Re: Renaming Proposal
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.) ArgghhI'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 AN
Re: Renaming Proposal
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 st
Re: Renaming Proposal
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. Possible solutions: 1. Obtain permission from JDE to continue to use the mark. (The owner of a trademark is fully allowed to grant others permission to use the mark while still retaining rights to it.) 2. Don't use the letters "JDE" in the logo, or at least incorporate the full product name (which may very well be their largest objection). 3. Place a notice on the website referring users who errantly went to the page to the JD Edwards site. Again, I am not proposing replying to JD Edwards with a challenge. Rather, I am proposing a request for further information. It seems to at least be worth a try before jumping through a lot of hoops for something that might be amicably worked out. One could also point out the bad press companies have received for hitting open source projects and offer to submit a story showing JDE as a counter example to that general trend. 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. Rick Leir wrote: > Jim LoVerde wrote: > > > I guess what I'm saying it that depending on the verbage of > > the letter, it may still be possible to work out an amicable > > If you own a trademark but never enforce it, it loses validity. > So, it might be worthwhile for JD Edwards to flex its muscles > at us small fry just because we are an easy target, not because > they are worried we would affect their business prospects. > > If we want to fight, the most effective way would be public ridicule. > But it might be better to just accept a new name. > cheers -- Rick > > -- > Rick Leir Supply Chain Solutions > Pelyco Systems http://www.pelyco.com > 613 226 6109[EMAIL PROTECTED] -- Jim LoVerde, Sr. Technical Architect nVISIA, http://www.nvisia.com voice: 312-985-8178 pager: 800-862-0399 #17086723 fax:312-985-8101 epage: [EMAIL PROTECTED] S/MIME Cryptographic Signature
Re: Renaming Proposal
Another note with regard to JDEE. I think it would be perfectly legal because there is no trademark for it, it is a fair description of the product, and there a multiple examples of one letter off trademarks. E.g. IBM, IBMA, IBME, IBMI, etc. NBA, NBAA, NBAF, etc. It all comes down to the fact that sending a cease and desist letter seems to be a standard practice (and in fact is required of a trademark owner to retain the rights to a trademark). This doesn't mean that they will necessarily pursue litigation if they find that you have a valid claim on the name. None of that necessarily requires any court action. My $.02.... Jim LoVerde wrote: > OK, more legal research reveals the following. The basic > defenses to trademark infringement claims are listed in 15 > USC 1115 (Title 15, Chapter 22, SubChapter III, Sec. 1115). > See http://www.access.gpo.gov/ to browse the law. Quoting a > portion of that section: > > > (4) That the use of the name, term, or device charged to be an > > infringement is a use, otherwise than as a mark, of the party's > > individual name in his own business, or of the individual name of > > anyone in privity with such party, or of a term or device which is > > descriptive of and used fairly and in good faith only to describe > > the goods or services of such party, or their geographic origin; or > > > > It would seem to me that JDE is a description of the Java > Development Environment, and would fall under the category > of fair use. I wonder if it wouldn't be worth replying to > JD Edwards asking under what grounds, and which specific > laws they feel the use violates. The basic tenant being to > state that while you don't necessarily object to changing > the name, you want to know the full details of why they feel > your use is illegal. And you may want to provide the fact > that you have been using the abbreviation JDE since 1998 (is > that correct?). Furthermore, you could politely ask them > for proof that they have indeed used the mark in commerce in > compliance and/or has filed and received approval for the > extensions of the "intent to use" of the currently > registered trademark. (Refer to Title 15, Ch 22, Sub I, > Sec. 1051 for rules regarding registration and intent to use > extensions.) > > I guess what I'm saying it that depending on the verbage of > the letter, it may still be possible to work out an amicable > resolution. Obviously, I'm not a lawyer and perhaps my > common reading of the law is flawed, but it seems to me that > you're on pretty solid ground to retain the name and are > well within your rights to ask for JD Edwards to provide > proof that they indeed have complied with the requirements > to secure the trademark, as well as what grounds they are > using to contest your use of the abbreviation. > > I think the worst case next step would be that they file a > federal request for an injunction which would legally force > you to desist from using the name unless you contested in > court. > > Also, despite the confusion there really should be any > problem legally with JDEE (Java Development Environment for > Emacs). There are currently no trademarks for that, and I > don't think they can contest that at all. (I guess > jmode-mode just rubs me the wrong way.) > > (Ironically, take a look at how many trademarks exist for > TESS, which is the name used by the US Patent and Trademark > office's "Trademark Electronic Search System"). > > -- > ******** > Jim LoVerde, Sr. Technical Architect > nVISIA, http://www.nvisia.com > voice: 312-985-8178 pager: 800-862-0399 #17086723 > fax:312-985-8101 epage: [EMAIL PROTECTED] -- Jim LoVerde, Sr. Technical Architect nVISIA, http://www.nvisia.com voice: 312-985-8178 pager: 800-862-0399 #17086723 fax:312-985-8101 epage: [EMAIL PROTECTED] S/MIME Cryptographic Signature
