VC-backed company just killed my EU trademark for a small OSS project

[_rkcg]

I run a small open-source project [name-redacted] (Trademark [number-redacted]) I've been building for many years. It's not huge, just a few thousand users compared to the big OSS names, but to me it was worth protecting, so I trademarked the name in the EU and US a few years back. I had hoped to be protected from other corporations this way and live peacefully.

A $160M-funded company named [name-redacted] (Trademark [number-redacted]) came along and filed for cancellation at EUIPO since they needed the trademark now after getting lots of funding. They won. Now my trademark is gone.

The frustrating part? The EU actually does allow open-source (even free projects) to have trademarks, but you have to prove "genuine use" in the EU for the goods/services your trademark covers. Which seems to force you in collecting user sensitive data otherwise you are entirely unable to prove that you have actual users in the EU. I generally try to collect as little information as possible (also because I don't care where my users are coming from). I had google analytics running for some time on the main page (not documentation), but most of the time it didn't work and it seems most of my users block it anyway.

Here's what I gave the EUIPO and why they said no:

- Google Analytics for my site with a full country breakdown from 2018–2023. A few hundred to ~1,800 EU visitors per year per country. They said that’s "too small" to count as real commercial exploitation for my Class 9 software. Also, they said they couldn’t tell which goods those visits were actually for.

- npmjs + GitHub stats - hundreds of thousands of downloads and thousands of stars. Rejected because there's no location data, so they couldn't confirm if the usage was in the EU. In some cases, they said the timeframes weren't even clear.

- They basically kept repeating that they couldn't clearly link any of the usage to the specific goods/services my trademark was registered for.

The conclusion:

>Conclusion: It follows from the above that the EUTM proprietor has not proven genuine use of the contested mark for any of the goods and services for which it is registered. As a result, the application for revocation is wholly successful and the contested European Union trade mark must be revoked in its entirety. According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 18/03/2024.

>COSTS: According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear fees and costs incurred by the other party.

They even admitted there's no strict minimum for usage, and free software can count, but in their eyes my EU traffic was too low and not clearly tied to the trademarked goods.

I also have the US trademark for the name. This same company tried to register in the US around 2022 (Trademark #79379273) and got blocked because it was too similar (decision made by USPTO). But a few months ago they somehow got it registered there too (Trademark #7789522), not sure how they did that now.

Now I'm sitting here wondering:

- Is it even worth getting a second opinion and appealing in the EU? I mean the project is very small.

- Should I fight the US registration?

- Or should I just walk away from trademarks altogether for my open-source projects. I lost so much money because of this already.

- And for OSS projects in general, is there even a practical, privacy-friendly way to prove EU usage without generating revenue?

- Is it even worth holding the trademark if proving EU usage is this brittle for OSS? If the trademark can be deleted just like that even after spending a few thousands dollars on lawyers. Probably a skill issue, but still, damn.

It sucks to lose the name I've been building for years to a corporation with $160M behind them, especially when this is just a side project I do in my spare time, and to them I'm a nobody. If nothing else, maybe my case can be a cautionary tale for other OSS maintainers.

[snthd]

https://www.deepki.com/about/#certifications-awards

>Deepki holds the label BCorp certification, thereby strengthening its commitment towards its communities and stakeholders.

https://www.bcorporation.net/en-us/standards/complaints/

>B Lab will investigate material, credible, and specific claims against a current B Corp in one of the two following categories:

> 2. Breaches of the B Corp Community's core values as expressed in our Declaration of Interdependence.

https://www.bcorporation.net/en-us/certification/

>B CORP DECLARATION OF INTERDEPENDENCE

>As Certified B Corporations and leaders of this emerging economy, we believe:

> That we must be the change we seek in the world.

> That all business ought to be conducted as if people and place mattered.

> That, through their products, practices, and profits, businesses should aspire to do no harm and benefit all.

> To do so requires that we act with the understanding that we are each dependent upon another and thus responsible for each other and future generations.

[kriro]

Good find. Might be worth to read this and consider filing a complaint. Seems pretty clear they are in violation of BCorp values: https://www.bcorporation.net/en-us/standards/complaints/

If it's worth it. OP needs to decide.

[blibble]

I had always assumed this was one of those labels that you go away and buy for a large sum of money when you've been caught doing something bad

[fakedang]

Is it possible to report B corps not working in accordance with the principles?

