Guix trademarked by Express Logic

Guix trademarked by Express Logic

[mikadoZero]

I have search guix-devel for this and did not find it.  I would like to
know what people think about these topics:

* does the Guix free software project have a trademark?
* proactive name change
* reacting to a forced name change
* talking with Forbes Lindsey of Jade to gain insights
* talking with Express Logic about their Guix trademark

# Guix is trademarked

That Guix is trademarked by Express Logic was brought to my attention by
in this message: 

https://lists.gnu.org/archive/html/guix-devel/2019-03/msg00122.html

Thank you Tobias Geerinckx-Rice for mentioning this.

Looking into this further here is additional information.

Express Logic website:

https://rtos.com/

Here is a press releases about Express Logic's Guix trademarked software
product:

https://www.marketwatch.com/press-release/express-logics-guix-becomes-the-first-deeply-embedded-gui-solution-certified-to-sil-4-asil-d-and-medical-class-c-for-safety-critical-iot-systems-2019-02-27

# Does Guix have a trademark?

Does the Guix free software project have a trademark for Guix?

There is only one search result for Guix's website using the term
trademark.  It is in the manual "14.4.1 Software Freedom" and is not
relevant to the question at hand.  I see no indication that the Guix
free software project has trademarked Guix.

# A parallel in free software

If it is the case that Guix the free software project does not have a
trademark for Guix, then I would like to share what looks like a clear
parallel.  It involves another free software project that used to be
called Jade.  Jade did not have a trademark for Jade.  A software
company had the trademark for Jade.  The company forced Jade to change
it's name.  Assuming Guix does not have a trademark then it looks like
it is the same situation without yet having been forced to change it's
name.

Here is a link to an issue on Pug's (Jade's new name) GitHub page
discussing their forced name change:
github.com/pug/issues/2184

# Proactive name change

Looking at the pug thread above shows that it would have been nice if
Jade had not been forced to change their name so quickly and could have
engaged it's community further on ideas for a new name.

This raises the idea that proactively changing Guix's name might be
better than reacting to a forced name change.  A benefit to a proactive
name change is being able to chose the timing.  So for example the name
change could be planned to coincide with the 1.0 release which I have
heard is approaching.  Similar to a butterfly emerging from a
chrysalis.  Maybe there is a opportunity here and this could be turned
into a nice announcement.

# Learning from Jade

From that thread it looks like Forbes Lindsey was the person that the
company's lawyers were sending letters to.  They might be a good person
to talk as they may be able to share some interesting insights that
would likely be directly relevant to the Guix.

# Contacting Express Logic

Also it might be good to reach out to Express Logic as they may not
actually have any problem with the Guix free software project using the
name they have trademarked.

# Summary

I am not recommending any specific course of action.  I just want to
start a discussion.

Also in the interest of transparency I am linking to messages I recently
wrote where I am open about my bias of not being a fan of Guix
pronounced as "geeks". 

https://lists.gnu.org/archive/html/guix-devel/2019-03/msg00121.html

https://lists.gnu.org/archive/html/guix-devel/2019-03/msg00134.html

Re: Guix trademarked by Express Logic

[Jelle Licht]

mikadoZero <mikadozero@yandex.com> writes:

> I have search guix-devel for this and did not find it.  I would like to
> [ snip ] 
Thanks for looking into this.

> # Proactive name change
>
> Looking at the pug thread above shows that it would have been nice if
> Jade had not been forced to change their name so quickly and could have
> engaged it's community further on ideas for a new name.
>
> This raises the idea that proactively changing Guix's name might be
> better than reacting to a forced name change.  A benefit to a proactive
> name change is being able to chose the timing.  So for example the name
> change could be planned to coincide with the 1.0 release which I have
> heard is approaching.  Similar to a butterfly emerging from a
> chrysalis.  Maybe there is a opportunity here and this could be turned
> into a nice announcement.

I humbly disagree with proactively doing anything of the sorts; first of
all, there are two separate issues (as you mentioned):
- Are we allowed to call Guix Guix?
- Do we want to call Guix Guix?

