On wikipedia-l, Ed Poor raised the question of PhatNav (one of the many sites that copy us) calling itself "a Wikipedia". As Jimbo indicated, this is something we need to guard against, otherwise we risk losing trademark protection for the Wikipedia name.
This brings up again the issue of whether we should start registering trademarks belonging to the Wikimedia Foundation. Without necessarily resorting to threats of legal action, I think it would be far more effective if we can tell people "Wikipedia is a registered trademark of the Wikimedia Foundation" instead of just "Please do not use the name Wikipedia on your website as if it was the name of your encyclopedia". Trademark registration is something people will recognize and respect. They will generally respond more quickly, and they will be more likely to comply, even if the person notifying them is not in an "official" capacity.
The filing fee for a trademark application is US $335 (I'm assuming we would start by registering in the US). We should at least consider registering trademarks for Wikimedia, Wikipedia, Wiktionary, Wikiquote, Wikisource, and Wikibooks. Granted, with our current financial resources it may not be practical to try and register all of our trademarks in every country we reach. But US registration is an important start, and would facilitate international registrations later. Given the exposure we're getting, I think registering Wikipedia as a trademark is particularly critical.
--Michael Snow
There are problems with posting to this list from gmane, so I'm sending this on behalf of Anthere and Jamesday.
Anthere supports what Michael is saying about the need to register trademarks, and would like to know if anyone has made any estimates of the cost of doing this in each country. Basically, has any overall amount been calculated?
Jamesday has suggested that registering the trademarks are probably not really needed for protection as the name is quite well known now. For domain names, the uniform domain name dispute policy requires that the name be registered and used in good faith. Stealing a Wikipedia name is bad faith and makes any site likely to lose.
Angela.
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This brings up again the issue of whether we should start registering trademarks belonging to the Wikimedia Foundation. Without necessarily resorting to threats of legal action, I think it would be far more effective if we can tell people "Wikipedia is a registered trademark of the Wikimedia Foundation" instead of just "Please do not use the name Wikipedia on your website as if it was the name of your encyclopedia". Trademark registration is something people will recognize and respect. They will generally respond more quickly, and they will be more likely to comply, even if the person notifying them is not in an "official" capacity.
Have we tried telling them "Wikipedia is a trademark of the Wikimedia Foundation" yet? How did it work? Why do we think that adding the adjective "registered" will make it work better?
-- Toby
On Apr 28, 2004, at 4:23 PM, Toby Bartels wrote:
Have we tried telling them "Wikipedia is a trademark of the Wikimedia Foundation" yet?
Is that true? IA-very-much-NAL.
Peter
-- ---<>--- -- A house without walls cannot fall. Help build the world's largest encyclopedia at Wikipedia.org -- ---<>--- --
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
Have we tried telling them "Wikipedia is a trademark of the Wikimedia Foundation" yet?
Like so many others, IANAL, but I've seen statements to the following effect: "(term one) is a trademark, and (term two) is a registered trademark, of (company name)." So there's definitely a difference.
I would strongly suggest placing some kind of statement in the copyright notice of the board, stating that "Wikipedia" is a trademark of the Wikimedia Foundation. When I first became aware of the project, I was confused about the definitions of the terms "wikiwiki" and "Wikipedia" -- for whatever reason, I innocently thought that they were synonymous. (Kinda like xeroxing is now a common verb, even if you're not using a Xerox machine.) I even started referring to my own new Star Trek wiki as "a Star Trek wikipedia". (I of course quickly changed all uses of that term when the error was pointed out to me!)
I'd just like to point out that, since Wikipedia /is/ the biggest wiki out there (probably, anyway), then it could just be an innocent misunderstanding. A statement that Wikipedia is a trademark would go a long way towards fixing that problem.
Just my 2¢, of course. :-)
Dan Carlson
Dan Carlson wrote:
Toby Bartels wrote:
Have we tried telling them "Wikipedia is a trademark of the Wikimedia Foundation" yet?
Like so many others, IANAL, but I've seen statements to the following effect: "(term one) is a trademark, and (term two) is a registered trademark, of (company name)." So there's definitely a difference.
For example, according to a bottle on my colleague's desk here, "diet PEPSI" is a registered trademark of PepsiCo ("®"), while "LIGHT · CRISP · REFRESHING" is merely a trademark ("TM").
But try marketing /your/ soft drink as "light, crisp, and refreshing". If you don't respond to their inevitable order to cease and desist, then they'll register their original phrase, sue you, and win! (OK, so IANAL, but I'll still bet that they'd win.)
I'd just like to point out that, since Wikipedia /is/ the biggest wiki out there (probably, anyway), then it could just be an innocent misunderstanding. A statement that Wikipedia is a trademark would go a long way towards fixing that problem.
I'd hope so; in your case, just saying «"Wikipedia" is our name only; the generic term is "wiki", so please use that word instead.» worked. But «"Wikipedia" is our trademark.» just says «"Wikipedia" is our name.» in stronger language. We should use that language immediately, regardless of the results of research into the feasibility of registration.
-- Toby
On Apr 28, 2004, at 8:31 PM, Toby Bartels wrote:
But try marketing /your/ soft drink as "light, crisp, and refreshing". If you don't respond to their inevitable order to cease and desist, then they'll register their original phrase, sue you, and win! (OK, so IANAL, but I'll still bet that they'd win.)
Then (realizing YANAL) is there any risk in waiting until someone truly pushes the issue to register?
Peter
-- ---<>--- -- A house without walls cannot fall. Help build the world's largest encyclopedia at Wikipedia.org -- ---<>--- --
Peter Jaros wrote:
Then (realizing YANAL) is there any risk in waiting until someone truly pushes the issue to register?
I don't believe that waiting weakens our claim, so long as it's true in fact that the name "Wikipedia" is associated with us and that we defend this. I mean that we would have to prove these facts regardless of whether we wait.
OTOH, waiting to register until the issue comes up will delay the process. That's why I agree that we should get all of the relevant information now, so that we can decide what to do and how best to proceed.
-- Toby
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