[Lionga]

What an absolute piece of trash company

[sshine]

Walk away.

Life is too short for lawsuits.

This comes from someone who dated someone for three years who was in a lawsuit when I got to know them, and was still in a lawsuit when we split. It affected them daily, hundreds and hundreds of hours were lost, thousands and thousands of dollars went to a nice, well-intended family lawyer.

But the best advice they could have got:

When given the chance, walk away.

Life is too short for lawsuits.

[cobbzilla]

I’m almost 100% in agreement, but context matters, and attitude matters.

If you’re up against a behemoth, figure out how to get out ASAP.

But I’ve learned that small claims lawsuits can actually be quite fun! Earlier this year I sued a former landlord in small claims court. He had entered my rented space while I was away (without notice, multiple times) and then refused to return my security deposit when I moved out.

I went into it with a “let’s have fun and learn” attitude. I had never sued someone and I’d never represented myself in court. I read a lot, had some good conversations with LLMs (and then fact-checked them!) about the laws and case history in my area, then filed my suit.

After he dodged the summons three times, I discovered I could file a motion for alternative service (post on his front door, post in a newspaper, etc). When I went to court to argue for that motion, he actually showed up in court! So I asked the judge if he could be served right there, and he was!

Our trial was highly entertaining, I caught him in a bald-faced lie, then looked at the judge and said I’m not sure how both of these things he said could be true, I can’t figure out how it adds up but maybe you can.

I won the case, the judge awarded me less than I was asking for, but more than I was actually owed.

I was kinda hoping he would not pay (that’s common) in which case I was looking forward to learning about how to garnish his wages or put a lien on his property. But he’s actually paying me in monthly installments for the next very many months. He could pay me all at once so he’s being a bit of a jerk, but at least he’s paying.

All-in-all, I knew I had a solid case, had fun along the way, and didn’t spend more than a few bucks on court fees. In that specific context, it made sense for me and I’m happy I did it.

[mindcrime]

A good friend of mine always used to say "Once the lawyers are involved, you lose no matter what. Only the lawyers win." (paraphrased from memory).

I don't know if I agree that that is correct every single time, but it strikes me as a very useful heuristic at the least.

[Aurornis]

This is the side of lawsuits that you don’t see every time someone on Reddit or Hacker News confidently tells you to lawyer up and go to court.

Even seemingly simple issues can turn into never ending money pits that consume thousands of hours of your life spread over months or years.

If you’re really committed to something then you should evaluate how much time and money you’re willing to put into pursuing it. Unless both of those values are uncomfortably high numbers, just move on.

[phendrenad2]

Depends on your philosophy, honestly. If you're a hedonist, then yeah, get free from lawsuits as soon as possible and go back to munching candy. If you're am altruist, throwing yourself into the lion's den to eventually effect social good might be smart. If you're a nihilist, you can pick either, it's all the same when the sun goes supernova.

[ctippett]

I empathise with the advice, even aspire to it. Despite that, I abhor a bully getting away with being a bully and would feel discontent not putting up a fight on principle.

[dangus]

Similar to this advice, don't ask us.

This whole thread is a question for a lawyer.

But for real...just change the name of your project. It sucks, but the ruling was handed down, you lost the dispute.

Nobody's going to mind that the name changed. Firefox used to be called Firebird and changed due to trademark disputes. Dozens of open source projects have changed their names when they forked off of a corporate project, like LibreOffice and MariaDB.

I know that OP may be fond of the name but it's just a name.

[b_e_n_t_o_n]

Life is too short for far more things than just this. It always strikes me just how much time we waste on stuff we won't care about in one year or five. Myself included. Time is by far our most precious commodity.

[xchin]

One alternative is to create a website that outs the company that is harming you in a way that is non-libelous and just tells your story, and then focus fully on SEO and GEO to ensure that the other company sees your site front-and-center when searching for their own.

You may get more attention this way, because it can affect the company more than the optics of a legal dispute. It’s not revenge, and you shouldn’t have that intent, if you want it to work.

However this method, and other similar methods used in the U.S. such as filing BBB complaints, are mostly used for harm done to consumers rather than businesses affected by disputes, so it may not be the best advice.

[latchkey]

Can't agree more. Change your name to tikpeed and move on!