As such, I think it is premature to proactively change something which
*might* not even be a (legal) problem at all, let alone something
desired by the community. I *do* agree that these questions should
probably be answered before 1.0 comes around.

> [ snip ]
> # Contacting Express Logic
>
> Also it might be good to reach out to Express Logic as they may not
> actually have any problem with the Guix free software project using the
> name they have trademarked.

I really think that "software" is much too broad a category to consider
for a trademark clash in this case. From what I can see, there is barely
any overlap between our Guix and the GUIX product that Express Logic is
working on. This might just be my vocational bias in action as a
software engineer though, and of course; I Am Not A Lawyer.

>
> # Summary
>
> I am not recommending any specific course of action.  I just want to
> start a discussion.

Point taken :-).

Re: Guix trademarked by Express Logic

[ng0]

Jelle Licht transcribed 1.9K bytes:
> mikadoZero <mikadozero@yandex.com> writes:
> 
> > I have search guix-devel for this and did not find it.  I would like to
> > [ snip ] 
> Thanks for looking into this.
> 
> > # Proactive name change
> >
> > Looking at the pug thread above shows that it would have been nice if
> > Jade had not been forced to change their name so quickly and could have
> > engaged it's community further on ideas for a new name.
> >
> > This raises the idea that proactively changing Guix's name might be
> > better than reacting to a forced name change.  A benefit to a proactive
> > name change is being able to chose the timing.  So for example the name
> > change could be planned to coincide with the 1.0 release which I have
> > heard is approaching.  Similar to a butterfly emerging from a
> > chrysalis.  Maybe there is a opportunity here and this could be turned
> > into a nice announcement.
> 
> I humbly disagree with proactively doing anything of the sorts; first of
> all, there are two separate issues (as you mentioned):
> - Are we allowed to call Guix Guix?
> - Do we want to call Guix Guix?
> 
> As such, I think it is premature to proactively change something which
> *might* not even be a (legal) problem at all, let alone something
> desired by the community. I *do* agree that these questions should
> probably be answered before 1.0 comes around.
> 
> > [ snip ]
> > # Contacting Express Logic
> >
> > Also it might be good to reach out to Express Logic as they may not
> > actually have any problem with the Guix free software project using the
> > name they have trademarked.
> 
> I really think that "software" is much too broad a category to consider
> for a trademark clash in this case. From what I can see, there is barely
> any overlap between our Guix and the GUIX product that Express Logic is
> working on. This might just be my vocational bias in action as a
> software engineer though, and of course; I Am Not A Lawyer.

The other Guix keeps coming up over the years.
I don't think we have to do anyting because it's 2 separate fields
of software.
No problem unless one of the Guix starts making it one.
 
> >
> > # Summary
> >
> > I am not recommending any specific course of action.  I just want to
> > start a discussion.
> 
> Point taken :-).
> 
> 

Re: Guix trademarked by Express Logic

[mikadoZero]

ng0@n0.is writes:

> The other Guix keeps coming up over the years.
> I don't think we have to do anyting because it's 2 separate fields
> of software.
> No problem unless one of the Guix starts making it one.

Reading the recent press release linked it is clear that Express Logic
is continuing to invest more in their Guix trademarked product over
time.  As a result of this it is increasing likely that Express Logic
could request that the Guix free software project stop using it's
trademark.  Correspondingly it looks less likely that it will just go
away.

Re: Guix trademarked by Express Logic

[Leo Famulari]

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On Mon, Mar 11, 2019 at 08:31:40PM -0400, mikadoZero wrote:
> Reading the recent press release linked it is clear that Express Logic
> is continuing to invest more in their Guix trademarked product over
> time.  As a result of this it is increasing likely that Express Logic
> could request that the Guix free software project stop using it's
> trademark.  Correspondingly it looks less likely that it will just go
> away.

We will cross this bridge when we come to it.

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Re: Guix trademarked by Express Logic

[ng0]

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Leo Famulari transcribed 1.5K bytes:
> On Mon, Mar 11, 2019 at 08:31:40PM -0400, mikadoZero wrote:
> > Reading the recent press release linked it is clear that Express Logic
> > is continuing to invest more in their Guix trademarked product over
> > time.  As a result of this it is increasing likely that Express Logic
> > could request that the Guix free software project stop using it's
> > trademark.  Correspondingly it looks less likely that it will just go
> > away.
> 
> We will cross this bridge when we come to it.

