I run a small open-source project Deepkit (Trademark 017875717) I've been building for many years. It's not huge, just a few thousand users compared to the big OSS names, but to me it was worth protecting, so I trademarked the name in the EU and US a few years back. I had hoped to be protected from other corporations this way and live peacefully.
A $160M-funded company named Deepki (Trademark 1751952) came along and filed for cancellation at EUIPO since they needed the trademark now after getting lots of funding. They won. Now my trademark is gone.
The frustrating part? The EU actually does allow open-source (even free projects) to have trademarks, but you have to prove "genuine use" in the EU for the goods/services your trademark covers. Which seems to force you in collecting user sensitive data otherwise you are entirely unable to prove that you have actual users in the EU. I generally try to collect as little information as possible (also because I don't care where my users are coming from). I had google analytics running for some time on the main page (not documentation), but most of the time it didn't work and it seems most of my users block it anyway.
Here's what I gave the EUIPO and why they said no:
- Google Analytics for my site with a full country breakdown from 2018–2023. A few hundred to ~1,800 EU visitors per year per country. They said that’s "too small" to count as real commercial exploitation for my Class 9 software. Also, they said they couldn’t tell which goods those visits were actually for.
- npmjs + GitHub stats - hundreds of thousands of downloads and thousands of stars. Rejected because there's no location data, so they couldn't confirm if the usage was in the EU. In some cases, they said the timeframes weren't even clear.
- They basically kept repeating that they couldn't clearly link any of the usage to the specific goods/services my trademark was registered for.
The conclusion:
>Conclusion: It follows from the above that the EUTM proprietor has not proven genuine use of the contested mark for any of the goods and services for which it is registered. As a result, the application for revocation is wholly successful and the contested European Union trade mark must be revoked in its entirety. According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 18/03/2024.
>COSTS: According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear fees and costs incurred by the other party.
They even admitted there's no strict minimum for usage, and free software can count, but in their eyes my EU traffic was too low and not clearly tied to the trademarked goods.
I also have the US trademark for the name. This same company tried to register in the US around 2022 (Trademark #79379273) and got blocked because it was too similar (decision made by USPTO). But a few months ago they somehow got it registered there too (Trademark #7789522), not sure how they did that now.
Now I'm sitting here wondering:
- Is it even worth getting a second opinion and appealing in the EU? I mean the project is very small.
- Should I fight the US registration?
- Or should I just walk away from trademarks altogether for my open-source projects. I lost so much money because of this already.
- And for OSS projects in general, is there even a practical, privacy-friendly way to prove EU usage without generating revenue?
- Is it even worth holding the trademark if proving EU usage is this brittle for OSS? If the trademark can be deleted just like that even after spending a few thousands dollars on lawyers. Probably a skill issue, but still, damn.
It sucks to lose the name I've been building for years to a corporation with $160M behind them, especially when this is just a side project I do in my spare time, and to them I'm a nobody. If nothing else, maybe my case can be a cautionary tale for other OSS maintainers.
On the other hand, a startup with $160M may be willing to pay u for a US trademark w/o going to court or arbitration
Not after this post, they're not. They've already got a US trademark, and if they simply Google it, and find this post, they're going to realize this person is never going to challenge them in a US court over it.
Nobody told you that you can't use the name, right? And you've still got a US mark, don't you? How is any of this harming your project or your career? ... or more importantly, how is this hurting consumers? Consumer protections are the entire legal reason for granting a trademark.
I mean, you can certainly fight their registration. I just don't know what you or your users would actually get out of it?
If setting your usage price to $0 means no trademark, that's a pretty big attack on non-commercial services. Alternatively if it's more about tracking, that's also quite bad in a different way.
I don't know much about this OSS project... but if there's a case that they need this trademark to protect consumers from harm, then that's your winning argument.
> If setting your usage price to $0 means no trademark, that's a pretty big attack on non-commercial services.
If you really are not doing commerce, trademarks are irrelevant. You can't get one, and you don't need one.
If that is the case, ok. It's just that I was naive enough to believe I could protect my little open-source project from this using a trademark. The EUPIO somewhat confirmed in their writing that you don't need commercial activities, but you need "genuine use", which is, again, hard to prove if you don't collect user data.
Trademarks are only the right to use a name commercially for a particular good or service.
Anything outside of that is fair game.
Yes, protecting consumers. And people are equally consumers of something whether they pay $1 or $0.
> but if there's a case that they need this trademark to protect consumers from harm, then that's your winning argument.
Other than the normal argument for trademark and the evidence of use they had? If you have to show a specific argument for harm, that's way too high of a bar.
> If you really are not doing commerce, trademarks are irrelevant. You can't get one, and you don't need one.
Define "commerce" here.
If we count competing in the market but your product happens to be $0 as commerce, then sure I can agree but this project passes the test.
If a price of $0 disqualifies you from "commerce" then no way, trademarks are not irrelevant and you do still need one. Consumers need to be able to find your product and avoid imitators.
I am not asking for the evidence of what that commerce is. I personally do not care nor do I make the judgment of what qualifies.
But, if you want a trademark, you need to show the trademark office what trade you are going to do with the mark you want them to grant you exclusive use of.
And if you're not going to do any trade, then you don't need to worry about it. Because you cannot infringe on a trademark without doing trade.
Okay cool, glad we're on the same page there, but then I don't understand why you even made your initial comment saying "I can understand why you're frustrated if you feel like you've lost something, but trademarks serve a purpose for facilitating commercial trade."
By your definition, they are engaged in commercial trade. And that was well-documented in the initial post.
> But, if you want a trademark, you need to show the trademark office what trade you are going to do with the mark you want them to grant you exclusive use of.
And the issue is the trademark office is not taking their evidence. They're looking at hundreds of thousands of downloads and saying "hmmmm, might be 99% non-EU, we don't care"
That is what fascinates me the most. The basic assumptions of everything I presented was non-EU. Somewhat annoying, but seeing it objectively, I think it was a skill issue on my lawyers side. They should have said to me "Marc, look, we need hard proof. Ask your fucking users on twitter, on github, an discord, we need a list of X users confirming they are from the EU and use this thing". I believe in good-will on the EU side, that they interpret data in a positive way in my favor - but the exact opposite happened.
I mean, there was some documentation. I don't know if it was well documented.
There's like 160 million reasons why the other company has better documentation.
Ultimately, the a point of holding a trademark is to give you some legal firepower. Going up against the company with $160 million, you're pretty much screwed anyway.
Their best bet in this scenario is to just use the name anyway and not piss them off. There are plenty of organizations, even very for-profit companies, that use the same name and don't have any problem with it because it's not confusing anybody or pissing anyone off.
Better documentation of someone else's user count?
I don't think that's happened though.
Of course, if you can't prove to the examiners that you even have a right to the mark, you're probably gonna have one snowball's chance in hell of a time proving that someone else's use of it is invalid in court.