Re: Renaming Proposal
OK, more legal research reveals the following. The basic defenses to trademark infringement claims are listed in 15 USC 1115 (Title 15, Chapter 22, SubChapter III, Sec. 1115). See http://www.access.gpo.gov/ to browse the law. Quoting a portion of that section: > (4) That the use of the name, term, or device charged to be an > infringement is a use, otherwise than as a mark, of the party's > individual name in his own business, or of the individual name of > anyone in privity with such party, or of a term or device which is > descriptive of and used fairly and in good faith only to describe > the goods or services of such party, or their geographic origin; or > It would seem to me that JDE is a description of the Java Development Environment, and would fall under the category of fair use. I wonder if it wouldn't be worth replying to JD Edwards asking under what grounds, and which specific laws they feel the use violates. The basic tenant being to state that while you don't necessarily object to changing the name, you want to know the full details of why they feel your use is illegal. And you may want to provide the fact that you have been using the abbreviation JDE since 1998 (is that correct?). Furthermore, you could politely ask them for proof that they have indeed used the mark in commerce in compliance and/or has filed and received approval for the extensions of the "intent to use" of the currently registered trademark. (Refer to Title 15, Ch 22, Sub I, Sec. 1051 for rules regarding registration and intent to use extensions.) I guess what I'm saying it that depending on the verbage of the letter, it may still be possible to work out an amicable resolution. Obviously, I'm not a lawyer and perhaps my common reading of the law is flawed, but it seems to me that you're on pretty solid ground to retain the name and are well within your rights to ask for JD Edwards to provide proof that they indeed have complied with the requirements to secure the trademark, as well as what grounds they are using to contest your use of the abbreviation. I think the worst case next step would be that they file a federal request for an injunction which would legally force you to desist from using the name unless you contested in court. Also, despite the confusion there really should be any problem legally with JDEE (Java Development Environment for Emacs). There are currently no trademarks for that, and I don't think they can contest that at all. (I guess jmode-mode just rubs me the wrong way.) (Ironically, take a look at how many trademarks exist for TESS, which is the name used by the US Patent and Trademark office's "Trademark Electronic Search System"). -- Jim LoVerde, Sr. Technical Architect nVISIA, http://www.nvisia.com voice: 312-985-8178 pager: 800-862-0399 #17086723 fax:312-985-8101 epage: [EMAIL PROTECTED] S/MIME Cryptographic Signature
Re: Can A Freeware Name Be Trademarked?
Actually, I found a site with quite a bit of information on Trademarks and Copyrights (of course, I can't vouch for the accuracy). It is http://www.nolo.com/encyclopedia/faqs/tc_ency.html. With regard to "commerce", it appears that there is no requirement to actually sell a product using a trademark: http://www.nolo.com/encyclopedia/articles/tc/PCT28.HTML#FAQ-326 >From what I can tell, it looks like the basis of JD Edwards claim must be that JDE "dilutes" their brand: http://www.nolo.com/encyclopedia/articles/tc/PCT28.HTML#FAQ-328 http://www.nolo.com/auntie/question_420.html Alternatively, it may be based on the "intent-to-use" trademark, which means that the date of filing would be considered the date of first use, assuming they actually use it within the required time limits. (http://www.nolo.com/encyclopedia/articles/tc/PCT28.HTML#FAQ-327) Given that they filed in 1999 and that they have up to three years, this might still be a valid claim. However, here are examples of other companies/orgs/products using the JDE name (from a simple traversal of a search for JDE on google): http://jde.opencon.ch/ (company around since 1994, albeit based in Switzerland) http://www.jde-consulting.com/ (registered May 4, 1999) http://www.jdecm.com/ (features JDE prominantly as part of logo) http://www.sba.muohio.edu/PageCenter/JDE/about.htm (also features a JDE logo) http://www.adea.org/publications/jde_general.htm (yet another logo) http://www.lib.unb.ca/Texts/JDE/homepgENG.html Also, looking at http://www.jdedwards.com and searching for JDE on their own