How To Resolve A Trademark Issue Politely & Without Legal Threats

from the how-it's-done dept

Another trademark dispute, another horrible and negative story where the mark owner acts like a jackass, right? I mean, the trend is clear, from 60's rock legends suing over penis-apps, to game producers suing over terms nearly a century old, you get the idea that everyone with a trademark is Oscar the Grouch. They just can't help but call in their big shot lawyers, who immediately send out the cease and desist notices, even though they'd rather mail out one of those Harry Potter howler letters or possibly a small nuclear weapon. It's inevitable.

Or, then again, perhaps it isn't. Nick writes in with the tale of an absolutely brilliant response to a trademark dispute from the mark holder, who not only left the lawyers at home and replaced them with a polite letter, but was so over the top kind about the whole thing as to suggest other words for the violator's product, turning him into a potential customer.
Early in December here at Wordnik we got a nice email from one of our loyal users, letting us know that there was a word game in the app store using the name “Wordnik.” It didn’t have our heart logo (or even our “gearheart” ) so our correspondent wasn’t sure it was ours … and it wasn’t. So we took a look at the game, and it was called Wordnik. And there was contact info for the developer.
This is typically where we'd see a hateful C&D notice sent, filled with accusations of theft, reports of untold gazillions in very real harm done by the violation, and the promise that if the violation doesn't cease the lawyers will swing by soon to eat the faces off of their children.

Monster
Pictured: Trademark lawyer
Image source: CC BY-SA 2.0

For some strange reason, however, the Wordnik folks decided that there just might be a better way to go than all out war. While acknowledging that their initial reaction was to be somewhat upset over the use of their mark, they instead chose to send the following email (edited only for formatting):

One of the users of our website, Wordnik.com, pointed out to us that your iOS app is also using the name “Wordnik”. You may not be aware that we have applied for a US trademark for the name “Wordnik” and our application has been approved for registration. Since the Wordnik API powers many word games on the web and on mobile devices, our trademark filing for the name “Wordnik” also includes its use in combination with computer games.

I’d rather not drag our lawyers into this (expensive for both of us) — but given our trademark status, you probably want to consider renaming your app (and maybe even using our API, check it out at developer.wordnik.com). How about:
Wordify
Wordista
Wordian
Wordeur


This list of English suffixes may help, too: http://en.wiktionary.org/wiki/Category:English_suffixes

I hope to hear back from you by Dec 31, 2012.
The response was everything they had hoped for. Not only did the other developer respond promptly, promising to change the name of his app and acknowledging that he hadn't realized his error, but the two sides continued to communicate about several topics, including background on the suggestions the Wordnik folks had made and Wordnik's own API and how it could be used to enhance the previously offending app. Not only was this a kind way to handle a trademark request, but it turned out to be an advertisement for the Wordnik product itself. Then, because apparently Wordnik is trying to win some kind of peace award here, they sent the guy a Wordnik T-shirt. The offending app has since changed its name to Wordogram and all is well.

Wordnik notes that this approach may not work universally, but why shouldn't it be the first attempt in most instances? They say it best themselves:
From our point of view, this was the best possible outcome. We defended our trademark; we met a cool, kindred-spirit developer and had a fun conversation; and we found a new word game to play (and possibly gained another API client). And it’s likely none of this would have happened if we’d sent a pissy email, guns blazing.
Let's hear it for kindness and sanity.



Reader Comments (rss)

(Flattened / Threaded)

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    Ninja (profile), Feb 18th, 2013 @ 7:18am

    Simply epically amazing! It's a very human trait: once you are threatened or criticized in anyway you assume a very defensive position and things tend to be much harder for both sides. What they did here was to disarm the developer and get an ally which indeed is the best outcome ever.

    Copyright, trademark, patents are not meant to be used as extortion tools as they are being used today. They are meant specifically for the cases where there's both wrongdoing (as in on purpose) AND refusal to cooperate. Obviously wrongdoing is up to subjectivity but in any case it is the way to go. Kudos for the company and hopefully others will follow the example.

     

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    AG Wright, Feb 18th, 2013 @ 8:24am

    But what about the unemployed lawyers?

    OK that is really cynical but how will lawyers be able to charge huge hourly rates if people are REASONABLE about things?
    The entire economy may crash. The housing industry won't build multimillion dollar houses. Luxury car dealers may go out of business. The consequences could end our entire civilization.

     

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      Anonymous Coward, Feb 18th, 2013 @ 8:45am

      Re: But what about the unemployed lawyers?

      And it is not only the lawyers themselves; by addressing the issue in this manner they also deprive the lawyer's caterers their income, as well as the cleaning crew of the lawyers' offices, and countless other people!

      How dare these people deprive so many people of they hard-earned income. They should be fined heavily, and a general levy should be raised to compensate for all the losses when issues are resolved without involving lawyers.

       

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    Marcel de Jong (profile), Feb 18th, 2013 @ 8:24am

    Blah blah blah

    "Sure, that may work for a small time developer, but for the bigger brands, that would never work. People are always out to freeload on our brands. Blah blah blah blah blah blah blah blah blah blah blah blah blah."
    /s

     

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    Anonymous Coward, Feb 18th, 2013 @ 8:26am

    http://www.wired.com/autopia/2013/02/russian-dash-cams/

    Russians because of the level of corruption there use extensively dash cams in their cars, to avoid not only corrupt law enforcement but others trying to make a buck dishonestly.

