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Hackathon Trademarked in Germany? Now What? ~pj Updated 2Xs
Monday, May 13 2013 @ 02:42 PM EDT

I am sure you saw that somebody in Germany, a company called nachtausgabe.de, has sneaked through a trademarking of the word HACKATHON in Germany. There was no opposition, because nobody knew about it. We know now, however, so what can anyone do about it? It turns out, plenty.

It's a word that OpenBSD and Sun each came up with independently at the same time back in the '90s, for heavens sake, and it surely can't belong to any one company now that it's in the dictionary and everyone has freely used it for years now.

Anyway, as soon as I read about it, I wrote to the German equivalent of the USPTO, DPMA, the German Patent and Trademark Office, and I've learned some things that can still be done. I'll share them with you, so the community knows how to go forward if it proves necessary.

Basically, anyone can object. You don't have to be a trademark owner to protest. The actual process is that you can "apply for cancellation due to nullity". I'll give you the details I learned and I have the link to the right form to use. This might happen again in the future, for one thing, so it's good to know what can work if and when it does. And I don't think letters to the DPMA would hurt either. This should never have happened in the first place, in my view.

First, applying for cancellation can be done for up to 10 years after a trademark has issued. But you don't want the trademark "owners" deciding to send out cease and desist letters, which they currently say they won't be. They claim the outcry since this trademarking became known has influenced them to the point they'll be cancelling the mark, but so far, that hasn't happened. We need to monitor that to make sure they follow through and be ready if they don't.

So here's a bit about this nullity application process, which may be useful immediately or in the next crazy trademarking event:

Cancellation due to nullity

The registration of a trade mark will be cancelled upon request on the grounds of nullity due to absolute grounds for refusal, if it had been registered in breach of Sec. 3, Sec. 7 or Sec. 8 of the Markengesetz, that means if the sign was not eligible for trade mark protection, if the applicant was not capable of being the owner of a trade mark or if there were absolute grounds for refusal. The request for cancellation must be filed in writing within 10 years after the registration of the trade mark. A fee of EUR 300 must be paid within three months from the filing of the request.

Form Form [PDF].

The DPMA informs the trade mark owner about the request for cancellation. If he does not object within two months, the trade mark will be cancelled; if he objects to the cancellation request, cancellation proceedings are conducted by the DPMA. If the request for cancellation is granted, the registration of the trade mark is declared invalid due to absolute grounds under Sec. 50 of the Markengesetz and cancelled in the register.

Trade mark owners can bring an action for cancellation of a trade mark based on earlier rights. Cancellation proceedings are conducted by the ordinary courts.

I think you can see that lawyers should be involved, ideally, in case the trademark owner fights the nullity process. I'm publicizing this so that others can think through the best way to go forward should it prove necessary. And also I just wanted to let you know what I learned. If this could happen in the first place, why couldn't it happen again with another inappropriate mark?

Here's what won't help: attacking the company verbally or in any way. No need for anything like that. That's not Groklaw's way. We work to win fair and square, with precision and coordination, legally, but without unkindness. People goof sometimes, and when they do, if they correct their course, fine and dandy. If not, you take careful steps to correct the wrong, and then you stop. Nothing needs to be said that you wouldn't say to a brother or friend who goofed.

Here's what I said to the DPMA:

Can you tell me please if there is still time to file an opposition? This company is certainly not famous for this mark. Nor was it created by them. It is in widespread use throughout the world already. For just one example, Facebook holds hackathons, which they advertise publicly, on a regular basis and have done since the company's foundation. It appears, therefore, to be an attempt to coopt a commonly used word so as to bully folks into paying for using a word that they have used for many years.
The company denies the last part, which is better than I feared, and in fact the most recent news was that they are reported to say they'll "delete" the trademark, whatever that means to them, but nothing blocks them from anything they decide to do that trademark owners can do until they follow through. And they did in fact begin by asking people to pay up, at 2500 EU a pop. Here's a preserved proposed license they were reportedly sending around.

As ITWorld points out, they trademarked its use in several areas:

The company trademarked the term last year and it’s now good through July of 2022, and applies to the following:
  • Clothing, footwear, headgear

  • Advertising agency services, radio and television advertising, business information, market and opinion research, public relations, online advertising on a computer network, outdoor advertising, publication of printed matter (including in electronic form), for advertising purposes, sponsors, sponsorship in the form of advertising, advertising by mail , marketing, recruitment, consultancy in human resource issues

  • Providing access to information on the Internet, providing Internet chatrooms, electronic exchange of messages via chat lines, chat rooms and Internet forums

  • Presentation of live events, organization and implementation of cultural and sporting events; entertainment

At a minimum, I think polite letters to the DPMA, info at dpma.de, more informative than mine about the history and usage of the word, can at least let them know that what happened is wrong on every level. Perhaps that will enhance their vigilance. And then let's see if the company follows through on its claim that it will cancel the trademark. If we don't see that happen soon, I suggest we go forward with the nullity process, if no one better steps forward.