[0xDEAFBEAD]

The more general principle is that people are too willing to adopt an adversarial mindset. In principle, there's a mutual win here if the VC company makes a substantial donation to the OSS product in exchange for the OSS project changing its name. Both parties will be better off in that scenario, relative to the lawsuit scenario.

[lukan]

"thousands of dollars went to a nice, well-intended family lawyer"

Sounds like it was maybe about custody for children?

Then it is hard to walk away, I think. What to do, if the other party does not cooperate and you still want to see your children?

Best advice for both sides still is obviously, avoid the need for lawyers in the first place and maintain basic level of communication.

[andsoitis]

Couldn’t agree more.

Besides money and hours, it will also affect your psychological wellbeing as it will dominate your mind every day.

Not worth it.

[busterarm]

My own family has been involved in an ongoing series of lawsuits against each other since 1989. Over an amount of money that is long since gone and they've kicked in even more in lawyers fighting over. None of us talk to each other anymore.

This is the best advice you can get.

[ChrisMarshallNY]

That’s like Danny DeVito’s speech in War of the Roses.

https://www.youtube.com/watch?v=Y5XfYTgm4x8 (that’s only part of a longer scene, where he basically tells the guy not to proceed).

[rjzzleep]

Lawsuits in Europe are not as expensive as in the US, and they are a good learning experience as well.

[gbuk2013]

Literally one of the first things I was told when I started my law degree was “don’t ever go to court unless you absolutely have to”. :)

[o11c]

Don't forget the greatest enemy of both abusive companies and abusive government: the news media. And this definitely seems big enough for them.

See if you can "shop" around (start local) to see who's interested in publishing a story something along the lines of "The EU has declared war on small businesses. I'm being forced to pay thousands of euros because a brand-new company decided they wanted to steal my years-old project name."

[terminalshort]

The news media is abusive companies. Some of the worst. And they are one of the largest beneficiaries and supporters of abusive government, like how they are attempting (and sometimes succeeding) at getting governments to shake down companies who link to their sites. That's not to say they aren't sometimes the enemy of other abusive companies or governments, but that's purely incidental and transactional in cases where it goes against them.

[tmpz22]

Wealthy US startup steals EU trademark is a sticky title

[WhyNotHugo]

> Don't forget the greatest enemy of both abusive companies and abusive government: the news media. And this definitely seems big enough for them.

Bad publicity is still publicity.

[ekianjo]

the news media is made of megacorps.

[scosman]

I saw you may rename your project. IANAL, but don't do that. They might have invalidated a European registered trademark, but you have first use and continuous worldwide use which means a lot. Not all trademarks need to be registered. Again, IANAL, but I can't imagine they can harass you with their mark. They just formally made the case that your usage wasn't in the relevant market, and in the case of the US mark, that their usage is somehow substantially different from yours. This will make it nearly impossible for them to now argue your usage is competitive/conflicting. Them taking action would likely have some risk for them; their lawyers would likely advise against it. They probably won't do anything now that they have what they wanted.

More generally: don't treat the lack of registered mark as something you need to act on. You were doing your thing just fine without a registered trademark in the other ~180 countries. Just keep doing what you're doing.

Fighting it will be painful, expensive, stressful and unrewarding. But that doesn't mean you need to go change your name.

[kriro]

I saw on Reddit, that you already reached out to some people in the OSS space that might have the legal expertise. This actually seems like a very relevant case to me. If a trademark is granted to an open source project, it seems ridiculous to me to apply market based use criteria.

Tbh...use should already be satisfied by having a Github or website and using the registered name.

Keep us posted.

[ddtaylor]

> use should already be satisfied

A lot of posts on HN are about things that should have happened already. Every few days there is a story about a person doing something pretty boring and standard, but they can't because a payment processor or large regulatory body got involved and the computer went "boop boop" and now someone can't have money or continue to invent things. Sorry, pull the slot machine again and see if you get lucky?

[mdb333]

Looks like you submitted opposition to their new registration (Deepki) and then they retaliated by applying for cancellation to your existing mark (Deepkit)?

are they actually pursuing use of "Deepkit" or possibly did you just piss them off? Either way, I wouldn't expect to win anything going up these majors. Also, isn't clear there's any tangible benefit even if you were to win appeal.

[justsid]

I read this and the guy saying lawsuits aren't worth it and what's the point? A bigger fish comes by and you are just supposed to flop over and hand them whatever they want unchallenged? Spite at this point would be my biggest motivator.

