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.
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:
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.