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A disagreement over the PostgreSQL trademark

A disagreement over the PostgreSQL trademark

Posted Sep 17, 2021 19:13 UTC (Fri) by calumapplepie (guest, #143655)
In reply to: A disagreement over the PostgreSQL trademark by tialaramex
Parent article: A disagreement over the PostgreSQL trademark

No.

There are multiple types of trademark, and there are multiple ways to infringe. Trademark dilution is only one of the ways that infringment can occur. It is, as you said, when the trademark is used in a completely different industry than the original, but when the original is so big that it is in the public mind. This isn't even stuff like Coke t-shirts: since Coke does, in fact, sell t-shirts, using their logo in your own would be traditonal infrigment. Dilution is just any appearance of the mark in a way that harms the brand (other than nominative usage: a news article about Coke being made with the blood of innocents can use the logo without trademark infringment, though libel is possible if the article didn't actually uncover any innocents). For instance, if an actor in an adult film is wearing Nike shoes, that is dilution: unlike with traditional infringment, you don't need to show confusion.

Any (and I mean ANY) use of your trademark on a product similar to that provided by you MUST be sued as infringment. That is because the core purpose of a trademark is to uniquely identify a product as coming from a specific location. If a customer looks at a product, and incorrectly decides that it is yours, then you are required to sue the creator of that product. If you tolerate such products, then you lose the trademark: products with the mark can no longer be associated with you anyways, so there is no point in giving you the ability to control who has the mark.

This isn't limited to the exact list of offerings by your company (though it is more limited than the dilution): for instance, if I open a store that repairs New Balance shoes, I can't advertise myself as a "New Balance Repair Store", even though New Balance is a brand far smaller than the giants that dilution would apply to. "New Balance Health and Wellness" shop would not infringe, however: "new balance" is an english phrase, and so it doesn't get the same protections as other, more unique phrases (such as Kodak).

In this case especially, there is an obligation to sue in order to maintain the trademark. A reasonable person would conclude that a company entitled "PostgreSQL Services" (as opposed to one that simply advertises such an offering) is either offically part of the people who make PostgreSQL, or that PostgreSQL is a generic term for a general type of product. Thus, unless you want the trademark to become a generic term, you do have an obligation to enforce it or lose it.

(as the other commentator said, this is all completely distinct from copyright: trademark law is to a large degree a consumer protection law, in that it allows consumers to be confident that the products they are buying actually come from the company they are buying from. If the PostgreSQL trademark is lost, it's not a matter of the source code to Postgre becoming public domain, but rather the ability for random people to legally (say) distribute malware under the logo)


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A disagreement over the PostgreSQL trademark

Posted Sep 17, 2021 20:02 UTC (Fri) by mpr22 (subscriber, #60784) [Link] (1 responses)

> For instance, if an actor in an adult film is wearing Nike shoes, that is dilution

I would expect that to be considered "de minimis" unless the camera crew was making a great effort to keep the Nike branding visible / refer to it in the script / otherwise draw attention to what brand of shoes the cast are wearing and thereby associate "Nike" with "naughty movies".

A disagreement over the PostgreSQL trademark

Posted Sep 17, 2021 21:07 UTC (Fri) by Wol (subscriber, #4433) [Link]

But if they are genuine real Nike's, how on earth can this be considered a trademark infringement!?

Nike may not wish to be associated with that sort of film, but there's no abuse of trademark. Nike would have to sue for "bringing the brand into disrepute" or somesuch.

It's like copyright has been diluted where anybody can pay a licence fee and use any music, and the artist has to object if they hear of and don't like the use. But they can't sue for breach of copyright because a licence fee has been paid.

Cheers,
Wol

A disagreement over the PostgreSQL trademark

Posted Sep 22, 2021 21:30 UTC (Wed) by tialaramex (subscriber, #21167) [Link] (2 responses)

“Any (and I mean ANY) use of your trademark on a product similar to that provided by you MUST be sued as infringment. [...] If you tolerate such products, then you lose the trademark”

Imagine if calumapplepie was right about this. and thus that every major brand in the world had "lost the trademark" presumably somehow across all jurisdictions -- because of course in practice big brands cannot and don't sue "any use of your trademark" but (even for the litigious ones like Disney) only whichever targets attract their legal staff for whatever reason.

It's absurd once you write it down like that, isn't it? But that's what this myth would have you believe.

But I'm sure calumapplepie isn't just a keyboard warrior here to insist upon their preferred myth but an actual lawyer, and so I look forward to them giving us some credentials and telling us where they're licensed to practice trademark law so that we can go look at local statutes to identify where this "sue or lose it" rule is, if anywhere, in their local law. Wait, actually if they're really a practising trademark lawyer they'd *know* where to look and can just tell us right?

A disagreement over the PostgreSQL trademark

Posted Sep 22, 2021 21:58 UTC (Wed) by Wol (subscriber, #4433) [Link] (1 responses)

Like all legal stuff it's fuzzy.

But the *point* of trademark law is to prevent "passing off". If someone else uses your trademark in a manner which is likely to confuse your customers, and does it without explicit permission, then that is the scenario where you really have to sue.

Otherwise the courts will conclude you don't care. And that WILL cost you the trademark.

(The fuzziness is, of course, deciding what will or won't confuse your customers ... and in this case, I think it seems pretty clear.)

Cheers,
Wol

A disagreement over the PostgreSQL trademark

Posted Sep 23, 2021 10:23 UTC (Thu) by tialaramex (subscriber, #21167) [Link]

You don't have to sue. That's the entire thesis here. You're going to keep going around this loop because you're convinced of a myth.

If you subsequently file suit, the court won't "conclude you don't care". You filed a lawsuit, so obviously you care.

Estoppel means that you can't win if your argument is that behaviour you previously ignored is suddenly now something you cared about and the court should retrospectively fix it. Time's arrow doesn't work that way, and the principle of estoppel reflects that. But Estoppel is deliberately very limited, it's just to prevent the sort of obvious unfairness of e.g. waiting until somebody's use of your mark makes them a nice profit and then swooping in to claim it for your own.


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