[throwaway-0001]

With a llm you can get very far away

[dannyobrien]

It's fairly unusual for FLOSS projects to register any trademark, and (despite this lack of strict IP protection) it's also very unusual for the owner of a trademark to ask or require a FLOSS project to change their name because it violates a trademark. Not completely unheard of, but still rare.

I don't know why you decided to trademark your project name, but I think the biggest issue here is that trademark law is naturally the domain of IP rightsholders and an outlook that presumes and enforces scarcity when it comes to names, name spaces, and digital content.

There aren't that many reasons why FLOSS projects need to work within that same domain. My thought is that it is better to try and defend the environment of a digital commons that exists outside of them, than to enter into it and try to participate in a quite alien system of existing IP law, which has a lot of presumptions and standards that, as you say, don't really match the world you work within.

[_rkcg]

> decided to trademark your project name

I decided to protect the name because I liked it and wanted to build upon it in the future. Be it OSS, or further commercial offerings.

I hoped to get also protection against corporations that just try to register the name or very similar ones and then decided to get me deleted or sue me for infringements.

In EU it's first to file principle, which means whoever holds the mark, has the right. This means if I would not have registered it, the company could just register "Deepkit" or "Deepki" and sue me to death. Now that I lost the trademark (not totally final, I can appeal), I risk getting sued for having a too similar name - which is exactly what I tried to avoid by having a registered trademark.

Did I make some mistakes with appealing and not collecting enough user data? Likely. Was it too naive from me? Yes. But I think reasonable and the whole idea behind trademarks is to protect projects like this. I could be wrong though, am not an expert.

[neom]

I'll never pass up the opportunity to remind that Ryan Dahl is still fighting the good fight against Oracle: https://x.com/rough__sea/status/1953335245412946327

https://deno.com/blog?tag=freejavascript

[ddtaylor]

I disagree.

You will be asked to prove you have marks to do things like be listed in the app store. You need to prove your identity with third party legal companies that look into your company and the marks you are using. If you don't own those marks you probably won't get your app published.

Many examples come to mind, but basically anytime a FOSS app goes into the app stores, like KDE. In the past we mostly argued about who should be the person that has to act as the app owner etc. or created foundations or other legal entities to bridge this gap.

Look at elementaryOS as well. They attempted to assert rights to marks they don't own and it created a fiasco for them. They are virtually irrelevant now in the Linux space. All of the developers left the project besides one who is struggling with mental illness.

[throwawaymaths]

trademark as far as i know is the only form of IP that is actually rivalrous. that is: use by you deprives me of of my use. for example. suppose i started an (independent) mcdonalds restaurant and used their livery and had trashy service and poor customer service and cleanliness, this would damage (real) McDonald's reputation

[molszanski]

There is a related, interesting legal battle over JavaScript trademark.

I think that it might be a good idea to flagpole an OSS trademark just in case some bozos come and spoil the fun

https://deno.com/blog/deno-v-oracle3

[chychiu]

I am sorry to hear that OP, I hope you fight the good fight and wish you all the best.

On a different note, a quick cursory glance of this company really makes me wonder who even gave them $160M? The company site is soulless and filled with corporate jargon, and the whole company smells of bloat and leadership team is a long list of people in bullshit jobs. Is this where VC money goes these days? I am dumbfounded by the degree of mismatch between capital and utility

[sally_glance]

Well, a cursory glance into the funding round shows an equity firm (Highland Europe) which had one of their partners moved into a director position at Deepski. Could be the guy collecting "AI leadership experience" for his resume.

Another notable investor is a french public entity (bpifrance) which might very well have similar reasons but on the country level, having to allocate funds to "AI" to demonstrate France leading role in future technology.

Note that this doesn't mean Deepski and it's leadership can't be great - but the thought experiment of some well networked people noticing they could all benefit over a glass of wine also doesn't seem too far off.

Edit: Maybe there's an angle for someone really serious about this FOSS dilemma here, I hear public entities really hate bad PR - maybe ask bpifrance how they feel about this?

[asjir]

If they do some decarbonization real estate SaaS and need connections with both regulators or whoever issues certificates and REITs etc, then it makes sense. I don't think they need a lot of software for that.

[Lu2025]

> I am dumbfounded by the degree of mismatch between capital and utility

That's often a sign of money laundering

[daedrdev]

The EU pushes heavily for consent for tracking, yet you need to track your users locations to keep your trademark, thus requiring that every company has to have a popup asking to track that data.

