Ask Slashdot: How Should Devs Deal With Trademark Trolls?

An anonymous reader writes: I'll start off by admitting that trademark infringement wasn't something that was on my mind when I released my first application. Like many other developers I was concentrating on functionality, errors, and getting the thing published. I did a cursory Google search and search of the app stores to make sure no other apps were using the same name, but that's about the extent of my efforts to avoid trademark infringement. After all, I'm spending hundreds of hours of my own time to make an app that I'm giving away with the hopes to make some ad money or sell paid versions down the road. Hiring a lawyer for advice and help didn't seem like a reasonable expenditure since I'm pretty sure my income per hour of coding was under $1 for the first year or two. Besides, it's something I do on the side because I enjoy coding, not for my main source of income.

My first app was published in early 2010. I followed up with a paid version, then a couple other small apps that perform functions I wanted on my phone. I continue to maintain my apps and offer bug fixes, user support, and the occasional feature request. My income isn't tremendous, but it's steady. Nothing to brag about, but also not something I'd willingly give up.

Earlier this year I got a notice from Google that someone had submitted a takedown request for one of my applications based on a trademark infringement claim." (Read on below for the rest of the story, and the question.) Google basically told me to "work it out" with the complainant and cautioned that my app could be removed from the store. I reviewed the trademark, did some research, and basically determined that the trademark holder really didn't have a valid claim as far as I could tell. My app's description was using a common word, found in the dictionary, to describe it's functionality. Somehow the trademark holder had managed to secure a trademark for it, but as best I could tell, couldn't legitimately claim infringement when I used that word in a descriptive fashion. Google had no facility for me to rebut the claim, so I ended up trading emails with the trademark holder a few times. From what I could gather, he was trying to bully other developers into not using the term in question in an effort to do some lame attempt at search engine optimization to keep/force his app to the top. I personally found that concept to be ridiculous since Google is still going to add related apps to the search suggestion, even if the term only matches his application name and isn't mentioned in the description of any other app on the market. The fact that he has his picture plastered all over the internet and reminds me of Erlich from Silicon Valley didn't help me respect his claim any more than his refusal to discuss trademark law in favor of repeated demands for me to change the wording of my app's description. I eventually just stopped responding to him and haven't heard anything more since. I suppose I could be served with a lawsuit at any point, but I honestly believe it to be frivolous and I doubt a company of his size would waste the resources or chance a counter-suit.

I figured that was behind me until I got a notice this afternoon that two of my other applications (free & paid version of the same app) had been removed from the Google store due to a different trademark infringement claim. This time around the trademark holder has a trademark for the name of my application, and I admit that at face value it seems more legit. Again, I've been doing some research and I'm not sure that one can legitimately claim infringement over a trademarked word being used as the name of a product that isn't in the same class. For example, Ford may have a trademark for the name "Raptor" that they use on a pickup truck, but I wouldn't expect them to be able to force me to stop using the name "Raptor" for a fishing lure that I'm selling. This time around I'm in the position of having my applications completely removed from the store and being asked to "work it out" with the trademark holder. I haven't heard back from this one yet, but I'm fully expecting a shakedown of some sort where I'll be asked to pay license fees. The trademark owner in this case is a pretty famous "personality" that is very well known in his market segment (which is not even close to my market segment).

I'm a developer, not a trademark attorney. From what I can gather, the two claims I'm dealing with are not real examples of trademark infringement and are based on the invalid concept that a trademark of a word means that the owner controls that word in all possible contexts. It seems to me that Google is agreeing with that stance and finding in favor of the trademark holder by default, and in this latest case, without any notice to the developer or venue for the developer to respond prior to applications being removed from the store.

I honestly feel like trademark trolls have found a way to game Google's system to screw over developers in hopes of stealing their hard work.

Is anyone else dealing with this or am I just unlucky enough to have 3 out of 4 of my apps pinged for alleged trademark infringement within two months after 5 years of existence on the market? Any advice for the "little guy" here? I can probably afford some advice from a lawyer, and may very well go that route, but I sincerely doubt I could afford defend myself against an actual lawsuit. Frivolous or not. It just doesn't make a lot of sense to throw a lot of money into legal defense when a couple good meetings with a lawyer would could very well wipe out the monthly income for the apps in question.

Comments

So what are the terms?

[DNS-and-BIND]

Nobody can help you unless you tell us what the terms are. Seriously, trademark issues are famously inexact, and being vague doesn't help one bit. It could be either way, honestly.

Should have registered the trademark yourself, that way there would never have been a problem, and if there was already a registrant, change the name of the damn software. I swear for some reason open source developers choose the dumbest names for products.

Re: So what are the terms?

[Anonymous Coward]

Read the full post, cracker. There was asecond claim againt not ford raptor.

Re:So what are the terms?

[popo]

I honestly don't understand this post. Welcome to the modern world, intellectual property rights are not all that abstract. There part of your development process. Spend 10 minutes doing a TESS search to make sure your name isn't infringing on copyright. Saying you "don't have time because you're too busy developing" is like saying you don't have time for security or cross-platform testing. Trademarks are a real issue that needs addressing.

Re:So what are the terms?

[JWSmythe]

It all depends on what the "common English word" is. Apple. Blackberry. Chase. Delta. EvilCorp. Fire. ... You get the idea. (I couldn't resist EvilCorp. Sorry).