Oh this was in 2019. Right. I noticed this earlier this
year but somehow dismissed the year.

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Re: Guix trademarked by Express Logic

[mikadoZero]

Jelle Licht writes:
> I really think that "software" is much too broad a category to consider
> for a trademark clash in this case. From what I can see, there is barely
> any overlap between our Guix and the GUIX product that Express Logic is
> working on. This might just be my vocational bias in action as a
> software engineer though, and of course; I Am Not A Lawyer.

There was likely no overlap between Jade the free software project and
Jade the company's offerings.  Regardless Jade the company forced Jade
the free software project to rename itself.  

Pug (previously Jade)
github.com/pugjs/pug

Jade the company
jadeworld.com

Re: Guix trademarked by Express Logic

[Jelle Licht]

mikadoZero <mikadozero@yandex.com> writes:

> Jelle Licht writes:
>> I really think that "software" is much too broad a category to consider
>> for a trademark clash in this case. From what I can see, there is barely
>> any overlap between our Guix and the GUIX product that Express Logic is
>> working on. This might just be my vocational bias in action as a
>> software engineer though, and of course; I Am Not A Lawyer.
>
> There was likely no overlap between Jade the free software project and
> Jade the company's offerings.  Regardless Jade the company forced Jade
> the free software project to rename itself.  
>

It rather seems that under threat of litigation, the Jade project was
bullied into changing their name. I understand why the Jade maintainers
decided on the name change, but I think the wrong lesson to take home
from this story is to actively enable these litigation-happy companies
to continue this behaviour. Additionally, it seems Guix-the-project has
earlier mentions than GUIX-the-product online as well (but again, IANAL).

Re: Express Logic claims GUIX trademark

[Tobias Geerinckx-Rice]

Guix, mikadoZero,

I know you're not a fan of [the common pronunciation of] the name 
Guix, but going straight from my ironic quote of a shitty PDF to a 
public and ‘proactive name change’ proposal is at best premature.

> If it is the case that Guix the free software project does not 
> have a
> trademark for Guix, then I would like to share what looks like a 
> clear
> parallel.  It involves another free software project that used 
> to be
> called Jade.  Jade did not have a trademark for Jade.  A 
> software
> company had the trademark for Jade.  The company forced Jade to 
> change
> it's name.

Wow.  That's super disingenuous (by ‘that’ I mean the original 
posts[0], which you accurately paraphrase).  It certainly didn't 
leave me with the favourable impression of the Free software 
project that was probably intended.

Yes, if you start a software repo in 2010 using the name that a 
software(!) company had registered in 2003 for their (you guessed 
it) software, you might be ‘forced’ to be just a bit more 
original.  The heart truly weeps.  At least they restyled 
themselves Pug and not UnderDog.

So no, and luckily for everyone, there are few parallels to Guix 
to be found here.

It took me all of 20 seconds to find the actual GUIX trademark 
registration[1], so we can stop basing this discussion on 
regrettable typographical choices in press releases.

It's 4 months old.

Meanwhile, we have:

  commit 207cba8114d354737b231e510d6110ea2a42e07b
  Author: Ludovic Courtès <ludo@gnu.org>
  Date:   Wed Apr 18 23:21:11 2012 +0200

    Initial commit.

Do 6+ years of prior public use trump registration?  Not 
necessarily, but it's a far cry from what the Jade-lang folks did.

I think we should talk to a lawyer.

Kind regards,

T G-R

[0]: https://github.com/pugjs/pug/issues/2184
[1]: 
http://tsdr.uspto.gov/#caseNumber=87948650&caseType=SERIAL_NO&searchType=statusSearch

Re: Express Logic claims GUIX trademark

[Pjotr Prins]

On Mon, Mar 11, 2019 at 08:00:16PM +0100, Tobias Geerinckx-Rice wrote:
> It's 4 months old.
> 
> Meanwhile, we have:
> 
>  commit 207cba8114d354737b231e510d6110ea2a42e07b
>  Author: Ludovic Courtès <ludo@gnu.org>
>  Date:   Wed Apr 18 23:21:11 2012 +0200
> 
>    Initial commit.
> 
> Do 6+ years of prior public use trump registration?  Not necessarily, but
> it's a far cry from what the Jade-lang folks did.

