[Foundation-l] Registering Wikimedia trademarks

Wed Apr 28 21:43:31 UTC 2004

Peter Jaros wrote:

>Toby Bartels wrote:

>>Have we tried telling them "Wikipedia is a trademark
>>of the Wikimedia Foundation" yet?

>Is that true?  IA-very-much-NAL.

There are 2 issues here:

# If we say that Wikipedia is a trademark without registering it,
  then are we telling the truth?
# If we don't register it, then are we in a safe legal position?

Since the OP was talking about shifting from "Please don't use this."
to "This is a registered trademark.", question 2 is less relevant.
If somebody responds, "Sure it's a trademark, but it's not /registered/,
so I defy you to stop me.", then we need to look at registration.
But if we just want to beef up our complaints, then question 1 is enough.

IANALE, but the answer to question 1 is Yes.  Axel456 (WIAL) has said so
on other mailing lists, and here are some quotations from Wikipedia:

[[Trademark]]: "Though registration is available in most
   "countries, showing conclusive right to use the registered mark, many
   "jurisdictions (in [[common law]] countries, at least) will still
   "protect unregistered marks as long as the owner claiming infringement
   "can prove ownership through earliest and consistent use.
(Common law is the English tradition, found also in the US.)

[[Trademark]]: "in many jurisidictions reputations or
       "'goodwill' are afforded some protection as unregistered trade
       "marks. These rights would be common, for example, where a small
       "business had been trading for many years without registering a
       "trade mark. An attempt by a rival business to use the same name
       "would still be prevented by the courts, despite the lack of a
       "trade mark registration.
(Spacing and quotation marks here suggest a UK/Commonwealth writer.)

[[United States trademark law]]:
   "A person or business entity acquires rights in a trademark either by
   "using it in the normal course of business (for example on a tag or
   "label for merchandise being sold to the public) or by filing an
   "application for registration of the mark in the USPTO.
(Note "or", not "and".)

So "Wikipedia" /is/ a trademark, right now, under US law at least.
This means that we can say as much to people when we demand (not ask)
that they stop using the name to refer to their own site.

Now, the answer to question 2 is No.  So if we get into a legal situation,
where somebody refuses to comply and we're considering legal action,
/then/ we will need to register the trademark in a relevant juridsdiction.
Doubtless this will happen eventually, so eventually we must register.
And there's no reason that we shouldn't look into that now.

But we don't need to wait for registration to strengthen our language!
We can start telling people /today/ that "Wikipedia" is a trademark,
and I believe that we should indeed tell them just that.

This is a good thing, because registration, while useful, isn't free.
Besides the fees for the US, the EU, and many other potential countries,
I read something else in Wikipedia, rather disturbing:

[[United States trademark law]]:
   "An individual may represent himself before the USPTO in attempting to
   "register a trademark. However, there are many pitfalls that can trap
   "someone who is not experienced in trademark prosecution matters. An
   "experienced attorney who specializes in trademark registrations
   "typically will charge $800.00 to $1500.00 for preparing and filing an
   "application for trademark registration.

I don't know how dangerous these "many pitfalls" really are,
but if this paragraph is accurate, then registration may cost
a lot more than the fees!

Anyway, short answer:  By all means, look into registration.
But if the cost is prohibitive, then don't worry about it now;
hopefully, we'll have more money by the time that we need it.
In the meantime, however, start /claiming/ that it's a trademark,
because it is.

-- Toby