Even if he was explicitly clear, there are a few points.

1) None of us are attorneys specializing in trademark law.

2) Even if there are such attorneys here, they would say "But I'm not your attorney until you retain me, so I cannot answer."

3) If the guy is just asking for a word from the description to be removed, fuck it, remove the word. He doesn't have the funds to fight it. When he has the money to pay an attorney to deal with the USPTO, Google and the opposing party, that's when he has something to work with. If it's as weak as he implies, he could potentially get the trademark invalidated and then sue for damages from lost revenue by complying (but not admitting guilt) with the initial C&D in a timely and good faith manner.

That actual trademark attorney may just say at the initial consultation, "This isn't worth my time. File form xyz yourself with the USPTO to get it invalidated, and then go back to Google with it." I've heard lawyers say that plenty of times, when there isn't enough money to be had.

They may even direct him to a group like EFF or ACLU, who would take it on principle, or even another attorney who is already defending other targets of this troll.

As not an attorney, nothing above is to be considered advice of any sort. What follows is.

Contact an attorney. Get the free or few hundred dollar consult.

Re:So what are the terms?

[ShanghaiBill]

Nobody can help you unless you tell us what the terms are.

Indeed. Knowing the actual trademarked term is the most important thing. The wording/conditions of the registration is the 2nd most important thing. The 3rd and 4th most important things are what country he lives in, and what country the registrant lives in. None of these are provided. He is calling the registrant a "troll" without providing any justification, he is getting infringement complaints from multiple parties, and he is checking for trademarks using google.com instead of uspto.gov. This is likely a simple case of blatant infringements by someone who doesn't understand the rules.

Re:So what are the terms?

[Anonymous Coward]

What do you mean? GIMP is a great name for a torture instrument.

Re:So what are the terms?

[MobileTatsu-NJG]

'Apple' is a common word, too. But if you call your app 'Apple Mail', you are clearly violating trademar law and with good reason.

This is why we have to know the terms, it may not be a troll at all.

Re:So what are the terms?

[Anonymous Coward]

...Spend 10 minutes doing a TESS search to make sure your name isn't infringing on copyright....

Copyright is not trademark. They are two different things.

My free advice is to pay no attention to anybody who knows so little about the field that they don't understand that.

Re:So what are the terms?

[l0n3s0m3phr34k]

I have to agree, without specifics no one can give real advice. To use a car analogy, I can tell a mechanic "it's making a noise like NEP NEP NEP" but until they plug in the code reader and actually get their hand dirty they can't give an estimate for the work. We have to know both the terms, the ACTUAL WORDS. Even then, perhaps filing a claim himself in the Google ecosystem might shake it up a bit, at least for the first claim. The second sounds more serious. Anyway, I have these questions:

We need a time frame, how long has it been since he contacted the second person? There's a big difference if it's been a few business days, a week, half a month, etc. How many times has he attempted contact with them?
What are Google's stipulations to NOT have apps pulled. "Work it out", does that mean the complainant must withdraw their complaint? Does Google even vet these before sending them out?
What are the actual words? Names of the apps?
Names of the people complaining against you. There may be people who have been attacked in the past by these two who might be able to "help", look in forums for people with similar charges brought against them (especially on the second guy.)

But you need to trademark these terms as your own, in your market, ASAP. Since you know what their trademarks are, register your own with those words but make it even more specific so it only covers you. Get a copywrite on them too. If this is too $$$, well, then probably give up since this is "the cost of doing business".

Your state might have people who can help with this, even Oklahoma has a small business agency with "free" lawyers who do trademark and copywrite. At this point, your apps have taken a life of their own. You'll probably need to form some type of LLC, register all this in it's name...and I don't know how trademarks, their dates, etc work in the law since IANAL. If you get one too, even if it is after the initial complaints, if you file your own complaint...might have to play hardball.

Re:So what are the terms?

[Anonymous Coward]

'Apple' is a common word, too. But if you call your app 'Apple Mail', you are clearly violating trademar law and with good reason.

This is why we have to know the terms, it may not be a troll at all.

What does a California Design firm's trademark have to do with my USPS aided fruit delivery service?

Re:So what are the terms?

[Anonymous Coward]

OK, my surname is "Disney", so I called my apps "Disney Mouse" (an app that allows you to use a Bluetooth mouse to control the user interface), "Disney Duck" (an game where you hold the phone in front of you and watch as objects are "thrown" towards you onscreen, "ducking" when they're about to hit. The accelerometer is used to detect when you duck), and "Disney World", an Atlas app with maps of the world and links to Wikipedia for information about the various countries.

Re:So what are the terms?

[narcc]

What, exactly, do you think TESS stands for anyway?

Re:So what are the terms?

[Cederic]

I neither know nor care. The issue is still not copyright infringement, so AC's point is still valid.

Re:So what are the terms?

[KGIII]

A lawyer can give advice and representation for free. A non-lawyer can not charge for legal representation services though. I am a little fluent in law procedure (which is actually the important part) and have represented many friends and family in court to some extent. I have spoken with DAs and have been in judge's chambers on other people's behalf. A lawyer can obviously offer free legal advice - it comes with consequences potentially but they can. They do pro bono work all the time. Depending on the nature of their advice they may be interpreted as having some restrictions as they may now have an attorney/client relationship but that is stretching it and a judge is likely to smack down any such interpretation by the state (or opposing party's) representative. The text is often seen as a way to avoid complexity and liability - it does not preclude anything like advice or their interpretations of how one might argue the appropriate laws.

