As an IM program, I use Gaim. For those who don’t know it, it’s an open source program that handles several different IM types.
Anyway, onto the question… I went to the website and found that Gaim has changed its name, and the reasoning seemed… odd. Apparently, Gaim was originally called GTK AOL Instant Messenger. AOL sent them a legal notice, and so they changed the name to Gaim. A few years later, AOL trademarked the name “AIM”. They then sent a legal notice to Gaim to change it’s name.
What I’m curious about, is how they can register a trademark, and then force a program named before the registration to change their name?
For a better explanation you can go to Gaim… er, i mean Pidgin’s Website.
Because the trademark owner has applied for the right to use the trademark. Gaim evidently did not. Since AOL owns the trademark, they will try to enforce it.
It’s not retroactive in the sense that they can penalize Gaim for using the trademark before AOL registered it. But once AOL gets the trademark, they can tell other people not to use it. I seem to recall McDonald’s using trademark infringement against other restaurants by that name, even if they predated McDonald Corp.
A classic case is the Bully Hill Winery, which could not put the name of its owner (Walter Taylor) on its bottles due to trademark infringement with Taylor Wine (owned by Coca Cola). Walter Taylor was Walter Taylor long before the trademark (he’s part of the family that formed Taylor Wine), but once he started making wine, a court ruled he couldn’t put his name on it without infringing.
Now, it is possible that Gaim could win a court case over the trademark citing prior use. But since they’re open source, I doubt the could afford it. So their only option is to cave.
What both of you are missing is that AOL’s trademark is not retroactive at all. They’ve used AIM the whole time. If Gaim could say they came before AOL used it (either the AOL version or the Gaim version) then they could have continued to use it regardless of whether AOL also used it later.
It’s a common belief that trademarks do not exist until you file for them, or register them, or whatever. This is simply untrue. Trademarks are a natural result of using some word, phrase, image, etc. while marketing products.
AOL Instant Messenger was called AIM, therefore they have a trademark on AIM, and if someone else tries to come along later and also use AIM in a way that would confuse people, then they can stop them. The registering or filing the trademark is simply a formality that helps them better document the fact that they are using it.
So if Gaim named itself to be similar to AIM and marketed a product working of AIM’s pre-existing notoriety, they were infringing on the trademark the whole time, and I’m sure AOL was complaining the whole time as well.
Also, many times the trademark holder won’t have a beef with someone using something similar to their trademark, but will have to issue a “cease and desist” letter because one of the rules about trademarks is that if you don’t protect them, you lose 'em. Leo Laporte had to send a “cease and desist” letter to the guys who’d developed the Twitter software program because his lawyers told him that it was too close to his TWiT network trademark. Leo likes the program a great deal, and doesn’t have a problem with them doing that, but if he didn’t tell them to stop it, then he ran the risk of not being able to block someone from slapping TWiT on anything they wanted to. To Leo’s credit, he’s trying to work out a way for the guys to keep using the Twitter name without paying Leo a ton of cabbage or running the risk of him losing the rights to TWiT.
I would hazard a guess that what’s being worked out is a licensing agreement of some form between Leo and the guys at Twitter. Or, if not precisely a licensing agreement, a contract of some form covering the potential trademark infringement. Such an agreement would have to be fairly carefully and individually worded for that particular situation, so I’m not surprised it’s taking a bit of work on the part of the attorneys.
As a purely academic legal thought experiment, I would think something similar to an indemnity agreement would suffice, but I must admit I have never looked into that particular situation before. Trademarks are funny beasts to deal with from a legal standpoint. Complicated, with not a lot of unified guidance on the subject.
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I miss the easy availablity of Sweet Walter, Love My Goat, and Space Shuttle Red gained by regular trips out to upstate NY. Great wines, I wish they were available (easily) in NH.
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