Fwd: [trademark] Trademark for WikiJournal - WikiJournal-en

13 Dec 2017

Hello everyone,

I received the forwarded response from the Wikimedia legal team. I intend
to reply as follows:

"Hello Charles,

It is necessary to already obtain trademark registrations, because an
unrelated "WikiJournal" has already popped up, wikijournal.org, which
appeared about 2 years after our project was created. I have tried to
negotiate with the creator of that project (Philip Krasilnikov) about
transfer of that .org domain to us, without so far being able to reach an
agreement. It is possible that this name conflict will end up in legal
proceedings later, so we find it necessary to as soon as possible secure
our legal rights of the WikiJournal name, which is now in use in several
external scholarly indexes and thereby not possible to change at all
locations."

In any case, I removed the trademark part of our rapid grant application,
since it needs to be done directly by Wikimedia Foundation. [edit diff]
<https://meta.wikimedia.org/w/index.php?title=Grants%3AProject%2FRapid%2FWikiJournal_2018&type=revision&diff=17540486&oldid=17524675>

Best regards,

Mikael

---------- Forwarded message ----------
From: Charles M. Roslof &lt;croslof(a)wikimedia.org&gt;
Date: Mon, Dec 11, 2017 at 10:46 PM
Subject: Re: [trademark] Trademark for WikiJournal
To: Mikael Häggström &lt;editor.in.chief(a)wikijmed.org&gt;
Cc: Trademark &lt;trademarks(a)wikimedia.org&gt;rg>, Woubzena Jifar <
wjifar(a)wikimedia.org&gt;

Hi Mikael,

I've copied Woubzena Jifar, the Foundation's Rapid Grants Program Officer.

Thank you for reaching out about this. If "WikiJournal" is to be registered
as a trademark, then it should be held by the Wikimedia Foundation. The
Foundation has the established processes and resources to protect Wikimedia
trademarks, and having "WikiJournal" as part of the Wikimedia trademark
portfolio would avoid issues of confusion or conflict with other Wikimedia
marks, such as "Wikibooks". I would also want we at the Foundation to
handle the registration, to ensure it is consistent with the registrations
of the other marks.

Registering a new trademark requires a commitment of resources beyond the
initial filing fee. There may be opposition to the registration, which
would require us to file responses, and we would need to have advice and
support from outside experts through the registration process to ensure
that everything is done properly. In addition, if it is necessary to
register the mark in the United States then it may be necessary to register
it in other countries as well.

Given this, I'm not sure it is appropriate to seek registration of the
"WikiJournal" mark at this time. I know that there is a proposal for
WikiJournal to become its own sister project
<https://meta.wikimedia.org/wiki/WikiJournal>—if that proposal is accepted,
then we would certainly want to proceed with obtaining trademark
registrations for the "WikiJournal" wordmark and whatever logo is chosen
for the project. I don't know that it is necessary to obtain registrations
before then, unless (1) there is significant risk of unrelated things
called "WikiJournal" popping up and causing confusion with the Wikimedia
WikiJournals, or (2) the WikiJournals are getting a significant amount of
high-profile public attention.

I'd be happy to hear your additional thoughts and questions on this matter.

Best,

Charles M. Roslof
Legal Counsel
Wikimedia Foundation
croslof(a)wikimedia.org
(415) 839-6885

On Sat, Dec 2, 2017 at 11:37 PM, Mikael Häggström <
editor.in.chief(a)wikijmed.org&gt; wrote:

...
  Dear legal team,

 The WikiJournal User Group
 <https://meta.wikimedia.org/wiki/WikiJournal_User_Group> is now a
 registered non-profit organization in Sweden, and we are now applying for
 funding for registering WikiJournal as a trademark in the United States.
 <https://meta.wikimedia.org/wiki/Grants:Project/Rapid/WikiJournal_2018>

 Is is all right that this trademark belongs to the WikiJournal User Group
 organization, or do you require it to belong directly to the Wikimedia
 Foundation?

 Best regards,

 Mikael Häggström