There may be some niggling details that I have left out. It is impossible to cover all the variables which is what makes law so interesting. You can almost always appeal to the judge to argue the procedure if you feel it is in violation of the spirit of the law, for example. Your judge does not have to allow such but you are free to submit your interpretation and request a hearing. It is kind of interesting and it is actually the professional obligation of a lawyer to be an argumentative jackass.

When I hire a lawyer I do not do so because I want them to represent me - I have a right to have them do that on my behalf. Instead I hire them to advise me and speak on my own behalf up to and including requesting that the judge ask me personally instead of directing questions at my council.

Re:So what are the terms?

[Anonymous Coward]

The AC is an ignorant idiot pretending to know what he's talking about.

A TESS search is a TRADEMARK SEARCH. The OP was on the money.

Re:So what are the terms?

[popo]

And my free advice is to pay no attention to an idiot who doesn't know what a TESS search is.

Re:So what are the terms?

[gnasher719]

What does a California Design firm's trademark have to do with my USPS aided fruit delivery service?

Nothing. But the poster you responded to said "if you call your app 'Apple Mail'", not "if you call your post-office based fruit delivery service 'Apple Mail'".

Re:So what are the terms?

[Lizzy_Bee]

So in the five years of existence of his apps, he never bothered to actually trademark them...fucking idiot. Never mind the current trademark holder probably filed their own trademark after discovering the names of some apps, but they have the means to defend themselves, so this goes back to...fucking idiot.

Re:So what are the terms?

[Anonymous Coward]

They used to do that on car talk all the time, when they followed up they usually found out they were right.

Re:So what are the terms?

[Anonymous Coward]

What does a California Design firm's trademark have to do with my USPS aided fruit delivery service?

Nothing. But the poster you responded to said "if you call your app 'Apple Mail'", not "if you call your post-office based fruit delivery service 'Apple Mail'".

So fruit delivery services can't have an electronic form (aka app) for ordering in your world?

Re:So what are the terms?

[JWSmythe]

I've had a number of nice conversations with attorneys over the years. They range from specific real cases and current news events, to totally hypothetical events. Frequently, you'll hear "it depends on the judge". Different judges have different opinions. One may side with you totally, while another will be annoyed that you even attempt to reference a particular thing. That's the biggest thing a local attorney who knows the judge will give you.

In his case, one judge may like that he had no intention of violating the IP of the other. Another may prefer to hear that the violation was coincidental. And a third may not care and put him on the hook for a stack of damages.

Asking for legal help here and expecting an answer that can be used is totally different. An attorney doesn't have all the facts, doesn't know the jurisdiction, and would open themselves up to legal trouble.

If the advice is valid in the attorney's jurisdiction, but not the OP, he could come back and blame the attorney.

If the attorney is giving advice outside of the area where he is licensed, he can run into trouble.

If there's something significant that changes the case, then he gave bad advice.

And just like the aforementioned car analogy, a mechanic online can't give the answer to "what is that noise". That thump may be a flat tire, the bass is turned up too loud, or any number of things.

Talk to a lawyer

[innocent_white_lamb]

Your only real options are to ignore this issue and have your apps disappear, or discuss this with a lawyer who specializes in US trademark law. And bring your wallet if you choose the second option.

Welcome to the world of doing business in the United States of America in the 21st century.

Is it fair? Not really. Is it reasonable? Not really. Is it reality? Yes.

Sorry about that, Chief! But that's the way the law currently works.

(I don't live in or do business in the USA. And I like it that way.)

Re:Talk to a lawyer

[gurps_npc]

No, he can ALSO work it out with the guy, or to simply change his product name. Just because the other guy was a shmuck does not mean this guy is.

You on the other hand clearly have issues.

1. This guy is an App Developer. What makes you think he lives or does business in the US? His only contact with the US may be Google.

2. My experience is that most other countries are not better with it comes to trademark issues. Some have some more leniency with regards to copyright and patents, but trademarks are trademarks the world around. Google would do the same thing pretty much no matter what country Google was based in.

3. Your real problem seems not to be with the US, but with the concept of government making sure that business men don't shoot each other over disagreements by creating laws and regulations.

Re:Talk to a lawyer

[SlithyMagister]

(I don't live in or do business in the USA. And I like it that way.)

Not to argue, but if you ever clicked an "I agree to the terms and conditions" box, you'll find that your non-negotiable agreement has a clause that specifies a jurisdiction whose laws govern the non-negotiable "contract"

The state of Delaware is very common in these acceptance agreements. Presumably because their laws recognize a checkbox click as acceptance of a binding contract.

Perhaps this is not exactly doing business in the USA, but the overarching greed of American corporations affects us all.

Re:Talk to a lawyer

[jonbryce]

In other countries, if you take a case to court and lose, you have to pay the other side's legal fees. That does mean that less frivolous cases go to court.

Re:Talk to a lawyer

[sosume]

Such contracts are simply not valid in most developed nations outside of the US. I could agree to give up my firstborn in a clickwrap agreement, however that doesn't make it legal. Nice try, though. OT: perhaps Google could blacklist apps for just the jurisdictions in which the trademarks are valid.