[bcrosby95]

IANAL, but.... you only need consent if it isn't required for your business to function. If you need to track to maintain your trademark, couldn't you argue any business with a trademark needs to track users?

I'm sure it wouldn't work in a real court, but it sounds funny in my head.

[kube-system]

Most trademark holders have much more solid ways of demonstrating their mark's use in commerce, like financial and business records.

[prmoustache]

You don't need that. You can provide billing addresses of your customers without tracking web access.

[nabla9]

Trademarks are not worth defending until they are valuable, just pick another one.

Selecting a name that is offensive or unsuitable in some language you don't care about will usually do face no challenge because bigger corporations use consultants who check those things.

Rumpa, or Billen would be a good name.

[cj]

I agree.

I built a $10m revenue company, when we were very small I filed for a trademark in the US during the first year of operation and got rejected (but still on the supplemental registry, which doesn’t do much at all)

Another company applied and had the exact same mark accepted, but in a different industry so not competitive with us.

Honestly it has never been an issue. We have resources now to reapply and pursue the official trademark, but I just see no reason to do so.

IIRC EU trademarks operate on a first come (first applied) priority, so the mark gets granted to whoever applies first. That’s unlike the US where the mark is supposed to be granted to whoever was using the mark first, no matter when the application date is.

TLDR: I’ve spoken to multiple trademark attorneys, have applied for multiple marks, and honestly just don’t see the value in spending time or energy on it for an established company, let alone a side project.

[yieldcrv]

100% agree, I had a non technical founder for a crypto venture in one of the earlier cycles. He was basically just there to get me in rooms with investors but didn’t know that, any way he kept trying to patent and trademark everything instead of just executing, and I shot him down repeatedly so we could launch the project in 6 months flat

Made millions in revenue just launching and definitely would have missed the window doing IP stuff

[btown]

I can't give advice about the trademark, other than that I've been through this kind of thing before and it sucks.

What I can say... is that I love what you've been doing on your Deepkit, and I was horrified to hear that this was happening to you.

Seriously, I've only lurked in the community so far, but it's possibly the most forward-thinking foundational library in the web space that I've seen.

Strong typing with annotations that can simultaneously influence runtime ORM and frontend generation, while being fully compliant Typescript? A hand-rolled lightning-fast Typescript compiler that emits the runtime reflection capabilities? Full-fledged DI as an inherent part of the design, not an afterthought?

It's such an incredible blend of beautiful tooling with pragmatic applications.

For anyone curious about this, https://web.archive.org/web/20230916074647/https://deepkit.i... is a fascinating read.

https://github.com/microsoft/TypeScript/issues/47658#issueco... provides context on why some of TypeScript's design goals around erasure hold it back from these features. My vision of the web is that it would be an even more vibrant and innovative place if TypeScript were to cast off those restrictions.

DeepKit actually solving this by implementing its own compiler, bytecode, and interpreter... it's truly incredible.

Marc, know that there are people out there who love your work, and who will continue to follow it avidly regardless of the name. You're doing amazing things.

[athrowaway3z]

Having bought a trademark in the EU and the US for an open-source project as well (with the US being denied). It sucks, it's a waste of time and money, and my advice is to not bother.

None of the 'normal' eventualities are all that scary or bad.

If a trademark holder asks you to change your name, just change your name - your users don't care as much as you. If done well, you can milk a name change into getting more attention to your project.

If it's a name you've used longer than them and are really attached to, you could gamble and just keep using it - all a trademark does is let them recover costs IFF they can prove your claim of use it is false and harmful by being in the same category.

Lawsuits really aren't the fun kind of thing a 150m dollar company wants to get entangled in, especially held in unfamiliar foreign courts they might lose - unless maybe you go around attacking their trademark.

[mmmlinux]

Trademarks mean nothing. A bigger company can always come along and bully you till you give it up. Just like what happened to Allen Pan and his Mythbusters trademark.

[xp84]

What's especially egregious about this case to me is how the authorities didn't seem to even be able to articulate what would satisfy them, other than an overwhelming amount of documented EU commercial activity.

If you had 2 people documented as being in the EU who had purchased software licenses for 'Deepkit' for $10 is that enough? If not, why? Why is being big[1] justification for outright stealing a trademark from someone little? It's gross, is what it is. I'd rather eliminate the whole trademark construct than have it just automatically side with the largest party in any contested case.