Update: I've collected some information about OpenBSD's use of the word, but first, here's proof that the word is now a common word in the Oxford University Press dictionary:

Definition of hackathon
noun
informal
  • an event, typically lasting several days, in which a large number of people meet to engage in collaborative computer programming:a series of 48-hour hackathons to build new web and mobile services

Origin: 1990s: from hack, on the pattern of marathon

And here's the OpenBSD info:
OpenBSD has been holding hackathons and calling them that since at least 1999.

For example, OpenBSD held two hackathons in Germany -- in Hamburg and Schloss Kransberg -- in 2006 (and one in Starnberg in 2012).

Here's a list of all the events OpenBSD has held going back to 1997.

Here's a page where Theo de Raadt reports on a Boston hackathon in 2001. Here's a report on a 2005 OpenBSD hackathon. These all predate the German company's filing for a trademark on the word.

Also, if any of you guys who read German could translate the form for me, I'd appreciate it.

Apache held hackathons too, going back at least to 2000. Here's proof:

From: Rodent of Unusual Size
Subject: [STATUS] (apr-util) Wed Nov 14 23:45:17 EST 2001
Date: Thu, 15 Nov 2001 04:45:18 GMT

APRUTIL LIBRARY STATUS:
Last modified at [$Date: 2001/07/13 03:51:20 $]

Release: 2.0a9 : released December 12, 2000

RELEASE SHOWSTOPPERS:

  • Need apu_compat.h to track the latest renames Status: someone want to step up to diff names between 1.3.x and apr/apr-util? Sounds like a job for a perl script...

  • add misc/version.c and related machinery once the pattern is laid out in APR.

  • complete the efforts started by DougM for cleaner fn naming conventions: see proposed name changes in renames_pending and offer up any additions/vetos/clarifications. DougM offered to complete the work with his nifty perl rename script at the hackathon.
Hackathons are a tradition at Facebook, as Mark Zuckerberg explains in this video. It's a word in such common use that the White House held a hackathon in June of 2013. Update 2: Here's WIPO's page on German trademark law.

  


Hackathon Trademarked in Germany? Now What? ~pj Updated 2Xs | 360 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
To delete the word mark...
Authored by: Anonymous on Monday, May 13 2013 @ 03:17 PM EDT
...is actually the direct translation of the process of nullification, which
isn5called nullification over here. In German this is called "die Wortmarke
löschen": to delete the registered word mark.

[ Reply to This | # ]

Corrections < - Keerectshuns
Authored by: nsomos on Monday, May 13 2013 @ 03:24 PM EDT
Please post em in this thread. A summary in the title may be helpful.

[ Reply to This | # ]

Off Topic Thread Here...
Authored by: lnuss on Monday, May 13 2013 @ 04:24 PM EDT
...

---
Larry N.

[ Reply to This | # ]

Newspicks Thread Here...
Authored by: lnuss on Monday, May 13 2013 @ 04:25 PM EDT
...

---
Larry N.

[ Reply to This | # ]

COMES Thread Here...
Authored by: lnuss on Monday, May 13 2013 @ 04:26 PM EDT
...

---
Larry N.

[ Reply to This | # ]

Who pays the Fee?
Authored by: rsteinmetz70112 on Monday, May 13 2013 @ 04:37 PM EDT
According to the article a fee of 300 Euros must be paid by someone.

"A fee of EUR 300 must be paid within three months from the filing of the
request."

---
Rsteinmetz - IANAL therefore my opinions are illegal.

"I could be wrong now, but I don't think so."
Randy Newman - The Title Theme from Monk

[ Reply to This | # ]

Who has standing in a situation like this?
Authored by: Anonymous on Monday, May 13 2013 @ 05:10 PM EDT
Perhaps someone who knows better, or who knows exactly how to look for the
authoritative information could supply the information to the rest of us.

Specifically, under German trademark law, do non-Germans have any right or
standing to complain about a German trademark? If so, then good. People from
outside of Germany can send opinions and evidence to the German trademark office
and possibly be listened to.

But if according to German law any "valid" complaints must only come
from within Germany then the situation is clearly a different one. If that is
the case, then all efforts need to be directed to supporting any German
companies and organizations which would take the lead.