Re:Talk to a lawyer

[cheesybagel]

He has a lot of options. The best one is to register his own trademark. Plus he could use compound names. Remember "Microsoft Windows"?

Register a company name, or whatever, and then just suffix it with the name you want to use. I your app is important enough register the name too.

Re:Talk to a lawyer

[ihtoit]

clickwrap agreements are illegal in England. It's called coercive contracting and is one half step away from racketeering.

(I am a lawyer. I am not your lawyer. Retain the services of one in your own jurisdiction).

Re:Talk to a lawyer

[Actually, I do RTFA]

(I don't live in or do business in the USA. And I like it that way.)

Europe is just as bad, just different. We worked with a client that was working on a... massive. Beyond massive. Rollout of new content based on their IP. We worked on their coordinated app. In spite of a well-paid on retainer legal team that mostly dealt with IP issues (okay, Copyright, not Trademark usually), we still had our app pulled from the Apple Store without notice over a trademark in some stupid European country. (related only to the app)

And we, Apple, and our clients are all US based.

Re:Talk to a lawyer

[NicBenjamin]

So?

They get a default judgement against you in Delaware, then whenever you do business in the US they can legally take your shit. If you don't do business in the US you're not doing business with a fifth of the world's economy, and that's a pretty high price to pay. Granted it's not a higher price to pay then your first-born, but if somebody has a trademark dispute you could get rid of simply by spending $1,500 on a lawyer in Delaware...

Frankly in an economy like the internet economy one world government, with one set of rules governing trademark, copyright, patent, and contract law, makes a lot more sense then what we've got now.

Re:Talk to a lawyer

[Anonymous Coward]

This person who filed the trademark claim has already pulled the trigger; its too late to play nice.

This guy needs to talk to a lawyer, put his case together, with timeline, go after the trademark squatter, and seize the trademark; remember how well that worked out for the motherfucker who tried to hijack Linux as a trademark?

Re:Talk to a lawyer

[edjs]

Not to argue, but if you ever clicked an "I agree to the terms and conditions" box, you'll find that your non-negotiable agreement has a clause that specifies a jurisdiction whose laws govern the non-negotiable "contract"

The state of Delaware is very common in these acceptance agreements. Presumably because their laws recognize a checkbox click as acceptance of a binding contract.

Perhaps this is not exactly doing business in the USA, but the overarching greed of American corporations affects us all.

Delaware has had corporation-friendly laws and taxes for a long time, so many US companies are incorporated there. This makes Delaware their "home" state, even if their only presence is a mail drop at a law firm.

Re:Talk to a lawyer

[HiThere]

Linus had some *very* good lawyers. And substantial financial support.

Re:Talk to a lawyer

[HiThere]

Did you ever wonder how Exxon ended up with such a lousy name? They did a world-wide search for the best name they could find that was available everywhere. IIRC someone in one country owned the name Esso, so they couldn't use that name in that country.

Re:Talk to a lawyer

[sumdumass]

Unfortunately this case is not even to the state of courts. His livelihood (or part of it ) is being denied without any court at all so far.

Even in losers pay areas, you still have to front the money and if you run out, are you still going to win? But more interesting might be the value of the app verses the costs of courts. If the app only generates $5k a year income, How do you justify a million or even 50k dollars in defense costs knowing you might lose and possibly have to pay their costs.

It also means a lot less legitimate case goto court too.

Re:Talk to a lawyer

[Anonymous Coward]

Trademarks are pretty cheap to apply for, $225 for the online application.

Patents tend to cost around $10,000.

The barrier to entry for trademarks is pretty low, so that could attract more trolls, but trademarks have to be defended, otherwise they lose validity. The other party is probably just defending their trademark, as they need to do.

I think you should talk to a trademark lawyer, and you should consider filing trademarks in the future for $225 to prevent this.

Lawyer

[Anonymous Coward]

Seems like it may be worth your time to hire a lawyer just to write a letter. A letter with the legalese on why your app is not infringing sent to Google and the claiment may just resolve this for you. Very often a consultation is free and in the past on other issues I have been told by a lawyer for free that I don't need a lawyer.

Software Dev =/= Attorney

[wannabe]

You said it yourself. You are a software dev and not an attorney. Stop trying to play one. While you may have a significant disrespect or distaste for their very expensive profession, when you need one, you need one. IP infringement can be a VERY expensive thing to deal with. Do you have a spare million or so laying around just collecting dust that you don't care about losing? If the answer is no, then talk to an experienced attorney. It will cost you a few hundred to a few thousand to have them review your case and potentially put up a defense, but it's money well spent.

Unfortunately, IP trolls are a fact of life in tech these days. You have better odds of hitting the powerball than doing your own defense and winning though. Stick to what you do best and hire experts at what they do best when these guys come knocking at your door for stupid claims.

Re:Software Dev =/= Attorney

[NicBenjamin]

And it probably would not cost that much.

Most Attorneys charge a couple hundred an hour. For $400-500 you'd have an expert opinion on precisely how good their cases were, how to deal with those cases (paying another $250 for a lawyer's letter might work, for example), and you'd probably get a nice little lesson in registering trademarks and searching the uspto.gov website too.

