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To read comments to this article, go here
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 itís 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.

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