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?

[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?

[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.

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.)

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.

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.

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!

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.

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.

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.

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.