Now if you're far from the US that could be a hassle, but OTOH if US Law is getting your business thrown out of the Google Play Store then it's kinda important you know what the fuck you're doing, and that means Skyping an American lawyer.

Re:Software Dev =/= Attorney

[Anonymous Coward]

or name your app popplers which apperas to be the only non-registered trademark.

Re:Software Dev =/= Attorney

[Anonymous Coward]

Popular kids bully nerds at school, everyone who isn't a techy bullies techies in business. That's just the way the world works. If you work as a programmer or engineer for some megacorp, whether or not your life is a misery will depend on the whims of your MBA or liberal arts boss. If you go freelance, you're going to be preyed on by lawyers.

Want to be a meat eater in life, not the prey? Divert the the most valuable gift you received at birth, your capacity to absorb knowledge, from learning about how machines work to learning about how human minds work. You'll be staggered by how much of the behaviour you see around you is not only logical but predictable (logical from a psychological lens, not from 'common sense'). Then choose a career where your job is to programme people rather than computers. Start programming them to do shit for you.

Re:Software Dev =/= Attorney

[Cederic]

Sure, just another $250 for a lawyer's letter. Because an app selling for $1 generates the sort of revenue for everybody that they can just throw several hundred dollars away.

Shit, I earn a healthy salary and I think $250 is too much. Lawyers are fucking expensive.

Re:Software Dev =/= Attorney

[Anonymous Coward]

You must be an Attorney, otherwise you'd have used !=

=/= . . . .is that equals over equals? WTF???

Re:Software Dev =/= Attorney

[Anonymous Coward]

You have better odds of hitting the powerball than doing your own defense and winning though

That is more the effect of the pro-se and Judge's not wanting to deal with them than the pro-se being an idiot.

The pro-se will not win their case due to law and facts being on their side. They will win because the politics are on their side and your anonymous hand-waving can't get the Internet masses to throw in politically. (the Rule of law radio personality Randy Kelton spends hours discussing how to play the political part of the game BTW)

(The most fun I've had reading pro-se's slugging it out is over here: https://ia801402.us.archive.or... The one pro-se makes claims about redcoats/nazi's and Selma Alabama in his filings and the other is trying to be funny. Failing at it, mostly.)

Re:Software Dev =/= Attorney

[allo]

Or from math. There is more than your C(++) skills ...

What about ? Hello Pascal!

Re:Software Dev =/= Attorney

[allo]

less than greater than
(slashdot eats these signs even in "plain old text" mode)

Change the names

[Anonymous Coward]

Sounds like the least expensive option is to rename your apps.

Re: Change the names

[Anonymous Coward]

RTFS.

It was a word used in the description of the app, not the name of the app.

Re:Change the names

[innerpeace]

I concur. Your enemy has a lot of stored ammo and probably has practice using it. You have minimal, if any, ammo or defenses, and no practice using either. You are not prepared for war, even if your enemies are bullies and you are in the right. You might be able to put something up somewhere showing the name of your old apps have been changed to the new names, so people looking for the old name can still find them. I can't imagine that a notice that you've changed your apps names to avoid potential trademark issues would be subject to a takedown. If you badmouth your adversaries in those notices, they might still attack, so be polite, no matter how you really feel about them.

Re: Change the names

[Anonymous Coward]

"This time around the trademark holder has a trademark for the name of my application, and I admit that at face value it seems more legit."

Seems like you need to RTFA, bro!

You could have done a trademark search first

[Anonymous Coward]

Just a google search for a common dictionary word? Really?

Its lawyer time

[Karmashock]

I know you're afraid of the money... but this is why the legal system exists.

You can either personally educate yourself about trademark law, hire a trademark lawyer, consult with a trademark lawyer then inform yourself using their consultation as a baseline, pay the trademark troll, or you can change your name to something else

Those are your options. Google isn't going to get involved because that would take their time and money. They don't want to get involved.

So... you deal with it.

It is a bad idea to call your app "Windows"

[Anonymous Coward]

Avoid common words.

Make up a word or use a random generator.

Totally sucks

[meerling]

first to be clear, ianal.
Now, you are getting screwed, and he's not going to stop because he has rabid lawyers on his side and if he doesn't "defend" his trademark, he's going to lose it.
Is he over-reaching, well as we don't know what products and trademarks are involved, we don't know but it sure sounds like it.
How do you deal with this? Like it or not, lawyers. He's the big dog, and he's after you like a pitbull on a chihuahua. You NEED a lawyer to fight back.
(That really sucks as I don't like lawyers in the first place, but the best thing to fight a lawyer is a more competent lawyer.)
He's betting you won't get a lawyer and fight back, so he gets to walk all over you, period.
Google on his side? No, someone at Google is just rubberstamping this "complaint" because it keeps them from having to deal with getting dragged into the lawyer fights. That and I bet they get a whole lot of these every single day. Have you seen how many hundreds of thousands, and rising, of copyright complaints they get each year? I'm sure they have trademark infringement claims that are equally numerous and stupid. (By numerous, in this case, I mean enough to make someone choke if that one person was told they had to process them all.)

Invalid trademark. Those are occasionally given out, like invalid patents, only more often. Far too often they assume any trademark issues of inappropriateness will end up going to court to get straightened out. That rather invalidates their position as gatekeepers tasked with preventing the bad ones getting through in the first place, but it happens. Unfortunately the only way I've ever heard of dealing with it is to hire a lawyer to fight the charges, and to force the trademarks office to put it up for review as being an invalid trademark.