site it would appear that there is only a single mention of a product with the name "JDe.Sourcing": http://search.jdedwards.com/Search/Results.asp?q=JDE&MaxRecordsPerPage=10&SortBy=rank&HTMLQueryForm=http%3A%2F%2Fwww.jdedwards.com%2Fsearch%2Findex.asp So doing a little IANAL research it appears as though they would have a hard time proving that they have built JDE into a strong enough brand to warrant the dilution claim (their own company logo creates a split between the JD and the Edwards). And I can't even find a reference to "JDE" as a direct usage on their own web site, so I'd be curious if they could prove they had used the name prior to all of the above sources. Of course, this doesn't mean they won't pursue litigation, and limited resources would make it difficult to fight. I am curious if they would object to the name EmacsJDE. Paul Kinnucan wrote: > Hi all, > > According to http://www.uspto.gov/web/offices/tac/doc/basic/basic_facts.html, > you have to have used, or intend to use, a name "in commerce" in order to > apply for trademark status for the name. A freeware developer by definition > does not intend to use the name of a freeware product in commerce. Is it > thus illegal for a freeware developer to attempt to trademark a freeware > product name? On the other hand, does the law forbid a noncommercial > organization from using a trademarked term in its literature? > > I wonder if my predicament has ever been tested in court, i.e., a > noncommercial organization being sued by a commercial organization for > trademark infringement. > > - Paul
Re: Name change
Except the same argument with regard to J2EE and JDEE can be made about EJB and EJE. All and all, I think that EmacsJDE would be the best choice (assuming it wouldn't be objected to by JD Edwards). Here's why: 1. It would allow searched for JDE to potentially turn up EmacsJDE as well (especially when searching for JDE and JAVA). 2. It incorporates the name of a FSF product, which might give it some implicit trademark protection, although I still think trademarking might not be a bad idea. Does anyone know what if any trademarks they own? 3. It makes it clear that it is tightly coupled to emacs, which is potentially a double edged sword with regard to attracting interest, but is true none the less. 4. The emacsjde.org, .com, .net, are all currently available (so is jdee.org, but jdee.com is taken right now) The only thing I don't like about it is that it's slightly verbose. However, I would not be surprised if developers still referred to it as JDE within programming circles (hence my questioning of whether JD Edwards would be ok with this). Alan Hadsell wrote: > I vote for EJE (Emacs Java Environment). Easy to remember, can't be > confused with JDE. The current claimants for this acronym are: > >European Journal of Endocrinology >The Elgin, Joliet and Eastern Railway >The EJE Group (Environmental Design and Planning, > Newcastle NSW, Australia) http://www.eje.com.au >Errington John Enterprises Ltd. > > And I DON'T think that harassing JDEdwards about it is going to do > any good. They do have the domain name jde.com, and they've had it > since 1998 (although jdedwards.com seems to be their main domain > name). > > Let's just change the name and get on with our lives. Don't we have > better things to do? > > -- > Alan Hadsell > "Whatever does not kill me makes me stranger". -- Jim LoVerde, Sr. Technical Architect nVISIA, http://www.nvisia.com voice: 312-985-8178 pager: 800-862-0399 #17086723 fax:312-985-8101 epage: [EMAIL PROTECTED] S/MIME Cryptographic Signature
Re: Name change
As infuriating as this is, I'd like to remind everyone to be cordial with regard to any feedback to JD Edwards. It would seem to be allright to send something along the lines of "I am unhappy with your decision to pursue trademark litigation with the Java Development Environment over the JDE acronym...". But please don't send things like, "Your company sucks...corporate bsblah blah blah". Paul has done an excellent job developing, enhancing, and coordinating feature submissions. I'd hate to see him take a bunch of heat because J.D. Edwards received a bunch of hate mail from JDE users in addition to the trademark dispute. On a more humorous note, perhaps you could just change the name of it to a symbol and refer to it as the "development tool formerly known as JDE"... "Mandler, George" wrote: > > By the way if any of the JDE users would like to send > > comments about this > > I believe the company is (Paul correct this I got the wrong > > one from searching > > on the net). > > > > J.D. Edwards & Company > > One Technology Way > > Denver, CO 80237 > > > > > > Direct to J.D. Edwards headquarters: > > 877-613-9412 or 303-334-4000 > > For regional sales and marketing inquiries: > > 800-727-5333 > > > > J. Syre > > This corporate bullying really gets my blood boiling. When I get home (I > don't want to use my company's servers!) I plan on going to www.jde.org to > the "contact us" page. They have a feedback form where we can tell them > what we think. > An important point is that JDE is free software. (Irnoically they are a > software house that uses Java for their development!) > > --george
