I think we should all should hold off on the
speculation and wait for what the IP lawyer that Paul
mentioned has to say before making any more
suggestions or encouraging Paul to make any more
decisions.
PS: The JDE User guide
(http://jde.sunsite.dk/jdedoc/ug/jde-ug.html) on the
webpage will probably have to be changed as well to
match whatever is the new name on the website.
--- Jim LoVerde <[EMAIL PROTECTED]> wrote:
> Here's another feather in your cap. Since their
> current trademark
> registration was filed for opposition February 20,
> 2001 and the fact
> that the opposition period lasts 6 months, I think
> you could potentially
> file an authentic opposition claim any time before
> August 20th that
> could be used to prevent them from obtaining the
> trademark at all.
> (Notice that unlike the "cancelled" filing, the
> current trademark has
> not been registered...meaning that it is still being
> authenticated.).
>
> You could even use this as leverage to request that
> they reply to your
> response to them within 15 days (to give you ample
> time to consider your
> options). Of course, doing so would obviously be
> percieved as much more
> confrontational and might provoke them into further
> legal action.
>
> Another fine point, since you changed the web site
> to JDEE it would be
> possible for them to argue that you have ceased to
> used the mark JDE and
> that now their existing filing for JDE is valid. I
> hate legal crap, but
> that's my interpretation. (In court of course, you
> could argue that the
> change was made due to confusion regarding their
> filing of the "cease
> and desist" letter, but that's sort of irrelevant.
> The whole point is
> to avoid anything beyond the exchange of viewpoints
> and hopefully an
> eventual compromise.)
>
> Argghh....I've really got to get back to
> investigation all of the new
> "features" in VisualAge and WebSphere 4.0....
>
>
> Jim LoVerde wrote:
>
> > OK, again based on what I have read in layman
> terms, if that is the
> > meat of their argument, then it looks like they
> are basing their
> > claims on the generic terms of "dilution" of their
> trademark. Which
> > basically means that they feel they have invested
> significant effort
> > into developing the name and that any use of it
> would "confuse and
> > dilute" the value of their efforts. I don't see
> how this could be the
> > case given the pathetic results of searching their
> own web site for
> > JDE.
> >
> > Also, given that you posted it in January of 1997
> (which is before
> > their filing of the trademark on August 17, 1999),
> so long as you can
> > provide witnesses (e.g. people who looked
> at/downloaded the software
> > at that time) I don't think they even have a leg
> to stand on. The
> > fact that they cancelled the previous trademark
> means that unless they
> > can prove that they continued to use the mark
> continuously through the
> > new filing (which was filed as "intent to use",
> making it almost self
> > evident and admitted that they discontinued the
> use) they have now way
> > of enforcing the trademark.
> >
> > But here's the catch. Since you don't have a
> registered federal
> > trademark for JDE, you are relying on "common law"
> trademarking. From
> > what I have read, this means that if you use a
> trademark in a state
> > you have rights to it in that state and any other
> states that you use
> > it...but you don't have those rights in states
> where you haven't used
> > it.
> >
> > But given the "locationless" nature of the
> internet, I'm not sure how
> > posting to the Internet would be interpretted.
> Without a doubt, if
> > you could provide a witness from each of the 50
> states (and possibly
> > US territories) who had seen/downloaded JDE prior
> to the filing you
> > would be ok. If not, then I think they could
> pursue on the
> > technicality that you would not be allowed to use
> the mark in states
> > where it wasn't used prior to their application
> for a federal mark.
> > (I hope that makes sense...just trying to think
> like a lawyer here ;^)
> >
> > So I think the real question is whether you can
> collect a list of
> > people who will testify that they have used JDE
> prior to August 17,
> > 1999. Personally, I can do precisely that. I
> know I used JDE on a
> > project during the first half of 1999. So
> Illinois is covered.
> >
> > Another interesting point. If you look at their
> original filing from
> > July 16, 1990 through December 14, 1998, they had
> registered the
> > trademark as being associated with:
> >
> >> Goods and Services (CANCELLED) IC 009. US 038. G
> ? S: computer software for use in business,
> government, educational institutions and hospitals.
> FIRST USE: 19801200. FIRST USE IN COMMERCE: 19801200
> >> (CANCELLED) IC 041. US 107. G ? S: computer
> educational training services. FIRST USE: 19801200.