    What we do need is the equivalent of a dash-cam for IP laws, where people can see who that person making the claims are.

    IPSearchLight could be a name for such system.

    Collect and record all the data from any case, relevant or not at the moment and start compiling a database and upload it to somewhere.

    So when people get in trouble they can see if the guy doing it has done it before, how many times he won and how many times he lost, what made him win and what made him lose.

     

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    Anonymous Coward, Feb 18th, 2013 @ 8:28am

    What's up with this Tim? I come to TechDirt to have my soul crushed by examples of government overreach on **AA properties and public domain killer drones.

    None of these make me feel fuzzy on the inside, feel good stories.

    This post actually made me smile, instead of slowly killing more of my hope and sanity.

    For shame.

     

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      Dark Helmet (profile), Feb 18th, 2013 @ 8:33am

      Re:

      "This post actually made me smile, instead of slowly killing more of my hope and sanity."

      It's times like these that I navigate to the Techdirt search bar at the top of the page and simply type "Lily Allen". I suggest you do the same....

       

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    PaulT (profile), Feb 18th, 2013 @ 8:33am

    You mean that if you correctly identify the problem, communicate politely with the other party and offer reasonable and constructive solutions that satisfy both parties, you get a different outcome than if you openly attack someone without getting all the details first? I'm shocked!

    Obviously, not every case is going to get the same outcome, especially in cases where the offending party actually is deliberately trying to leech off the trademark or deceive customers. But, why not try a free bit of polite communication before firing off the lawyers? Even an innocent person will get defensive at that kind of attitude and make them less willing to work with you.

    Seems obvious, but I suppose if you're in the mindset of "us vs. them" and assume that lawyers are needed to stop someone "stealing" whenever you see a potential violation, then things might look different. One reason why trademark and copyright discussions need to be talked about in this way rather than the distortions and FUD so beloved in typical discussions.

     

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      DogBreath, Feb 18th, 2013 @ 11:49am

      Re:

      This is another case that can be used as a perfect example of how to create a win-win scenario (less money/good publicity), and not be like so many others that have failed miserably before.


      It appears the “Wordnik” folks have someone like Dalton (Patrick Swayze) from the movie "Roadhouse", to deal with problems in a calm and rational manner such as this.

      Roadhouse - Be Nice


      Perhaps all legal departments should be required to have qualified legal "coolers" in place to keep everything from turning into a screaming match. Even if a company wins legally, they usually end up losing respect and loyalty from their present and future customers, who in turn will take their money elsewhere.

       

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    Josh, Feb 18th, 2013 @ 8:47am

    Good on both people involved in this. See Behaving like humans is good!

     

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    Anonymous Coward, Feb 18th, 2013 @ 10:03am

    I've applied the same technique (stay calm, contact the other party in a friendly manner, try to work something out) in other contexts and most of the time it works perfectly :)

    As a bonus, in case the other party is an asshole you are now justified in pulling out the big guns. Win-win for you.

     

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    Franssu, Feb 18th, 2013 @ 10:56am

    Who will think of the lawyers ?

    Seriously, poor Trademark lawyers left in the dust with nothing to eat ? They're gonna starve and disappear, is that what you want with this beatnick attitude ?

     

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    Internet Zen Master (profile), Feb 18th, 2013 @ 2:40pm

    Well, there's a little bit of my faith in humanity restored...

     

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    timmaguire42 (profile), Feb 18th, 2013 @ 8:26pm

    Probably get sued by Instagram.

     

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    Anonymous Coward, Feb 19th, 2013 @ 3:30am

    What happens when we run out of words?

     

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    rasterbate, Feb 19th, 2013 @ 6:17am

    Flabbergasted!

    Large companies and corporations have a tendancy to act like playground bullies when it comes to this stuff - we all know that. So how will they maintain their "tuff-guy" king-of-the-sh!t-pile attitude when they're going around being nice to people?

    I think as consumers we would be adrift in a sea of ambivalance, unable to choose one product over another without weight the level of repugnacy offered by the manufacturers of those products. If everyone starts being nice, how will I know where to shop?!?!?!

    xoxo,
    Walmart

     

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    Michael Nathanson, Feb 27th, 2013 @ 10:42am

    I'm the Wordogram guy

    Hey there. I'm the indie developer mentioned in the blog post above behind the game Wordogram. It's nice to see that people have been inspired by the correspondance between the wonderful folks at Wordnik, and myself. On the other hand, it's slightly disheartening to see how the general reaction to this is one of surprise. If only it were expected that kind, courteous modes of communication were the default.

    As a self-funded developer, I can't help but to take this opportunity for some shameless self promotion. Forgive me. If you're inclined to check out the free iOS game in question, I would be grateful if you downloaded it. Here's the short link: http://tinyurl.com/wordogram

    I also have a new iPhone game called 4 Clues 1 Word, just released today that I would be very thankful if folks downloaded: http://tinyurl.com/4clues1word

     

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