marcjschmidt•21h
VC-backed company just killed my EU trademark for a small OSS projectitem?id=44883634

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.

26 comments
  • snthd•10h

    https://www.deepki.com/about/#certifications-awards

    >Deepki holds the label BCorp certification, thereby strengthening its commitment towards its communities and stakeholders.

    https://www.bcorporation.net/en-us/standards/complaints/

    >B Lab will investigate material, credible, and specific claims against a current B Corp in one of the two following categories:

    > 2. Breaches of the B Corp Community's core values as expressed in our Declaration of Interdependence.

    https://www.bcorporation.net/en-us/certification/

    >B CORP DECLARATION OF INTERDEPENDENCE

    >As Certified B Corporations and leaders of this emerging economy, we believe:

    > That we must be the change we seek in the world.

    > That all business ought to be conducted as if people and place mattered.

    > That, through their products, practices, and profits, businesses should aspire to do no harm and benefit all.

    > To do so requires that we act with the understanding that we are each dependent upon another and thus responsible for each other and future generations.

    • kriro•59m

      Good find. Might be worth to read this and consider filing a complaint. Seems pretty clear they are in violation of BCorp values: https://www.bcorporation.net/en-us/standards/complaints/

      If it's worth it. OP needs to decide.

      • keysdev•37m

        BCorp is just virtual signaling. There is no reason for small business or startup to be Bcorp

    • fakedang•2h

      Is it possible to report B corps not working in accordance with the principles?

    • Lionga•9h

      What an absolute piece of trash company

  • o11c•2h

    Don't forget the greatest enemy of both abusive companies and abusive government: the news media. And this definitely seems big enough for them.

    See if you can "shop" around (start local) to see who's interested in publishing a story something along the lines of "The EU has declared war on small businesses. I'm being forced to pay thousands of euros because a brand-new company decided they wanted to steal my years-old project name."

    • terminalshort•29m

      The news media is abusive companies. Some of the worst. And they are one of the largest beneficiaries and supporters of abusive government, like how they are attempting (and sometimes succeeding) at getting governments to shake down companies who link to their sites. That's not to say they aren't sometimes the enemy of other abusive companies or governments, but that's purely incidental and transactional in cases where it goes against them.

    • tmpz22•7m

      Wealthy US startup steals EU trademark is a sticky title

    • WhyNotHugo•59m

      > Don't forget the greatest enemy of both abusive companies and abusive government: the news media. And this definitely seems big enough for them.

      Bad publicity is still publicity.

  • kriro•1h

    I saw on Reddit, that you already reached out to some people in the OSS space that might have the legal expertise. This actually seems like a very relevant case to me. If a trademark is granted to an open source project, it seems ridiculous to me to apply market based use criteria.

    Tbh...use should already be satisfied by having a Github or website and using the registered name.

    Keep us posted.

  • comrade1234•37m

    Trademarks are for commerce, no? If you had charged even a few customers would it have helped?

    Now that they own the trademark you can't make money off of it but you don't have to give anything up - if you have the url and aren't charging anyone you can hold onto it.

    > I dealt with this years ago - it would have been about $250K to challenge the trademark for something that I'd been using for a few years.

    • chris_wot•11m

      You can't trademark something that is used already. That's why this is so egregious.

  • nivertech•17h

    IANAL, but I remember a case with a startup where 2 of the founders were lawyers. They found themselves in a similar situation & decided not to fight it, but to use it as an opportunity to rebrand

    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

  • mmmlinux•2h

    Trademarks mean nothing. A bigger company can always come along and bully you till you give it up. Just like what happened to Allen Pan and his Mythbusters trademark.

    • ljlolel•2h

      My friend won a 9 figure trademark case with a mag7 company

  • daedrdev•2h

    The EU pushes heavily for consent for tracking, yet you need to track your users locations to keep your trademark, thus requiring that every company has to have a popup asking to track that data.

  • molszanski•3h

    This is sad. Sorry to hear that!

  • molszanski•3h

    What would you do if random corp would come and try to hijack your open source identity?

    • bawolff•3h

      Did they actually try and hijack their identity? Hijack to me implies actively trying to steal their reputation. Sounds more like the name wasn't particularly unique and they independently decided they wanted to use that name.

  • raverbashing•3h

    Honestly just cut your losses and move on

    Google Analytics is not something that's "trademark used for actual trade"

    Is the big company being a jerk? 100% But then sign m again the project is self-described as a "small OSS project"

    I can understand it being handled like that as it prevents "trademark squatting"

    • terminalshort•26m

      I would be inclined to agree in the case of trademark squatting, but I fail to see how it can be squatting if the "squatter" owned the trademark since before the squatee existed. That just doesn't really make sense.

    • fzeroracer•7m

      What about their use of their trademark is 'trademark squatting', exactly?

    • suspended_state•2h

      While I think there's very little chance for the author to overturn this decision, and thus agree with you that he should just move on, you should have a look at the amount of features this small project offers. I don't think this could be considered "trademark squatting", there's a real effort put in that project, and for many years.

      Perhaps I have the wrong idea of what it means to do trademark squatting, or did I misunderstand your point?