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One interesting thing to me, is that it is pretty clear that the kik lawyers pretty dramatically over enforced their trademark.

For those who don't know, the purpose of trademarks is to prevent customer confusion; essentially we don't want people to be able to sell cheap knock-offs of someone else's thing without the general public being able to easily distinguish between them. In practical terms, trademarks are "scoped" by their "goods and services" declarations.

For example, Apple the device manufacture[1] and Apple the record label[2] could both be trademarked because they had non-overlapping goods and services declarations... until iTunes started selling music[3].

If you look at kik's trademark application[4], you can clearly see that the trademark is limited to chat/media consumer applications, a pretty obvious over enforcement.

[1] http://apple.com

[2] http://applerecords.com

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

[4] https://trademarks.justia.com/858/93/kik-85893307.html




Most Germans wouldn't know that kik is also a chat app ;-)

"KiK is the largest textile discounter chain in Germany and operates about 3,200 stores in Germany, Austria (since 1998), Slovenia and Czech Republic (since 2007), Hungary and Slovakia (since 2008), Croatia (since 2011) and Poland (since March 2012)."

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


Being from Germany, I had initially assumed that was in fact the company in question. I was wondering why a textile discounter would care about some NPM module...


Haha.

There is a British company selling eCigs called Kik.co.uk too.

Seems Kik is a fairly common term, even for companies.


This shows the claims from kik messenger are not valid, at least in Germany.


The Apple thing doesn't work though, for a specific reason: it's a very common word/name.

Smith is a very common surname. If one person starts the Smith Automobile Company and another person starts the Smith Farm, obviously there's no issue there. That's because none of us invented "Smith", it's understood to be a common name, etc.

On the other hand, if I start "The Google Paper Company", I'm pretty damn sure I would quickly and easily lose that case, despite the fact that google does not sell paper. And nobody would think that is weird, because Google is very obvious an invention (Yeah, I know, "googol", but the spelling makes it unique).

"Kik" is a lot closer to the "google" situation than the "apple" situation.


That is not how trademarks work. Feel free to start the Google Paper Co. Uniqueness is not a merit for trademark infringement. To infringe you have to be a competitor.


That is how some trademarks work. Google is by now a famous mark and, as such, gets additional protection beyond what mere mortal companies do: http://itlaw.wikia.com/wiki/Famous_marks

I guarantee you won't last long if you start a Coca-Cola School of Hairdressing, even though the beverage company doesn't compete for that business.


If that is the case, then it just further invalidates the argument for Kik because it is most certainly not a famous mark.


Famous and "Unique" aren't the same thing. I was responding to the theory that because "Google" is a made-up word, they'll receive extra protections. That's false. That said my example was a bad one, since Google is a famous mark Google Paper Co. would likely be infringement.

Feel free to start Kik Paper Co, however.


That is incorrect. You are also infringing if people could reasonably assume an affiliation due to your use of the trademark, which would definitely be the case with Google Paper Co. You're basically piggy-backing on (and diluting) the brand recognition they've built.


You are correct in that my Google example would likely be trademark infringement because Google is a famous mark. Kik is not a famous mark, so for this case the famous/well-known aspect of trademark infringement is entirely moot.

And keep in mind that the OP I was responding to was arguing that if the name is unique it gets extra protection. That's false. Fame offers extra protection, uniqueness does not.


"According to Kik Interactive, as of December 2015, Kik Messenger had approximately 240 million registered users, and was used by approximately 40 percent of United States teenagers." https://en.wikipedia.org/wiki/Kik_Messenger

Are you sure a court wouldn't consider that qualifying as a famous mark? I'm not going to dig into case law, but my guess is it very well could be.

"Evidence relevant to the fame of a trademark may include sales, advertising and revenue figures; geographical scope of use; channels of trade; registrations in home and other countries; past enforcement efforts; and the results of consumer recognition surveys (provided the survey methods are approved by the courts in that jurisdiction)." http://www.inta.org/TrademarkBasics/FactSheets/Pages/FamousW...


> Are you sure a court wouldn't consider that qualifying as a famous mark? I'm not going to dig into case law, but my guess is it very well could be.

Teenagers represent 9.5% of the US population meaning that 3.8% of the US population (using their 40% figure) have "used" their app. Alternatively the 240 million registered users would imply about 3.5% of the total global population has used it.

I can say that I honestly have ZERO doubt that "kik" would never be ruled famous by any possible measure.


I don't know whether you're right or not, but I do know it isn't prudent to have ZERO doubt about anything - but especially legal matters - without first doing the relevant research. And even then, courts disagree all the time, so I can't imagine ever being 100% certain that a ruling would never go a certain way.

To be even reasonably certain in this case, I would need case law of similarly well-known brands being challenged. Do you have some? Capturing 40% of their target market seems pretty well known to me, but again, that's meaningless without the case law.


Check out the case law about Mcdonalds v Quality Inns (re: McSleep Inns)

Mcdonald's was able to show that there would be consumer confusion DESPITE Mcdonald's not doing hotels nor Mcsleep inns not doing food.

As a result, Mcdonalds basically has an open trademark enforcement on "Mc-" whatever.

While I'm not fond of the judgement here, it was nonetheless decided thusly, and contradicts your otherwise accurate (so far as I know) statement. (And to weaken my own point, I believe Apple lost a similar case about i<whatever>, so nothing here is clear and reliable.)



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.


> 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.



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.