I do not have any idea what the answer to this question is, but it obviously
needs a definitive answer.

In a worst-case scenario, one could be looking at a rerun what happened in the
Netherlands, in the case about whether "Windows" was or was not a
valid trademark and whether "Lindows" was or was not an attempt to
encroach. A similar case in the US had recently run into snags and had been
speedily abandoned by the plaintiff, which then took its complaint overseas. In
the Netherlands, opinions emanating from the US expressing the fact that
"windows" has lots of generic meanings and established generic usage
in English did not seem to matter to the court. The language of the country is
not English.

[ Reply to This | # ]

Some material from Wikipedia sources
Authored by: OpenSourceFTW on Monday, May 13 2013 @ 05:42 PM EDT
http://www.haskell.org/haske llwiki/Hackathon
- Haskel has been holding an event called Hac : Haskel Hackathon since at least 2006, including one in Freiburg, Germany in 2007.


Any more to contribute? Particularly German examples?

[ Reply to This | # ]

Correct me if I am mistaken
Authored by: Anonymous on Monday, May 13 2013 @ 06:55 PM EDT
but the word "Apple" had been in use for centuries before it got
trademarked.

[ Reply to This | # ]

Trademarked for what purpose?
Authored by: hardmath on Monday, May 13 2013 @ 08:50 PM EDT

The operative issue is for what Hackathon is purposed to be a trademark. Here's what I get from the German website PJ links to, via Google Translate:

Class (es) Nice 25: Clothing, footwear, headgear

Class (es) Nice 35: Advertising agency services, radio and television advertising, business information, market and opinion research, public relations, online advertising on a computer network, outdoor advertising, publication of printed matter (including in electronic form), for advertising purposes, sponsors, sponsorship in the form of advertising, advertising by mail , marketing, recruitment, consultancy in human resource issues

Class (es) Nice 38: Providing access to information on the Internet, providing Internet chatrooms, electronic exchange of messages via chat lines, chat rooms and Internet forums

Class (es) Nice 41: Presentation of live events, organization and implementation of cultural and sporting events; entertainment

I would have no problem with the word being used as a trademark on running shoes, for example, but it appears the intended use is much broader and likely to create confusion.

---
Rosser's trick: "For every proof of me, there is a shorter proof of my negation".

[ Reply to This | # ]

A Restaurant in Baltimore trade marked "Hon"
Authored by: kawabago on Monday, May 13 2013 @ 10:38 PM EDT
A similar kind of word around Baltimore. The restaurant owner
started sending cease and desist letters to any business
displaying the word Hon anywhere. The result was immediate
and lethal for the restaurant, citizens organized a boycott
of the restaurant that was totally effective. The owner had
to relinquish the mark, make a huge apology and do a lot of
community service to rebuild the restaurants reputation. Just
a little warning to that business owner in Germany. Careful
what you wish for...

[ Reply to This | # ]

What about "Olympics"
Authored by: Anonymous on Tuesday, May 14 2013 @ 12:43 AM EDT

Thousands of years and it's now trademarked.

[ Reply to This | # ]

I do not understand why
Authored by: cricketjeff on Tuesday, May 14 2013 @ 05:44 AM EDT
All Trademark and Patent applications do not require the applicant to do a due
diligence search and to disclose to the relevant office all the prior art they
discover. Failure to do so should be interpreted as attempted fraud. This would
shift the balance of work from overworked and under-qualified patent clerks and
back onto the inventor who stands to benefit from the grant.

A cast iron opposition to the grant would be to show that on the date of
application a reasonable search found relevant but not disclosed art.



---
There is nothing in life that doesn't look better after a good cup of tea.

[ Reply to This | # ]

Common Practice - Hackathon Trademarked in Germany? Now What? ~pj
Authored by: Anonymous on Tuesday, May 14 2013 @ 07:46 AM EDT
I can see someone printing tee shirts for a Hackathon, and running into a
problem if the trademark is not deleted.

[ Reply to This | # ]

A possible way to fight a thing like this
Authored by: Tkilgore on Tuesday, May 14 2013 @ 05:39 PM EDT
I was the one who raised the question of standing to challenge the trademark
application, a few posts above.

To me, the answers do not seem to be universally pleasant and hope-inspiring.
Especially, one of them seems to be rather pessimistic. It says, essentially,
that any challenge has to be mounted from within Germany, and it will take an
attorney to draft the challenge. The post seems also somewhat pessimistic about
the success of a "cancellation on the grounds of nullity" challenge,
claiming that the mere previous use of a word is not considered sufficient
ground for the cancellation.

