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Product name protection and rights advice needed pls

 
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chrismiles
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PostPosted: Fri Sep 24, 2010 3:21 am    Post subject: Product name protection and rights advice needed pls Reply with quote

Hello, I have been searching the web for answers to product name protection, but can not seem to find anything relevant.

I created a software product that I give away for free using the gpl license. I did not copyright or trademark my product name. I have been selling it from my own website, which means that the domain name does not include the product name. As such, I can not prove how long my website has been listing my product name, showing how long I had been using it. Also, the way back machine does not list any backups of my website, so I can also not use that to prove how long I have been working on the software product, or the length of time that I have been offering this product.

The only place that I did list this product that is traceable was on an external website, however when I check, it would seem that they only list the past two years, with the very earliest note simply saying that an account was created with my product name.
The problem here is that all it lists is the product name and the date, there is no evidence that I had any software product ready to release.


I recently found that there was another product that has been released for less time than mine and is using a name that is very similar. For example, my product is called my-subscription and the product I found is called "my-subscriptions".

I would not like anyone to be using a product name so close to my product name, but there are a few problems. Firstly, the name is fairly generic, I know it is not a unique word. Secondly, I have checked the other product and can see that they have evidence of their product release and availability dating back to before the evidence that I can find for my product.

**note
I have just found an old post announcing the release of my software which is archived on the way back machine. It is dated as it is on my website blog. Can this be enough evidence?

Can I attempt to protect my product name, asking them to change their product name?
Would I do this via a copyright notice or DMCA?
Should it be done via e-mail or should I request their postal address?
Naturally, I am not looking for legal advice, I am looking for suggestions that I can then research myself, so please feel free to suggest
any methods that you may know of, including links or references to laws etc where possible.

Thank you in advance for your suggestions.
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AndyJ
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PostPosted: Fri Sep 24, 2010 8:00 am    Post subject: Reply with quote

First of all there is very little chance that your product title can be protected by copyright because it consists of just two common words, So what we are talking about here is trademark protection. The problem is that trademarks (unlike copyright) are not automatically protected from their creation, and usually have to be registered to gain full protection - namely a full monopoly on their use. Furthermore trademark registration is speific to the jurisdiction where it is registered eg the UK, USA or EU, so for complete protection you need to register in as many countries worldwide as you can, which is expensive. There is no similar simple procedure to the DMCA takedown notice for dealing with a trademark infringement, although once you have a registered mark it is relatively easy to get a court to recognise that infringement has occurred (as in the case you have described) and to rule in your favour.
You can register a trademark at any time, although clearly if there is another pre-existing similar product with a similar name (as here) you may not be able to register your name. The registration process is quite thorough and includes a process of examination to check your proposed mark meets certain criteria (eg that it is distinctive and is not merely descriptive) and that there is no other registration of the same mark for the category of goods you are seeking to register in. You can get quite a lot of information about the process from the UK Intellectual Property Office (http://www.ipo.gov.uk). Computer programs are in Class 42.
However, even if you manage to get your mark registered (either in the UK or worldwide via the Worldwide Intellectual Property Organistion (WIPO) in Madrid) the owner of the other product name would probably have a defence against infringement because his unregistered mark was in existence before you registered your mark, even though your product may well have been on the market longer. Conversely if he decided to register his mark now, you would have protection because your unregistered mark was already in existence.
I hope this helps. There's quite a lot more to trademarks than I have covered here, so you could take a look at this site for some further explanation: http://www.lawdit.co.uk/reading_room/room/view_category.asp?catcode=34
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CopyrightAid
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PostPosted: Fri Sep 24, 2010 8:33 am    Post subject: Reply with quote

As you are talking about a product name, I suspect that that only possibility would be a claim that they are 'passing off'.

Here are a few links that may provide further information:
http://www.waterfrontsolicitors.com/intellectual-property/legal-basics/protecting-ip/passing-off
http://www.ipit-update.com/passingoff.htm
http://www.inbrief.co.uk/passing-off.htm

A lot of these talk about how hard and costly it can be to take it through the courts to prove (naturally a registered trademark is easier to prove).


Personally I would write a letter requesting that they change their product name (which costs very little).

In the letter I would explain to party offering the other product that you already have a product of that name, that you therefore conclude that their product is passing off, and ask them to either withdraw or rename their product so that it will not be confused with your established product. (If you went to a solicitor that would normally be the first thing they would do in any case).

If you 'do it yourself' do take care to write a respectful and profession letter (you can probably find examples online to give you some ideas). If you are not comfortable doing it yourself then a solicitor would be able to write one for a fee (but with that fee comes the kudos that you already have legal council engaged on your behalf).

At the end of the day if they ignore your letter, you don't have to pursue the matter if you don't think it is worth it.

If they are deliberately using your name then the letter could be all that's needed to make them re-think their strategy (they may just be ignorant of passing off).
If they are not deliberately using your name it is probably in their interest to avoid confusion between the product names, but the longer you leave it, the more invested they will be in their name and the less likely they will be to change it.
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