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Is Trademarking "joomxxx" a Joomla! Trademark infringement?

Posted: Tue Dec 09, 2014 5:23 am
by nikolaypopov
hi,

i asked to lawyers, and they said that it is not Joomla! trademark infringement, but whatever i want to ask you guys, i think you know more.

so can a company, which domain and company name is "joomxxx.com", register tradename as "joomxxx"?
that company is developing extensions and templates for Joomla!
is that Joomla! trademark infringement?

i asked OSM, but wasn't answered,

thank you very much,
Nikolay Popov

Re: Is Trademarking "joomxxx" a Joomla! Trademark infringeme

Posted: Tue Dec 09, 2014 9:49 pm
by jgress-
hello,

you need to get approval from trademark for any domain with joo/joom/joomla in it.

i'll PM you the email address to ask for approval for your domain.

thanks for asking here. appreciate it.
:) jenn

Re: Is Trademarking "joomxxx" a Joomla! Trademark infringeme

Posted: Wed Dec 10, 2014 1:16 am
by nikolaypopov
hi,

so, you mean that if a company wants to register its tradename "joomxxxx" in USPTO, then first it needs approval from OSM? what king of approval?
i'm not asking about domain name, i'm asking about trademark registering.
i have read hundred opinions here, get confused.
and if tradename is "adiblabla", then company needs approval from adidas? why?

my lawyers say that it dont needs approval from anyone, except from USPTO.
I understand that if company needs get listed in JED, then it needs approval for domain from OSM, i'm right?

thank you very much for answering,
Nikolay

Re: Is Trademarking "joomxxx" a Joomla! Trademark infringeme

Posted: Wed Dec 10, 2014 1:51 am
by jgress-
i don't know everything - i apologize. i just know that you should contact joomla trademark and make sure. i've sent the email for you to do so.

best,
jenn :)

Re: Is Trademarking "joomxxx" a Joomla! Trademark infringeme

Posted: Sat Dec 13, 2014 5:40 pm
by Duke3D
Hello Nikolay -

Thanks for asking. There are two topics involved here. First is the one that Jenn responded to. "Can you use Joo / Joom / Joomla in your domain name?" You must apply for a license because such a use can potentially infringe on and/or dilute the Joomla trademark which risks causing harm to the entire community. If the site is generally supportive of the Joomla Project and CMS product, and not misleading, such requests are usually approved and a license is quickly granted.

Second, you asked whether you can register your own trademark for Joomxxx in the US or elsewhere. I am assuming xxx means any ending and is not an intention to associate Joomla with XXX porn content. This is a distinctly different issue and is why we recommend that a variation of the Joomla name NOT be part of your business name and logo. (It might be allowed as part of a product or service name, but that's a different question.) Not using a Joomla-related name as your business name allows your business to grow to support more than just Joomla, such as WordPress widgets, without your customers scratching their heads (Why am I buying a WordPress extension from a Joomla-related company? Can I trust it or them? Do they really know WP as well as they know and support Joomla or should I buy from someone that clearly supports WP?)

Assuming you ignore that suggestion, can you register a trademark? If the proposed trademark is confusingly similar to Joomla and in a related line of business, in order to protect the Joomla trademark, we MUST oppose the registration unless we have a specific agreement in place before the application is filed. We let many people use a variation on our name with our permission. We never let anyone own an independent trademark that is adverse to and weakens ours. The reason is that by filing an independent registration, you have switched from a complimentary use to a competing use of our name. The primary test is whether there would be confusion among consumers, such as people viewing search results, whether the company is The Joomla Project, affiliated with it or endorsed by it, and perceived as under or affecting Joomla's reputation for quality. We have opposed and cancelled third party registrations of marks that meet the Joomxxx pattern even though we embrace them as active contributors in our community and license them to use the name prominently as their business name and in their domain.

Not all variations on the Joomla name will cause confusion and so not all of them will be opposed. But, why take a chance of wasting both your money and Joomla's money by forcing us to launch a legal battle if we can work things out in advance.
There are no black and white guidelines we can put up about which xxx's will be different enough to not be an issue and which xxx's are clearly a problem. As a general rule, we put out the warning that having Joo/Joom/Joomla or anything that is confusingly similar in spelling or sound can be an issue and that we would prefer that you be up front about your interests and intentions and apply for a license. We try hard to come up with a workable solution with everyone that makes the attempt to work with us.

The trademark team's mission is to make sure we all play nicely with each other and enhance the Joomla brand for everyone's benefit. We try to find a way to say "yes." But if you don't work out an agreement and simply file an adverse registration that is in our line of business and confusingly similar to our mark, we will all necessary measures to protect the Joomla mark, including opposing the registration, delisting any listings in the JRD, JED and elsewhere, and generally making your business life miserable for having made our team's life miserable. You are invited to work with us instead of against us. I believe Jenn has PM'd my direct email address. For others, use license@opensourcematters.org to talk to us about your plans.

Re: Is Trademarking "joomxxx" a Joomla! Trademark infringeme

Posted: Sat Dec 13, 2014 6:06 pm
by jgress-
Thank you, Duke.

I did indeed PM the OP your email address directly after my first post. I know it was received as they replied.

:) jenn

Re: Is Trademarking "joomxxx" a Joomla! Trademark infringeme

Posted: Sun Dec 14, 2014 10:43 pm
by nikolaypopov
thank you very much for answer, now everything is clear,
and sorry for "x" words, i just meant different words, didn't thought about it,

Best wishes,
Nikolay