[1] also, they may only be 'big' in terms of bank account balance, since they're some startup -- they may not have any EU customers yet themselves. Did they prove they did?

[Sanzig]

Sometimes, the little guy does win, but only after a lengthy court battle: https://en.wikipedia.org/wiki/Nissan_Motors_v._Nissan_Comput...

[ljlolel]

My friend won a 9 figure trademark case with a mag7 company

[theli0nheart]

You say your project has thousands of stars on GitHub, right? AFAIK, GitHub makes all stargazers public. And many (most?) users have location data in their GitHub profiles.

Given that, could you not write a script that simply pulls that for every user that's starred your project in the EU, and provide that as evidence?

[nivertech]

IANAL, but I remember a case with a startup where 2 of the founders were lawyers. They found themselves in a similar situation & decided not to fight it, but to use it as an opportunity to rebrand

On the other hand, a startup with $160M may be willing to pay u for a US trademark w/o going to court or arbitration

[kube-system]

> On the other hand, a startup with $160M may be willing to pay u for a US trademark w/o going to court or arbitration

Not after this post, they're not. They've already got a US trademark, and if they simply Google it, and find this post, they're going to realize this person is never going to challenge them in a US court over it.

[comrade1234]

Trademarks are for commerce, no? If you had charged even a few customers would it have helped?

Now that they own the trademark you can't make money off of it but you don't have to give anything up - if you have the url and aren't charging anyone you can hold onto it.

> I dealt with this years ago - it would have been about $250K to challenge the trademark for something that I'd been using for a few years.

[chris_wot]

You can't trademark something that is used already. That's why this is so egregious.

[ddtaylor]

I don't have advice on if you should pursue "the fight" or not.

What I do think is important is to not disappear or go quietly when these companies attempt these things. I will probably get a lot of flack for it, but an example would be Google with the Go programming language. There was an existing language already developed and being used under that name. Google wanted to call it Go for "bigger" reasons and so they did.

Who is supposed to "fight" that?

In my opinion it's the maintainers of distros and maintainers of repositories. If they want to call their thing "foo" and there is already a "foo" in the repository, that sucks, kick rocks or call yours "foo-company-thing" since you're the one creating issues. You can likewise take the responsibility of explaining to your users why "foo-company-thing" is the name in all of the Internet as a whole. We didn't create those problems and I don't want to spend any of my time "solving" them for free.

[brettpro]

> What I do think is important is to not disappear or go quietly when these companies attempt these things

It is exceptionally easy to tell someone else to spend time and money for a cause you philosophically agree with.

What will you, specifically, do to help this person in this case?

[jonas21]

Look, I hate to be that guy, but according to your own comment [1], it sounds like you started this fight when you tried to block them from registering the "Deepki" trademark in the EU.

They were perfectly happy to coexist with your project -- and nobody was going to confuse "Deepkit", a TypeScript framework, with "Deepki", a real estate sustainability platform.

But then you tried to stop them from registering their own name (which they had been using for years before you started your project). Why would you do this? They responded by filing to invalidate your trademark, which, given the circumstances, seems pretty reasonable. In the end, they won.

You say that you registered a trademark so that you could "live peacefully." Perhaps the lesson to learn is if you want to live peacefully, don't go around picking fights.

[1] https://news.ycombinator.com/item?id=44894521

[mns]

To be honest, until reaching your comment this seemed like the small guy being bullied by the big bad corporation, but after looking at this, this does seem like the other company was quite polite or reasonable about this, while the small guy wanted really hard to get into a "fight".

[theyknowitsxmas]

Skeletons in the closet. Like everyone else here and Reddit complaining about their banned Stripe account.

[qwertox]

What I take from this is, that if a .eu domain, or one of any TLD of an EU country has not page with real usage on it, that I then I can demand to have it cancelled and given the right to register it.

Should be the same, no? And if it's not, why didn't OP get the right to sell the trademark to that company?

Not sure if it's ok or not, what the TM office did there, because if not, then just registering TMs could also be done in the same way like domain squatting.

Maybe OP should find cases where such demands from powerful companies were rejected, even if they shouldn't have rejected them.

[lucb1e]

>> the losing party in cancellation proceedings must bear fees and costs incurred by the other party.