> FIRST USE IN COMMERCE: 19891200
> >>
> >> (CANCELLED) IC 042. US 100 101. G ? S: consulting
> services in the field of computer software; computer
> software design services; computer programming
> services. FIRST USE: 19801200. FIRST USE IN
> COMMERCE: 19801200
> >>
> >
> > My interpretation is that the purpose of JDE in no
> way violates this
> > usage. However, their filing in 1999 states:
> >
> >
> >> Goods and Services IC 009. US 021 023 026 036
> 038. G ? S: COMPUTER SOFTWARE APPLICATIONS IN THE
> FIELDS OF BUSINESS INDUSTRY, GOVERNMENT, EDUCATIONAL
> INSTITUTIONS AND HOSPITALS FOR USE IN FINANCIAL
> ANALYSIS, BUDGETING, ACCOUNTING, PAYROLL
> PREPARATION, BILLING, REPORTING, BUSINESS PLANNING
> AND MANAGEMENT, LOGISTICS PLANNING AND MANAGEMENT,
> DISTRIBUTION PLANNING AND MANAGEMENT, PROJECT
> MANAGEMENT, HUMAN RESOURCES MANAGEMENT, CUSTOMER
> RELATIONSHIP MANAGEMENT, MANUFACTURING PLANNING AND
> MANAGEMENT, SERVICES MANAGEMENT, PROCESS MANAGEMENT,
> SUPPLY CHAIN MANAGEMENT, MAINTENANCE PLANNING AND
> MANAGEMENT, ASSET MANAGEMENT, PROCUREMENT,
> INFORMATION MANAGEMENT, ELECTRONIC COMMERCE AND
> SOFTWARE DEVELOPMENT
> >> IC 042. US 100 101. G ? S: CONSULTING SERVICES IN
> THE FIELD OF COMPUTER SOFTWARE; COMPUTER SOFTWARE
> DESIGN SERVICES FOR OTHERS; COMPUTER PROGRAMMING
> SERVICES FOR OTHERS; COMPUTER SERVICES, NAMELY
> PROVIDING INFORMATION IN THE FIELDS OF COMPUTER
> SOFTWARE, COMPUTER HARDWARE, COMPUTER SUPPORT AND
> INFORMATION TECHNOLOGY USING A COMPUTER NETWORK
> >>
> >> IC 041. US 100 101 107. G ? S: COMPUTER
> EDUCATIONAL TRAINING SERVICES
> >>
> >
> > Notice the use of "software development". This
> would be the obvious
> > conflict. However, if we can prove that JDE was
> posted and used in
> > 1997 then I don't think the 1999 application holds
> any water.
> >
> > Again, none of this means that they can't pursue
> the matter and file
> > for court action. However, I think you can gather
> a lot of evidence
> > that you can provide them with to convince them
> that they do not have
> > a valid claim. It at least warrants them
> explaining why they think
> > they do, so that you can decide whether you feel
> their claim is worth
> > possible litigation. (A subtle reminder about the
> bad press these
> > incidents create for companies might also help
> here.)
> >
> > I dunno, in the end it is obviously completely
> your decision.
> > Personally though, I would at least present these
> facts to JD Edwards
> > and ask them if they still feel you are in
> violation of their
> > trademark. And if so, please refer to which
> statutes they feel you
> > are in violation of. (I would present it in such
> a way that states
> > that you are open to possibly changing the name
> but that you aren't
> > sure why you should have to...the goal is to
> receive a legitimate
> > response and not a supeona to show up in court).
> >
> > Based on what I read it seems that the vast
> majority of valid
> > trademark infringement cases result simply in a
> court injunction
> > against the guilty party. The possible monetary
> penalties that I know
> > of are "legal fees" (in which case, I think they
> would have to prove
> > you were unfounded in contesting their claim), and
> "loss of income" in
> > which case they have to prove that your use of the
> trademark has
> > directly impacted their bottom line.
> >
> > OK, IANAL but I'm beginning to think I should play
> one on TV...
> >
> >
> > Paul Kinnucan wrote:
> >
> >> At 09:23 PM 7/18/2001 -0500, you wrote:
> >> >You are correct regarding enforcement. Hence
> the reason that they
> >> sent
> >> >Paul the "cease and desist" notice. However,
> that only means that
> >> they
> >> >took a cursory glance at JDE, saw that there
> might be a conflict
> >> and took
> >> >the appropriate measure to notify the potential
> violator.
> >> >
> >> >They are probably unaware of the duration of
> time that JDE has been
> >> used
> >> >as well as the details of what it really is and
> the fact that the
> >> full
> >> >name is "Java Development Environment". For
> these reasons it seems
> >>
> >> >perfectly valid to provide them with the facts
> regarding the
> >> product,
> >> >provide several possible solutions, and request
> further information
> >> with
> >> >regard to their ownership of the trademark, and
> which sections of
> >> the law
> >> >they are citing as a violation.
> >> >
> >>
> >> Here is the meat of their claim:
> >>
> >> "Your use of "JDE" in your organization name and
> on your web site
> >> is likely
> >> to cause consumer confusion as to possible
> affiliation or
> >> sponsorship by
> >> J.D. Edwards and confusion as to the source,
> origin, or approval of
> >> goods and
> >> services offered by your organization. Such use,
> without
> >> authorization,
> >> constitutes
> >> infringement of J.D. Edwards' rights in its marks
> and unfair
> >> competition, even
> >> if a disclaimer is included."
> >>
> >> Needless to say this claim is patently absurd.
> First, I have no
> >> organization so it is factually wrong. Secondly,
> my website makes it
> >> clear
> >> that JDE stands for Java Development Environment
> so there is no
> >> possibility
> >> of a consumer confusing my software with any
> product or service
> >> offered by
> >> J.D. Edwards. My site nowhwere mentions J.D.
> Edwards or any of its
> >> product
> >> or services. Thirdly I do not offer any product
> or service that
> >> competes
> >> with any product or service offered by J.D.
> Edwards.
> >>
> >> [snip]
> >>
> >> >I would not recommend asking them if JDEE is an
> acceptable name
> >> without
> >> >first changing the name of the product on the
> web site and getting
> >> formal
> >> >proof of use of the name (after which any future
> trademarking is
> >> >irrelevant due to common law). Otherwise, they
> could submit an ITU
> >>
> >> >trademark registration for the new name prior to
> that decision.
> >> >
> >>
> >> I have just changed the website back to use JDEE
> to forestall such a
> >> move.
> >>
> >> - Paul
> >
>
=====
LAWS OF COMPUTER PROGRAMMING, VIII
Any non-trivial program contains at least one bug.
http://www.25hoursaday.com
Carnage4Life (slashdot/advogato/kuro5hin)
__________________________________________________
Do You Yahoo!?
Get personalized email addresses from Yahoo! Mail
http://personal.mail.yahoo.com/