So in short, ignore everything everyone on this forum says, other than go get yourself a lawyer trained in this field. (I feel dirty for saying that.)

Re:Totally sucks

[93 Escort Wagon]

Is he over-reaching, well as we don't know what products and trademarks are involved, we don't know but it sure sounds like it.

Why do you assume that? I know it is in line with most of our pre-conceived biases, but we've been told pretty much nothing about this case. I don't know the original poster, and I have no reason to accept what he's telling me is accurate - or even true.

Re:Totally sucks

[znrt]

I don't know the original poster, and I have no reason to accept what he's telling me is accurate - or even true.

he could not even exist, it could be a machine generated article, and it wouldn't make a difference. people just discuss the content, which happens to be the perspective of this imaginary guy, the perfect internet stranger. whether he's telling the truth or not isn't relevant in the discussion, unless you want that to be the topic.

Re:Totally sucks

[grahammm]

Now, you are getting screwed, and he's not going to stop because he has rabid lawyers on his side and if he doesn't "defend" his trademark, he's going to lose it.

But the OP says that the app had been available for 5 years before the trademark infringement claim was made. So either the OP is not infringing because of prior use or the claimant has not been "defending" his trademark.

NewYorkCountryLawyer

[McGruber]

I can probably afford some advice from a lawyer, and may very well go that route,

I've never worked with him, but I suggest you start with NewYorkCountryLawyer. Ray's contact information is on his website, Beckerman Legal.

but I sincerely doubt I could afford defend myself against an actual lawsuit.

That's all the more reason to consult an attorney now!

Re:NewYorkCountryLawyer

[Anonymous Coward]

I've never worked with him, but

So you are recommending someone you've never worked with, probably never met and never will do; but as they occasionally post on /. with complete fence sitting non-committal posts, you are advising someone to seek their counsel? Have a work with yourself and visit the real world.

Why are you here? Talk to a lawyer FFS.

[ip_freely_2000]

Stop being cheap and talk to a trademark lawyer. You're just wasting time sifting through all of the responses, likely looking for sympathy. Hire a lawyer to either find out what you should already have found out, or change the app name (and risk going through this again).

Re:Why are you here? Talk to a lawyer FFS.

[Anonymous Coward]

It's a fake piece. /. needs "articles" to generate traffic. Notice the lack of products, applications, values and company in question from the post? Classic signs of a clickbait number to fill a slot.

Why is this an "ask slashdot"?

[tlambert]

Why is this an "ask slashdot"? You are asking the wrong people.

https://www.eff.org/pages/lega...

mailto:info@eff.org

Re:Why is this an "ask slashdot"?

[Anonymous Coward]

Slashdot would seem like a reasonable place to ask if other small devs are running into similar situations and how they're dealing with it. The obvious answer is to lawyer up, but it's also interesting to know if other devs are just taking being bullied by trolls and moving on. Apps got yanked Friday night. Doubt I could find a lawyer's office open at 1am Saturday morning to talk to. That'll wait until Monday at the earliest. Devs are online all the time.

verfication of claim, and due diligence

[Anonymous Coward]

Here are some thoughts, and yes I have been in your situation both as a developer, as a business consultant to other businesses under litigation, threat of lawsuit, threat of fines, both domestically and internationally, etc... yet, there is always an appeal process that one can do themselves as long as you are doing what you are doing "in good faith", "reasonable and prudent", "without intent to harm", and "not willful".

Always be armed with constructive thinking and ethics, and a few maneuvers to fend off trolls. If you believe you are correct you can issue a cease and desist letter to the person(s) or entity contacting you and if they don't stop use the Internet's famous AUP and TOS from where the email is coming and issue that to their ISP or email provider as abuse. Think of it as the Internet's version of the Postmaster General.

As far as research, always have a folder of your project or product that is useful in terms of evidence of concept (EOC) and always that can come as your product reveals itself to you as working. Remember, just add TM to the end of your product as long as it is unique, useful and innovative, and you do not directly and "willfully" infringe. o interstate commerce and that is the beginning of a good level of protection.

Have you looked at uspto.gov and did a search to verify the trademark?

If the infringement is on a proper noun, you might not have a leg to stand on; however, if the word you are using is for instance descriptive rather than a title and not competing in the same product or service space, you should be ok.

Remember that Google is not about verification of claims, nor do they act like ombudsman, just like the better business bureau; they don't verify legitimacy of claims but do take action against you as a person or business. Think about the Yelp business model and why it works and does not.

Since the facts of your conversation are not shared as in the word you have used that a "celebrity" claims you have infringed, I would break bread and come to some agreement or await a certified letter and/or complaint.

Continue on and keep the faith,

Yours Truly,

"Mr. Pro se"

Give us details

[gnasher719]

The details would be: What is the trademark, and to which trade does it apply? (For example, one place I worked used "Apple Security" as their security company, which was totally unrelated to the Apple Inc., with not the slightest trademark problem). And how are you using that trademark?

You are saying you are using a simple word in the dictionary. Apple is a normal word in the dictionary. Try using it for selling computers, software or music. At least give us enough for an educated opinion - even though people here are not lawyers, or not your lawyer.

Like all Legal issues, play the game or lose...