What order of magnitude are those, if you are at liberty to say?

[neilv]

Did you also lose the name in GitHub?

Currently:

https://github.com/deepkit => 404

https://github.com/deepkit/deepkit-framework => 301 redirect to https://github.com/marcj/untitled-code

https://deepkit.io/ => still up

[_rkcg]

No, I started to rename the repo and moved it to my personal account, out of frustration mainly. Not sure yet what the new name is going to be, or if I can keep the old one.

[cobbzilla]

The best outcome, if they’re going to strong-arm it from you anyway, is to sell it to them.

Talk to a lawyer about optimal pricing, then offer to sell them the trademark for a decent discount versus what their strong-arm tactic will cost them (they have to pay lawyers too!)

The company wants your trademark for the lowest price. Just be cheaper than what they have to pay to legally steal it.

[rwmj]

This happened to me once, so I guess not so unusual. Our project was called "bitmatch", because it enhanced the OCaml "match" operator to allow matching on bitfields. We didn't apply for a trademark, obviously, as the project was tiny and who does that.

Some US company sued because they held a US trademark for "bitmatch". Luckily they sued my employer (Red Hat) and Red Hat's lawyers dealt with it, but we did have to rename the project to "bitstring" (https://bitstring.software/).

[smcin]

> - Is it even worth getting a second opinion and appealing in the EU? I mean the project is very small.

If you can handle the costs or find pro-bono (EU) lawyers, then potentially yes.

Also take up a European petition to generate publicity for your case, maybe on the legal abuse of IP rights of open-source software companies.

Compare to e.g. 'Petition at the European Parliament "on the implementation of an EU-Linux operating system in public administrations across all EU countries"' (Petition No 0729/2024): https://www.reddit.com/r/opensource/comments/1glo8tv/petitio...

(Sounds like the EU equivalent of cases that Larry Lessig and the EFF would take in the US; have you contacted them?)

Try to find open-source/startup-friendly MEPs, and for Bulgaria. And start blogging on LinkedIn. And mention your domain (deepkit.io) early and often. All publicity is good publicity. And present at the European open-source confs. Start making noise. Maybe you can't reverse your individual ruling (or maybe you can), but you can alert others.

> - They basically kept repeating that they couldn't clearly link any of the usage to the specific goods/services my trademark was registered for.

I don't get what they're claiming hits on your domain (deepkit.io) don't already show. Sounds bogus. They didn't cite any specific examples of what would have proven it?

[molszanski]

What would you do if random corp would come and try to hijack your open source identity?

[bawolff]

Did they actually try and hijack their identity? Hijack to me implies actively trying to steal their reputation. Sounds more like the name wasn't particularly unique and they independently decided they wanted to use that name.

[scoot]

I haven't seen anything that mentions that trademarks are business classification specific. See Apple Corporation (the computer company) vs. Apple Corp (The Beatles holding company) for example.

Deepki is in a very different space to Deepkit (Although the former is a terrible brand name, and the latter sounds more related to deep learning).

Does an OSS project that doesn't trade have a classification? I have no idea.

[BrenBarn]

It sounds like another case of the favoritism given to commercial activity (and more favoritism the larger the scale of that activity). It's similar to how you can do various things and take various tax writeoffs if you do something as a business, but if you just do the same things without being a business, you're SOL.

[driverdan]

If you're interested in keeping it you need professional legal advice, not a bunch of anonymous people on the internet.

[hoppp]

You could have tried to offer to sell it to them? I dont think you can win it, no point burning a hole in your pocket

[Lu2025]

They could have offered a small fee to the original poster but no, they went straight to robbery.

[gethly]

I think your mistake here was that you registered the TM but it was not linked to any business, therefore you lost it, which is expected outcome(irregardless of how you feel about it). If you would create a non-profit organisation that would own it, you'd be bulletproof.

[fl0id]

You can also write to FSFE about it, afaik they give legal advice in foss cases.

[will5421]

I guess you’ve fallen foul of the rules to protect against trademark “squatting”. They surely weren’t designed with (non-commercial) OSS projects in mind.

[molszanski]

This is sad. Sorry to hear that!

[dostick]

But the name differs by one letter, is it? Don’t they have to prove usage as well? And replying “too low” usage - sounds like someone’s personal perception. Do they publish what number is not “too low”? Who sets the criteria and how can you know it in advance. And some well known and important projects would fall under the threshold of usage.