Explicit disclaimer: I have no easy way to do independent checking of what that
post says. I obviously can not vouch for its accuracy. Nevertheless, it seems to
me to be valid. It also says that the poster will look more into the matter.

Under the circumstances, it occurs to me that there is another way to deal with
a thing like this. Fight fire with fire. Something like the following:

1. Look for a synonym for "hackathon." The names "hackmeet"
and "hackfest" come immediately to mind, for example.

2. A trusted nonprofit with standing in Germany (examples could include FSFE or
any national organization for Linux advocacy or some adjunct of OSI) applies for
copyright and trademark on the substitute word, making explicit that
organizations (and companies, too, why not, because that is the right and
consistent and "nice" way to act) have the right to use the
trademarked name under certain broad but specified conditions which do not
include the transfer of money. For example, if the law requires it for the
purpose of defending the trademark, then permission has to be asked but will be
given. Or something like that. An attorney with knowledge of German copyright
law needs to be consulted about such matters, obviously. The rights extended
should explicitly include such things as the use of a logo, the printing of
programs and posters, and the distribution or sale to participants of such
things as T-shirts. Probably, such things would require for fine print to be
present on the programs, posters, T-shirts and whatever, explaining that whose
trademark it is, perhaps with the word "thanks." Donations from the
conference, meet, or whatever, to the "parent organization" welcomed
but not compulsory. As I said, an attorney would need to be consulted.

It appears to me that (2) just above is probably a practical necessity.
Otherwise, someone else can trademark whatever it is, and one is back to square
one.

3. (optional, but it would obviously strengthen things) Simultaneous
applications in other countries in Europe and in the US.

4. Publicity. As much publicity as possible, which explains the reasons for all
of the above.

The only fly in the ointment that I can see is that some people might be
suspicious about which organization(s) is(are) doing the filing. I would see
something like this as a broad and inclusive attempt to serve the broad
interests of freedom, but some might not agree. So. clearly, one has to be very
careful about which organization it is, and the intention of the organization in
doing this should be made crystal clear. Groundwork should be carefully done, in
that the prior agreement of other, affected organizations ought to be sought and
obtained first. As a specific example, if the organization which does the filing
is not haskell.org, then haskell.org ought to be consulted. That, because it is
mentioned above in a post that haskell.org has been holding
"hackathons" in Europe for some time back. Also, it goes without
saying that if it is FSFE which does the filing, then the executive board of OSI
ought to be approached and asked to give its nod of approval, and if it is OSI
then FSFE should be similarly approached. Maximum publicity about the current,
somewhat undesirable state of affairs ought to be very helpful in getting
something done, too.

[ Reply to This | # ]

Hackathon Trademarked in Germany? Now What? ~pj
Authored by: Anonymous on Wednesday, May 15 2013 @ 08:34 AM EDT
One acronym ;-)

[ Reply to This | # ]

Hackathon Trademarked in Germany? Now What? ~pj
Authored by: Anonymous on Wednesday, May 15 2013 @ 08:44 AM EDT
One acronym

[ Reply to This | # ]

So Google is now responsible for other peoples
Authored by: albert on Wednesday, May 15 2013 @ 11:30 AM EDT
searches in Germany. The German court is saying, in effect, that their people
are too stupid to realize that auto-complete is computer generated data, that
may or may not be garbage. If 1 million people search for "Willie
Weber"* and "troll", does that make Willie a troll? Most likely
they want to find out if he is a troll.

Do German courts think everything on the Dreaded Internet is true?

This is extreme liberal-socialist hand-holding. It reminds me of all those
idiots in the US who think the Constitution guarantees them the right not to be
offended by legal free speech.

Apparently, our level of stupidity is exceeded only by our level of stupidity.

"Everybody's stupid!" - mantra of "This Is Hell" radio show
(www.thisishell.net)


*It's a fictitious name. 'Weber' is the second most common surname in Germany.
In a fit of unusual restraint, I did not choose the number one name: 'Muller'
{:-)>

[ Reply to This | # ]

Does this mean... (if true)
Authored by: Anonymous on Wednesday, May 15 2013 @ 08:27 PM EDT
A. Microsoft is violating the DMCA for
distributing an application that bypasses
restriction controls?

B. Microsoft is liable of $250k per copy
its induced it's users to illegally copy?
(Including the copy of the copies?)

C. Microsoft is abusing its desktop
monopoly to advance its position in
another market? (Windows 8 being the "
same" on desktops, tablets and phones)

D. Violating it's contractual obligations
spelled out in the TOS? (It has entered
into by utilizing the APIs, click-
through?)

E. Displays why Microsoft cannot be
trusted.

[ Reply to This | # ]
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