Yep, I was going to say the same thing. As you say we can look up the US trademarks [1, 2] and see that this mark covers:

    Computer software for use with mobile phones and portable
    computing devices to:

    - download audio, video, digital photos and programs;

    - electronic payment systems, namely, a computer application
      software used for processing electronic payments to and
      from others;

    - computer software for use with mobile phones and portable
      computing devices to create video and digital photos to share
      with other users; computer software for use with mobile phones
      to launch other applications and connect to other software
      services. 
That's it.

[1] http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4804:lir...

[2] http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4804:lir...


USPTO Trademark Pro Tip: search links are session specific. Use the blue TSDR button's link instead:

https://tsdr.uspto.gov/#caseNumber=86930821&caseType=SERIAL_...


"Providing an interactive website featuring online non-downloadable software" indicates to me that there could indeed be confusion in a repository of software code to be used by other applications.

I'd suggest it's certainly not obvious over-enforcement.


But TFA's "Kik" seems to be sort of a "project generator" like yeoman or something. There is no overlap between that and even the generously expanded description of the litigious "Kik" that you cite.


So, in your opinion, if I built a software application that let you design and order plate glass in decorative form to be placed in the walls of your house and named this app "Windows" would Microsoft's inevitable attempts at protecting their trademark be overreaching? The windows I named my app for are physical things and Microsoft's are virtual, but I'm releasing a software product called "Windows."

Both kik names exist in the realm of software. There's an argument to be made for confusion.


Yes, even this faintly ridiculous fake example of painstaking mental construction would be overreach. No one would ever download your hypothetical architectural software expecting to get an operating system.

As a public service, some toilet or compost bin manufacturer ought to start "violating" trademarks by naming toilets etc. after litigious companies. We'd all get a kik out of hearing them argue that database consumers are likely to confuse the Oracle database with the Oracle water closet. [EDIT: "Sure it's a CRUD app, but I'm more interested in Deletion than Retrieval!"]

Of course there are arguments to be made; lawyers are involved.


People with experience in software wouldn't likely confuse the two pieces of software. But most people think "computers" and stop there. Most people visiting an app store would see "Windows" for 99 cents, buy it, then complain when it wasn't Microsoft Windows. They wouldn't read descriptions, and they don't know what an operating system is.

Confusion. Microsoft is very likely to prevail in the infringement lawsuit.


Those products would not conflict there isn't a giant category called computers and further you can't just take a generic word out of the English language and take possession. Apple is a generic word for example but not in computer technology.

This matter has even already been litigated. Microsoft Windows is a valid trademark, Windows is not defensible.

Please see lindows aka linspire.


That case was settled and a decision from a court was never reached. That is pretty far from claiming a Windows trademark is indefensible.


Microsoft's claims were rejected by the court, which asserted that Microsoft had used the term windows to describe graphical user interfaces before the Windows product was ever released, and that the windowing technique had already been implemented by Xerox and Apple Computer many years before. Microsoft sought a retrial and after this was postponed in February 2004, offered to settle the case. As part of the licensing settlement, Microsoft paid an estimated $20 million, and Lindows, Inc. transferred the Lindows trademark to Microsoft and changed its name to Linspire, Inc. [0]

Oh yeah, it seems like M$ were on the verge of winning that appeal, and only discontinued (and paid Lindows a multiple of its annual profit) out of pity.

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


Funny that you picked that example windows is actually not a valid trademark at all. This has been tested in court.


Can you provide a link to a case? The only one I recall is about Lindows and that case settled out of court.


Just a general comment about the whole thread: trademark law is far more complicated and particular than you know (unless you're an IP lawyer; then you might appreciate it). Not only are developers used to problems that can have provable or obvious answers, trademark law really hasn't caught up with the speed of the internet, especially the instant and global reach that a domain name has.

- The only thing you can say about a trademark dispute like this, given the information that's public, is that "it depends on the specific situation as well as the perception of a large enough user base who might get confused".

- Trademark owners can ask (or C&D demand) just about whatever they want. What they could actually force you to do in a court is far, far less than what they typically ask.


They have the responsibility to defend their trademark, otherwise it could be abused by a rival claiming they did not adequately defend it. That said, NPM could have just said, "No, stop bothering us" and the lawyers might have backed down, satisfied their attempt to defend the trademark fulfilled their duty.


> They have the responsibility to defend their trademark, otherwise it could be abused by a rival claiming they did not adequately defend it.

Agreed, but you can do this without pissing off everybody in the universe.

http://www.businessinsider.com/jack-daniels-wrote-what-has-t...

Before, I had no idea who kik was. Now, I know them as a bunch of jerks.

Big fail for a "social media" company.


Yeah but literally nobody is going to care about this outside the programmer community, and we're not their target audience.


"Are you a developer? Kik has open-sourced tools and libraries to help you create great web experiences ..."

This is on their homepage. They want developer to use their Pedo enabler API.


>They have the responsibility to defend their trademark

This is not limited to only issuing cease and desists. Kik Interactive can offer a zero cost license for the trademark if they want to assert their ownership, but let the project continue to use their name.


Some lawyers do not favor low-conflict resolutions, and would not recommend such to their clients.


They weren't defending their trademark. They overstepped their declared industry and maliciously had another's software altered with no valid reason.

NPM should have already had policies in place to prevent this kind of tampering with its repository.


You do not have to defend your trademark against people who are not infringing it. You can only infringe a trademark when you use the mark in the same context it's registered in.

IANAL.


I hear this all the time but have never seen an actual example? Are there any? (Where defense was existent but perhaps incomplete, not nonexistent)




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