Sounds like we should bring up this with the FSF and see what they say.

Pj.

Re: Express Logic claims GUIX trademark

[Hartmut Goebel]

Am 11.03.19 um 20:00 schrieb Tobias Geerinckx-Rice:
> It took me all of 20 seconds to find the actual GUIX trademark
> registration[1], so we can stop basing this discussion on regrettable
> typographical choices in press releases.
>
> It's 4 months old. 


As Pjotr already stated: we should get in touch with the FSF to make
them file a case against this trademark. Also this might to so easy:

- Unfortunately we missed the opposition period (which is only 30 days
in the US, while in 3 Month Europa), which stated in November.

- The registration says: "First use 2014" and "Use in Commerce 2014".
Thus we need to proof we used "guix" earlier, e.g. using archive.org [1]

- We should also check for trademark registrations in other areas, e.g.
Europe, India, China.

- It might even be useful to invest ~300 € for registering GUIX as a
trademark in Europe.

[1]
<https://web.archive.org/web/20121225171214/http://savannah.gnu.org/projects/guix/>
archived 2012-12-25


-- 

Regards
Hartmut Goebel

| Hartmut Goebel          | h.goebel@crazy-compilers.com               |
| www.crazy-compilers.com | compilers which you thought are impossible |

Re: Express Logic claims GUIX trademark

[Tobias Geerinckx-Rice]

Hullo,

Hartmut Goebel wrote:
> Am 11.03.19 um 20:00 schrieb Tobias Geerinckx-Rice:
>> It took me all of 20 seconds to find the actual GUIX trademark
>> registration[1], so we can stop basing this discussion on 
>> regrettable
>> typographical choices in press releases.
>>
>> It's 4 months old. 
>
> As Pjotr already stated: we should get in touch with the FSF to 
> make
> them file a case against this trademark.

Well, I wasn't talking about my own lawyer :-p

There's also the Free Software Conservancy (sfconservancy.org) but 
I agree that, as a part of GNU, we should deal with this through 
the FSF.  That's up to the maintainers to decide.

> Also this might to so easy:

‘not be’?

> - The registration says: "First use 2014" and "Use in Commerce 
> 2014".
> Thus we need to proof we used "guix" earlier, e.g. using 
> archive.org [1]

Good, that's trivial.  Cue legal bikeshedding over the meaning of 
‘commerce’, I guess.

> - We should also check for trademark registrations in other 
> areas, e.g.
> Europe, India, China.

AFAICT the mark is not registered in Europe.  The question is 
whether it needs to be to be ‘enforced’ by EL.

> - It might even be useful to invest ~300 € for registering GUIX 
> as a
> trademark in Europe.

It's nice™ that we already have a legal entity named ‘Guix Europe’ 
ready to do so if necessary.

Kind regards,

T G-R

Re: Express Logic claims GUIX trademark

[Ludovic Courtès]

Hello,

Tobias Geerinckx-Rice <somebody@not-sent-or-endorsed-by.tobias.gr>
skribis:

> It took me all of 20 seconds to find the actual GUIX trademark
> registration[1], so we can stop basing this discussion on regrettable
> typographical choices in press releases.
>
> It's 4 months old.
>
> Meanwhile, we have:
>
>  commit 207cba8114d354737b231e510d6110ea2a42e07b
>  Author: Ludovic Courtès <ludo@gnu.org>
>  Date:   Wed Apr 18 23:21:11 2012 +0200
>
>    Initial commit.

Indeed.

The other GUIX is older than this registration (we discussed it before¹)
but I know it’s younger than Guix.  Overall I’m not really concerned,
and no we won’t change names just in case.

We asked for legal advice a while back.  I suggest to continue this
discussion off-list though.

Thanks,
Ludo’.

¹ https://lists.gnu.org/archive/html/guix-devel/2014-12/msg00165.html