcement. There are specific ways that marks may be weakened (genericization, tarnishment, dilution) depending on the action or inaction of the trademark holder, but someone defending an alleged infringement would still have to argue in court that one of these specific cases applied.
And in no case does it mean that Apple Inc. has any reason to contact fruit growers. (This should be obvious from the fact that Apple does not in fact send cease-and-desist letters to fruit growers.)
Lawyers tend to err on the side of sending C+D letters to anyone, such as the case of Sun and the island of Java tourist authority. The apple/orchards bit was irony - it's in the dictionary.
The other problem is judges/juries and computers. The trademark has to be in the same field, but the courts aren't always as tech savvy as HN readers and frequently regard all 'computer stuff' as the same field. So while we would see a CRM package and a forum website as completely different as a magnolia plant shop and a magnolia paint company - a judge might not.
Courts don't have to be tech savvy for trademark law, which predates computers by some 8 or 9 decades. Most of the finer distinctions of trademark law arise not from the computer arena but from the retail arena. You seriously underestimate the level of specificity required to successfully bring a trademark infringement action.
The whole cease and desist letter is bogus until the trademark has been approved. However, if gnolia.com doesn't oppose the trademark claim now, before it's approved, then it's an uphill battle if the other company decides to sue.
Note Magnolia Systems is filing under multiple subsections - the only one you care about is the online commerce section. They can have all the others.