Mambo trademark

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Beat
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Mambo trademark

Post by Beat » Tue Aug 23, 2005 9:53 am

masterchief wrote: The Unnamed CMS Development team would like your help in finding a name for that which was formerly known as Mambo.
...
* has no trademark or copyright restrictions or prior use (for example, Mambo is also a trademark of Mambo Clothing)
The fact that "mambo" is registered as trademark for clothing is not a problem for using and also registering it for computer software. I've done an extensive trademark research which shows that "mambo" can be used because its current accepted registrations are not for the same classes of products. I've also done indepth analysis about Miro's current trademarks applications and can propose a plan to continue using the award-winning name "Mambo" all of us and our customers know well.

The detailed posting is on the Mambo trademark discussion thread here:
Beat wrote: ...
There are no trademark registrations which forbid registering and using mambo, except the pending Miro registration, if it does not get oposition.
...which is easy and not costly.
Changing name for the Mambo open-source software seems not a trademark/legal requirement as it stands but would be a pure marketing or politics decision.

So here my not so original but marketingwise efficient, and backed by extensive trademark research, proposal for an award winning and well known CMS name:

Mambo Open Source

("Mambo Open Source" could also be registered).
My 0.0002 cents,

It's up to Core Team and Community to make decision, but it's an option.
Back to work! Mambo component release due...

- Beat
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Re: Mambo trademark

Post by Sundance » Tue Aug 23, 2005 6:29 pm

Beat wrote:
The fact that "mambo" is registered as trademark for clothing is not a problem for using and also registering it for computer software. I've done an extensive trademark research which shows that "mambo" can be used because its current accepted registrations are not for the same classes of products. I've also done indepth analysis about Miro's current trademarks applications and can propose a plan to continue using the award-winning name "Mambo" all of us and our customers know well.
This is also my understanding.  In the U.S.:

First, I'm not a patent or trademark attorney.  But working in media, I have done trademark searches at the US Patent and Trademark  Offices (PTO).  Quite easy in my case since I live just a few miles from the PTO.

It is my understanding that "among" the critera the PTO uses in the approval process is whether there exist a possibility of confusion.  So your correct about the "not the same classes of products" and use.   No one is probably going to confuse the two.  But you also have to be careful not to use similar artwork, color, or fonts for example, of another registered trademark using a similar name even if it's a different class of products.  Again, its the confusion issue.

Also, the PTO will research the first use of the trademark for business purposes.  So even if you were the first to submit a application to register a trademark, and another business or organization can prove that they were using a similar trademark (even if its not registered)  before you, your application for a "registered" trademark could likely be denied!  :-\
Last edited by Sundance on Wed Aug 24, 2005 5:07 pm, edited 1 time in total.

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Re: Mambo trademark

Post by Circlefusion » Wed Aug 24, 2005 12:16 am

What if they wanted to sell merchandise in the form of clothing?

Wouldn't that conflict with a clothing company with the same trademark name?

Problems with defending trademarked names are relative to the amount of money the defending company has.
Take, for example, the Linux distribution Lindows having to change its name because of similarity to the name Windows. It wasn't identical, only similar, and they were ordered to change their name.

This wasn't done in the U.S. courts, but in a country in Europe, I think? But Lindows can't just change their name to Linspire in only one country. They had to change their name accross the board.

Any software could have similar problems if trademarks conflicts are not thoroughly considered. It is highly likely that there are thousands of trademark violations happening in the technology market, but they aren't taken to court by the trademark owners.

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Re: Mambo trademark

Post by Elpie » Wed Aug 24, 2005 3:52 am

Yep, I can attest to that.  I trademarked my company name in 1999.  I had been using it since the early 1990's and wanted to protect it as it was building up a reasonable presence on the web.  The name took a couple of years to go through as it had one objector - a company with a trademarked name which was one letter different to mine and which, they argued, sounded close enough to cause confusion.  The two businesses operated in completely different markets and there was no similarity in products or services.

Another company, this time in the US, started up later than mine & chose the same name.  They also got the .com (some of us back in the 90's were a bit slow in realising that it pays to take all the top level domains).  Over the years this company has not only traded with the same name, but also changed its corporate colours to match mine, and at one point used the exact same template and my logo.  Coincidence? I doubt it.  Five years later, they trademarked the name. 

Over the years I have become a pretty savvy lay-expert on trademark and IP law :)

However, without the legal resources to fight battles over the name in the US, having all the rights and protections under the sun does not prevent my company name being used by someone else.
For Mambo assistance: http://forum.mambo-foundation.org
Open Source Research & Best Practice: http://osprojects.info

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Re: Mambo trademark

Post by Elpie » Wed Aug 24, 2005 3:57 am

Circlefusion wrote: What if they wanted to sell merchandise in the form of clothing?

Wouldn't that conflict with a clothing company with the same trademark name?
That clothing company would jump in very quickly should Mambo offer clothing items, whether for promotion or otherwise.

I understand that someone may have written to the clothing/graphic company to let them know an application is pending approval.  They prevented a cosmetics company from trademarking, so it will be interesting to see if they lodge an objection to this one.
For Mambo assistance: http://forum.mambo-foundation.org
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Re: Mambo trademark

Post by Obfuscator » Wed Aug 24, 2005 4:05 am

Sundance:

Is that the NEW PTO down by the Hoffman Ctr. & Courthouse...

Or the OLD PTO in Crystal City?

I'm in Ballston.

