Tactful Trademark Defense: An Example

d is for dachshundA trademark is a little bit like a pet. Once you get one, you have to take care of it for life. But instead of food, water, and regular walks, taking care of a trademark involves making sure that you are the only person using it.

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 wordnik's 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 …

Now, this is the point where it’s pretty easy to get all het up and angsty about your trademark. It’s YOURS, by golly! You spent a lot of time thinking it up, paid your lawyers good money to register it, and you’ve put a lot of sweat into building the brand behind it, and … and … and … somebody else has just waltzed in and slapped it on something ELSE? This is the point where lots of people send (or have their lawyers send) an angry, red-in-the-face cease-and-desist email.

[This is the place where having a background in dictionary work made me want to take a different approach. When I was a traditional dictionary editor, I got a lot of C&D trademark defense emails from lawyers, all asking us to take trademarked terms out of the dictionary. Basically, the lawyers know that it’s perfectly okay to have trademarks in the dictionary; a dictionary entry is not a competing product or service, it’s a statement of fact, documenting the existence of the use of a word, trademark or no (and if dictionary editors know the trademark status of a word, that fact is included, too). Those letters were just a bit of trademark theatre to show that the holders are actively defending their trademark, in case they ever have to go to court to defend it. But nobody ever likes getting a C&D letter, no matter how theatrical. They make people feel bad and waste money and time calling in their own lawyers. So I wanted to try something different.]

Our thought process, instead, went something like this: “There’s no evidence that this app is trying to confuse Wordnik users. And their logo (although not as shiny as ours) is cute. Also, Wordnik is pretty awesome name (if we say so ourselves) — it’s not unlikely that someone else would think so, too. And this developer seems cool. So what’s the harm in sending a nice note, bringing our trademark status to his attention? You can always call in the big guns later.”

So this is what we sent [NOTE: all emails here are published with the consent of the developer]:

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:

Wordify
Wordista
Wordian
Wordeur

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 developer, Michael Nathanson, was (as we had hoped) awesome. We got this reply really quickly:

Yeah, I realized only after the fact. I don’t know how missed that. Will try to get it changed up soon. Thanks for the name suggestions.

So since he was being so nice, it was easy to be nice back:

Thanks Mike! Really appreciate the reply.

And we tested a *LOT* of names before settling on Wordnik, I’m happy to give you feedback on your new name if you want.

Mike got back to us with a status update, too:

Know that I’m determined to get a new name but it just may take a couple of weeks before I get it all sorted …

Were the name suggestions that you put forth in your first email ones that you had considered using yourself before landing on Wordnik? Got any other runner ups that you passed up?

Thanks so much, and appreciate the friendly nature of the email.

He was so friendly and responsive, in fact, that we were happy to reply (and we even put out feelers for hiring him — too bad he’s embedded out East!):

We basically added every possible suffix in English (and some that were “unpossible”) to the word “word” while looking for Wordnik. We had the best response to “sciencey” suffixes (wordology) and “persony” suffixes (wordist, wordette).

PS where are you based? We’re always looking to hire good iOS devs :-) And then maybe you could make an in-house app for us. :-)

Mike also investigated using our API for his game, newly named Wordogram:

I’m still trying to imagine the best way to use your service to power a hint type in my game. Basically, the goal of Wordogram is to find the ‘Secret Word’ by narrowing down the letters by guessing other words and being told how many letters are shared between each guess and the Secret Word. I have various basic hints like ‘Reveal a letter in the Secret Word’ or ‘Remove 5 letters not in the Secret Word’, but at the end you may be left with a set of letters which make up several anagrams. There is no hint currently available that will help you once you’re at that stage. This can be frustrating particularly when there are a ton of anagrams, or if your brain just can’t see any possible words with the given letters.

By the way, Wordnik was only on the app store for less than 2 days at the time you contacted me and I did 0 marketing as it was more of a test release, so changing the name had no impact on brand association.

Oh, and we sent Mike a Wordnik T-shirt, too, and a few days later we got another update:

Wordogram is officially on the app store, so no more conflict. Thanks again for being so cool about it, and for the shirt as well.

Is this kind of approach going to work every time? In cases where there’s obvious intent to infringe, probably not. But with a name like Wordnik, it’s likely that anyone else who likes it is also going to be a friendly, word-loving sort. So why not assume goodwill to start with, and go from there?

Even though we love our

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trademark lawyers (no, really, they’re the best, if you have any trademark needs at all, call them asap), we prefer to use their valuable time helping us register new stuff, not policing guys who didn’t mean any harm.

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.

[Photo: CC BY-NC 2.0 by dorisnight]

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3 thoughts on “Tactful Trademark Defense: An Example

  1. Love it. When we hide behind our screens, It’s just so easy to waste time, money, and… just ruin someone’s day. When you could have enrolled that person as a partner in yours… and their success. Taking the “High Road” never disappoints. We also have a great product and have been careful to protect the value of what we’re building. Your post is of particular value, and is exactly how we would approach the situation. Cheers! to you!

  2. Pingback: Blogger News Roundup: The Dish, CES, blogging tips

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