[kbonin]

Trademarks may stink, but they're the law. If you come up with an app you want to protect in a business segment, the ONLY way to protect your use of that app name in stores and (if you managed to acquire it) the domain name is to get yourself a REGISTERED trademark on it for that market segment. You can do it yourself for a few hundred dollars (US only). Without it, others can make a [poor] copy of your work, legally take your domain name away, have your app removed from stores, and cause all sorts of problems. You may be better off renaming your app to something you obtain a trademark for and telling your customers why you renamed, then pay a laywer to beat someone else's REGISTERED trademark of a mark you were using, as that could easily cost tens of thousands or more. Remember, the "legal" system, like the "justice" system, is a massively rigged game for people with money and influence to use as a club. Nothing about them is fair or just in anything but name. There are billion dollar companies for whom playing this game is their basic business plan, and you having your own registered trademark at least blocks your easy removal from the most common search surfaces of the web...

Re:Like all Legal issues, play the game or lose...

[dgatwood]

Trademarks may stink, but they're the law. If you come up with an app you want to protect in a business segment, the ONLY way to protect your use of that app name in stores and (if you managed to acquire it) the domain name is to get yourself a REGISTERED trademark on it for that market segment. You can do it yourself for a few hundred dollars (US only). Without it, others can make a [poor] copy of your work, legally take your domain name away, have your app removed from stores, and cause all sorts of problems.

That's not true, at least in the United States (even for "famous trademarks"). If you are using a name in commerce and can document that you were using it prior to when the trademark was registered, your use of the trademark is considered to have priority, at least within the geographic region in which you were previously using it, and within the same category of products.

Here's what you do...

[JustAnotherOldGuy]

...get an attorney to write a few letters back stating that you do not believe there is any infringement and you will contest this in court if necessary.

99.9999% of the time you'll never hear from them again.

Trademarks

[ihtoit]

It's a fucklot easier to trademark a logo or device (think twin golden arches, the swoosh, the bite, the four colour wavy-pane*) than it is a word. Those devices are immediately recognisable just from their descriptions.
I have two: Blind Lady Justice In A Box, which I used for my civil advocacy, and my old DWE device I used for a line of public domain video collections on DVD. Both of which I have successfully defended in court.

*In case you missed the references: McDonald's, Nike, Apple, Windows

Re:fewer

[JustAnotherOldGuy]

I'm in favor of your idea (shooting trademark trolls), and was wondering if there is a Kickstarter campaign I could donate to in order to make your vision a reality.

Re:Just kill the SOBs

[JustAnotherOldGuy]

Short, sweet, and to the point. If only it were legal. :(

You blast them all over the internet.

[Lumpy]

Honestly you out full details of the trolls to all forums you can find and air their dirty laundry.

Everyone that protects these scum by not posting their name and address are as scummy as the trademark troll.

Re:You blast them all over the internet.

[Anonymous Coward]

This.

Also, you stop relying on google, who will roll over as soon as some troll asks them to. Set up your own infrastructure and when the trolls come knocking you tell them to go fuck themselves.

Lawyer up, fast.

[engineerErrant]

I am part of a small independent app company as well, and we have been on the opposite side of this issue a couple times. It is just as common, particularly on Android, for low-budget teams (often in third-world countries) to purposely build a confusingly similar product in an attempt to make a few bucks before they get shut down. Honest developers face trolls on both sides.

Half our defense is what steps we've taken to work within our awful, awful system of IP law. Copyrights, trademarks, even a couple patents. The other half is maintaining good relationships with Google and Apple, so that when a problem arises, we can appeal to them quickly. I think both have been absolutely essential.

If you have not spent the time and money to build your legal bullshit-shield, you should do so ASAP but be prepared that you may take some heavy losses before the dust settles - your troll has home-turf advantage here.

I've run into similar trademark issues before

[Anonymous Coward]

I work for a tech firm called Dolphin Computing. We sell computers. We were treated by a company called Dolphin Books whose primary business involved publishing books. They had a trademark on the word dolphin for use in publishing and for use in software. When we attempted to register the trademark they threatened to object to the registration. However in the process they proposed a solution that would be agreeable to them. They said if you agree not to use the trademark for anything other than computers we won't object.

The problem was that the word dolphin is very commonly used in the technology sphere and we couldn't make such a promise as the computers we sold might at some point ship with software that contained the name dolphin. Our lawyer responded saying that we would not agree to the terms for this reason, but proposed to cross software part off the list, and then we would agree to it, provided they cough up $5,000 to cover the costs of cancelling our trademark application and re-applying (I forget why we would have to do that, but none-the-less).

Long story short they didn't file an objection to our registration and we never heard from them again.

* I'm not a lawyer and this is not legal advise. Merely an anecdotal story.

government issued trademark

[BradMajors]

I don't see how you could believe you have sufficient legal expertise to use someone else's government issued trademark without their permission.

