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 croslof@wikimedia.org Date: Mon, Dec 11, 2017 at 10:46 PM Subject: Re: [trademark] Trademark for WikiJournal To: Mikael Häggström editor.in.chief@wikijmed.org Cc: Trademark trademarks@wikimedia.org, Woubzena Jifar < wjifar@wikimedia.org>
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@wikimedia.org (415) 839-6885
On Sat, Dec 2, 2017 at 11:37 PM, Mikael Häggström < editor.in.chief@wikijmed.org> 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