Just wondering.
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Re: Mambo trademark

Post by Troubadour » Wed Aug 24, 2005 5:03 am

You also need to realise what a big-business clothing label Mambo is in Australia. It's a cultural icon for us - particularly since the artist responsible for the label is also a musician from one of our fondest bands of yesteryear - Mental As Anything.
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Re: Mambo trademark

Post by dyrer » Wed Aug 24, 2005 10:36 am

Mambo name is a confused name, it shouldn't never been used for a cms.

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Re: Mambo trademark

Post by Sundance » Wed Aug 24, 2005 5:13 pm

Obfuscator wrote: Sundance:

Is that the NEW PTO down by the Hoffman Ctr. & Courthouse...

Or the OLD PTO in Crystal City?

I'm in Ballston.

Just wondering.
Hello.  We're actually neighbors!  I've only been to the PTO offices in Crystal City. Have not had a need to go there in the past couple of years. 

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Re: Mambo trademark

Post by kosson » Wed Aug 24, 2005 7:17 pm

Hello, I'm not a coder but I'm a good dancer...  :D

Ok, let's change the tune: Let's Tangou !
"First they ignore you, then they laugh at you, afterwards they will fight you, then you win !" Gandhi

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Re: Mambo trademark

Post by Obfuscator » Wed Aug 24, 2005 8:08 pm

Sundance wrote:
Obfuscator wrote: Sundance:

Is that the NEW PTO down by the Hoffman Ctr. & Courthouse...

Or the OLD PTO in Crystal City?

I'm in Ballston.

Just wondering.
Hello.  We're actually neighbors!  I've only been to the PTO offices in Crystal City. Have not had a need to go there in the past couple of years. 
Well, FWIW I found it a pain to go through the underground to get to their previous offices. Their new King St. Station location is much better. The redevelopment in that area is reasonably good and not too visually jarring... pretty good... but then being near Old Town you know that the visuals HAD to be right. :)
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Re: Mambo trademark

Post by brian » Wed Aug 24, 2005 8:17 pm

For the record the mambo clothing company have previously objected to Miro's registration of the trademark.

and they have been vociferous in their objections to the production of any clothing with the name Mambo on them.

I even recieved an international telephone call from their CEO regarding this
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Re: Mambo trademark

Post by whiteboxlabs » Wed Aug 24, 2005 9:52 pm

Obfuscator wrote:
Sundance wrote:
Obfuscator wrote: Sundance:

Is that the NEW PTO down by the Hoffman Ctr. & Courthouse...

Or the OLD PTO in Crystal City?

I'm in Ballston.

Just wondering.
Just a quick request:  can you guys stay on topic, please?  It is hard when reading the forum to have to sift out items that haventohing to do with the thread... thanks!

Hello.  We're actually neighbors!  I've only been to the PTO offices in Crystal City. Have not had a need to go there in the past couple of years. 
Well, FWIW I found it a pain to go through the underground to get to their previous offices. Their new King St. Station location is much better. The redevelopment in that area is reasonably good and not too visually jarring... pretty good... but then being near Old Town you know that the visuals HAD to be right. :)

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Re: Mambo trademark

Post by Beat » Thu Aug 25, 2005 8:25 pm

brian wrote: For the record the mambo clothing company have previously objected to Miro's registration of the trademark.

and they have been vociferous in their objections to the production of any clothing with the name Mambo on them.

I even recieved an international telephone call from their CEO regarding this
Hi Brian,

Thanks for the information. No worries :). If the opposition would have been possible by them, it would have been logged by the Australian trademark office. Clothes are just enough far away from a CMS, even if it's a huge company. The fact that "mambo" is registered as trademark for clothing is not a problem for using and also registering it for computer software ;D. Phone calls, faxes, warnings, handwaiving and negociations around trademarks and registrations (of any existing or new ones) are common business practice. No worries.

We have several options to form opposition(s) to the registrations, if we wish to do so, which would quite probably bar the registration itself. And these are not huge undertakings.

Allso important is that independantly of registration, registration opposition or not, we can use "MAMBO Open Source" as name as this has already been authorised by Miro in the past and now this right can't be withdrawn retroactively.We already have the right to use Mambo, without doing anything, and Miro can't stop retroactively something they have released and encouraged. A change of name is indeed not urgent, but right now it looks like everything depends on that single issue, blocking a lot of time and energy. Therefore a decision either way and PR communication is urgent.

Please forward also all this thread to your legal advisors, if they are not aware of it.

Thanks for all, and please post/pm me if I can be of any help,
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Re: Mambo trademark

Post by brian » Thu Aug 25, 2005 10:23 pm

i'm not sure that you are right there. After long battles with red hat who did revoke the right to use their trademark. My legal advice at the time was that would not hold up in the UK but probably would in the USA. Yes they had weakened there tradmeark by not enforcing it but it was still their mark. And red hat made it clear that they would use the full force fo the law to stop people using their tradmeark even thoguth they had explicityl been given permission to do so before.

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Re: Mambo trademark

Post by Chris » Fri Aug 26, 2005 4:04 am

Have a look at:

ZDNet 22 Aug 2005
There is no failure until you give up.

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Re: Mambo trademark

Post by Rhyze » Mon Aug 29, 2005 3:03 am

The suggestion of 'MyOSM' is the best I have seen on the forum.

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Re: Mambo trademark

Post by marcos » Mon Aug 29, 2005 9:07 am

Tango!!!!

I will like a change of name... I don't think it makes any sense to fight for a name. That takes energy and resources.

and.. of course... Tango gives you the feeling of something vibrant, with style and rithm ;)

cheers!
Marcos


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