[MagicMoonlight]

Not worth it for 1800/views a year. Keep using the name though, since you held the trademark they can’t exactly argue that you can’t.

[deadbabe]

I wonder if there’s a business opportunity here.

For a monthly fee, you can have “users as a service”. You will receive traffic from many, many users, who you can freely harvest all the data you want from and prove you have traffic. These users will not block analytics or any trackers, and are fully ready to be data mined.

Subscription tiers scale based on how many users you require.

[notpushkin]

So, a click farm?

[Ferret7446]

I wonder if you can simply continue to use the name, then if they try to sue you in the EU, you can point out that you have no EU users. If they can prove that you're competing, then that could retroactively prove that the trademark was unfairly revoked to begin with?

[htmXlabs]

Set a price, perhaps they'll buy it. That is a lot easier for them as well.

But still, a trademark only applies when in the same industry (competitors), so if your project has nothing to do with real-estate (or SaaS for real-estate), there should not be any issue.

[TheMagicHorsey]

Did you come first in time before the Deepki company? If so you probably have the ability to win. First in time wins, even if you were a small player. It would be their responsibility not to choose a project with a similar name to what you have if you came first.

[mcv]

Sounds like the EUIPO isn't following its own rules. I wonder if there might be some corruption going on that might be addressed. It's certainly a ridiculous and dangerous ruling.

[timeon]

I get why they would care about usage, but this case does look like corruption.

[d--b]

These people are effing stupid. They should have given you 50k to change your name, it probably would have been cheaper for them, and you'd probably walk away happy...

[JohnKemeny]

Is this the organization on GitHub?

https://github.com/voided-org

Did they recently rename to Voided Org?

[101008]

Rename your project, and use your established SEO of the trademark to tell the your story. You aren't going to win, but at least make them lose a bit too.

[77pt77]

The US one somehow feels even more insulting because at least the EU gave plausible excuses, the states didn't even bother!

[andrewmcwatters]

This sucks. I hope you can find a positive in this and possibly find a better name for your popular project.

[BolsunBacset]

It's a poor non-distinctive name so move on and do not second guess it

[ig1]

For stars you can pull both the locations and times using the github api.

[fennecfoxy]

They have all the money and there's nothing you can do about it. But that's what we love here on HN! VC and billionaires, corporations and executives!

As long as we get our highish salaries, our taxes don't rise and we can live in a nice neighbourhood away from the poor then we literally don't care about wealth accumulation, abuses of corporate power or lobbying.

Sure, pretend it's not true; but we've not done anything about it, we're not doing anything about it, and we're not going to do anything about it.

[oriettaxx]

I had no idea it could happen

[jwilber]

Ah, a real estate company with awful morals - color me shocked. I’d shop this around to a news agency for publicity.

[soraminazuki]

This is yet another example of how utterly disingenuous the stated purpose of intellectual property laws are. There's all this talk from proponents about how it protects the little guys from abuse by big corporations, yet in reality it's the exact opposite every single time. Rights are taken away from the public with the force of the law while big businesses trample on the law to steal from individuals. For all the talk here about the best course of action being to "just" give in, things will keep getting progressively worse until there is collective action.

[raverbashing]

Honestly just cut your losses and move on

Google Analytics is not something that's "trademark used for actual trade"

Is the big company being a jerk? 100% But then sign m again the project is self-described as a "small OSS project"

I can understand it being handled like that as it prevents "trademark squatting"

[terminalshort]

I would be inclined to agree in the case of trademark squatting, but I fail to see how it can be squatting if the "squatter" owned the trademark since before the squatee existed. That just doesn't really make sense.

[suspended_state]

While I think there's very little chance for the author to overturn this decision, and thus agree with you that he should just move on, you should have a look at the amount of features this small project offers. I don't think this could be considered "trademark squatting", there's a real effort put in that project, and for many years.

Perhaps I have the wrong idea of what it means to do trademark squatting, or did I misunderstand your point?

[fzeroracer]

What about their use of their trademark is 'trademark squatting', exactly?

[blibble]

fundamentally a trademark is to protect the mark of your trade

if you haven't traded (you say you haven't produced any revenue), there's no mark of trade to protect

[oriettaxx]

not that simple

What about when you start?

You choose a name, patent it, and start: anytime they can take from you that patent until you trade enough? can somebody define that 'enough' ?