Go to USPTO and search it first

[thedavidcathey]

1) If you're going to use a name, go use "TESS" at www.uspto.gov and do a trademark search. This is free, requires no lawyer, and can save you some issues up front. If someone is using the name, you're open to challenge. 2) If the name isn't used (or at least isn't used in the same field), file a trademark application. I did this myself for my trademark, and cost about $250. No lawyer needed. Then start using it in commerce as soon as possible. Once it comes through, make sure you put the (tm) around it to indicate it's a real trademark. You might can save a little money by picking the name, publishing the app, and filing the trademark form with "currently in use in commerce". Then if someone wants to use it, too, you're date will be an advantage. The application is published for (60 days?) in the gazette, where people can look and challenge the trademark application. If someone does, then you can lawyer up. If not, and get it granted, you're in good shape. Then if someone challenges you on it, you can show you have a valid trademark and it becomes more difficult for them. If they really are hard core, then you may lawyer up again if needed.

Raise the issue to Google

[Anonymous Coward]

If its a blatant troll then I would think Google would be interested. They want developers working on Android and providing content for their store. It's in their interest to make sure that devs are not harassed. Although getting in touch with someone who cares may be difficult...Maybe an article like this helps get their attention :)

Leave America

[Anonymous Coward]

The legal system in America is corrupt and insane. There is no good way to deal with the various pirates and hucksters that dominate American society.

Re:Leave America

[Anonymous Coward]

Ha-ha....
With totally one sided treaties like TTIP etc bringing US Copyright and other crap to the rest of the world soon we will all be bowing down and paying $$$$$ to the US legal system. There are far too many lawyers in the USA now so they have to have new countries to rape and pillage. Well at $500+/hour it can't be called anything else.

Fuck the USA and treaties like this (blame Disney for a lot of the Copyright stuff just because of a gerriatric mouse)
 

Re:Just kill the SOBs

[cpt kangarooski]

Even if trial by combat became legal once again, it wouldn't be done with surprise sniping. Instead the litigants would have to fight it out at their municipal thunderdome or something.

Re:fewer

[the_povinator]

Would upvote if I had mod points.

You can't troll a trademark

[Anonymous Coward]

I am assuming you are in the U.S. If that's the case, they aren't trolling (or at least trolling in the patent sense of the term). In the U.S., trademark law has a "use it or lose it" provision where if you don't actively protect your registered trademark by going after unauthorized users of the mark, you lose your own rights in the mark. This is a very different incentive from patent trolls. So, it might not be that they are trolling you, but rather are protecting the time and money they invested in their own mark because of how valuable their mark is to them.

You're in business now

[Anonymous Coward]

And running a business has all sorts of incidental expenses, only one of which is paying for professional advice about trademarks and other IP issues. I'm sure you've filed the paperwork for your city or county business license if needed? You pay taxes on business assets?

None of this is "overreaching of government".. it's just part of being in business: the fees are low for small businesses, sometimes even waived if your revenue is below a threshold. But once you say "I'm selling" you've stepped from "my hobby" to "my business".

Two choices.

[idbeholda]

Tell them to fuck off, or change the name of the application.

stop stealing other people's stuff

[Anonymous Coward]

all you have outlined is various cheap excuses for your bad behavior. I wouldn't let this go on too long. You sound like you will have a lot of money one day and it would be a shame if you had to give it all away.

If a town has only one lawyer, he starves

[Anonymous Coward]

If a town has two lawyers, they both get rich.

Re: Just kill the SOBs

[Anonymous Coward]

Spearfish the fcuker
Hijack his browser and send him to websites
Remove hijack
Anonymously inform the cops
Fcuk him and save countless other devs his dramas

Trademark isn't Copyright

[gavron]

There's no such thing as a "trademark takedown". Whatever you were presented with from your hosting company (you said "google" but that's not clear) has no basis in law.

There' s also no copyright "takedown" although companies have created policies that react to "notice of alleged infringement" as if it's a takedown notice.

Still, not enough details to be useful. You need a good lawyer. You also need to tell the hosting company to put your content back up. Trademark violations are resolved in a court, not by takedowns (no such thing) on the Internet.

Best

Ehud
Tucson AZ US

Re:Trademark isn't Copyright

[corrosive_nf]

Google App Store fuckhead.

Dealing with trolls

[spiritplumber]

Trolls regenerate. Use fire or acid once you get them below 0 HP.

Nothing at all

[allo]

If the users need the trademark to identify your app, you already lost. Get place 1 on google and quality that distinguishes your program from the others. Then there's nothing left to fear.
Fuck trademarks, patents and other "i thought of something, now you're not allowed to think of it, too" stuff. (This does NOT include copyright, which describes the result of work instead of some thoughts everyone can have)

Not doing bussines in the US is viable

[Anonymous Coward]

For most app developers the revenue is so low that US legal costs will wipe out any profit you might make. Although there is no guarantee that won't happen in for example the EU, the costs of going to court are lower en especially in IP conflicts there is a loser pays system in many countries.

Without juries in many countries the outcome is also much more predictable, we don't have punitative or often even statutory damages. So anyone claiming damages has to actually prove the damage you caused him.

ALl this results in lower risks and costs and therefore affordable insurance. Just incorporate in the EU and only do bussiness in the EU, there are still millions of potential customers for a good product and less headache. As an added bonus: although there are some software patents in the EU, the generic crap that gets approved in the US is largely missing. You can actually add functionality to your software that you would not be able to in the US. The result should be a distinct market advantage over US based companies.

As an added bonus, an unenforcable default judgement against a corporation is much less likely to cause you problems on a vacation trip in the US.

The only thing missing to do this seems to be the ability to deal only with european app stores. I don;t believe there are any...