Groupon: Trademark Bullies

Groupon: The wealthy business empire that has made its fortune from selling weekend trips and products like the ‘Purple Tickler Dildo’ directly to your e-mail inbox.

They’ve had their troubles in the past, with people apparently no longer feeling the magic of the often bizarre choices made by the virtual coupon giant.

groupon dildo
One of the fine products on offer through Groupon

 

However, today saw them coming under fire again. This time for not playing nicely with trademarks.

In a posting on their website, the open source software Foundation GNOME has issued a cry for financial help to oppose a list of trademark registrations that Groupon have filed with the US Patent and Trademark Office, which conflict with those that the Foundation have held since 2006.

It appears that Groupon wish to use these trademarks for the name of a new product that will be used as part of an electronic point of sale application. The scope of the usage described is pretty wide:

Providing use of cloud-based non-downloadable software for processing point of sale transactions, payment transactions, voucher redemption, appointment scheduling, customer relationship management, customer location detection and awareness, inventory management, analyzing merchant transactions, and for evaluating and managing information on business performance and customers; providing temporary use of non-downloadable software that enables users to send and receive pricing, financial transaction, customer information, and payment processing information directly to and from a mobile device and a cloud-based server; software as a service (SAAS) services featuring software that enables users to send and receive pricing, financial transaction, customer information, and payment processing information directly to and from a mobile device and a cloud-based server; providing use of cloud-based non-downloadable software for payment services, merchant analytics, and for evaluating and managing information on business performance and customers; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware problems and troubleshooting of computer software problems; installation and maintenance services for computer software for processing point of sale transactions, payment transactions, voucher redemption, appointment scheduling, customer relationship management, customer location detection and awareness, inventory management, analyzing merchant transactions, and for evaluating and managing information on business performance and customers

(source)

As you can see, that’s pretty similar to the description of activities covered in the trademark held by the Foundation:

Downloadable computer software tools and libraries used for the development of other software applications; downloadable computer software development tools; downloadable computer software for creating and managing a computer desktop; downloadable computer software for use as a graphical user interface; downloadable computer software for word processing, database management, and use as a spreadsheet

The Internet were none too pleased about this, especially as Groupon has waxed lyrical about their admiration of open source software in the past. In an attempt to calm the waters, they gave the following statement:

Groupon is a strong and consistent supporter of the open source community, and our developers are active contributors to a number of open source projects. We’ve been communicating with the Foundation for months to try to come to a mutually satisfactory resolution, including alternative branding options, and we’re happy to continue those conversations. Our relationship with the open source community is more important to us than a product name. And if we can’t come up with a mutually acceptable solution, we’ll be glad to look for another name.

(source)
(second source with slightly different wording on Groupon’s Engineering blog)

On the face of it, this largely looks like it might have had the desired effect, with people considering the matter to be closed. However, it seems like nothing better than PR spin. Here’s why:

  • It is inconceivable that Groupon would not know about the prior existence of the GNOME Foundation’s trademark. If they didn’t, it should have come up in the course of proper due diligence.
  • Applying for identical trademark registrations in such a similar area is an aggressive move
  • If Groupon really was in talks with the Foundation, why did they go ahead and submit trademark applications anyway?
  • If the recent statement from Groupon really was serious, they should have announced an intention to retract the pending applications

Open source communities do not have the same resources to defend their intellectual property as large businesses do, which can make them seem like an easy target for organisations who wish to trade off of their established goodwill. Any defensive legal action would be hugely costly to pursue, and if the GNOME Foundation are forced to go down that route it will be a loss to the open source community as a whole. Thousands of Dollars that could be spent on further development and innovation will be used up fighting a needless battle with a company that can afford it.

Groupon should stand by its words, respect the GNOME Foundation’s intellectual property rights, and withdraw their outstanding applications. Otherwise they will be confirmed as nothing more than trademark bullies.

Update: Groupon have just posted the following statement:

UPDATE: After additional conversations with the open source community and the Gnome Foundation, we have decided to abandon our pending trademark applications for “Gnome.” We will choose a new name for our product going forward.

Those were some pretty quick ‘additional conversations’.

 

Sorry Ms. Jackson.

At WordPress.com part of my job is to push back against those who seek to abuse the law to censor blogs that they don’t like or agree with. Complainants commonly make claims using the process of trademark and copyright law to intimidate sites into doing what they want, even where they have no valid right to do so. Sadly, many people don’t have the knowledge or resources to fight against this sort of thing, and will remove content after being on the receiving end.

Recently we (the Terms of Service team) received correspondence from someone claiming to act on behalf of Janet Jackson. They had submitted a trademark complaint about the use of the phrase ‘Janet Jackson’ on a particular website. Effectively, they wanted the article removed for an alleged violation of their trademark, despite the fact that the page only mentioned Janet once. This is clearly not what trademark law is meant to be used for – something any law student would be able to tell, and so was clearly just a cynical ploy to have the content removed.

We refused to take action against the site, and notified the owner about what was going on. She has posted up a great response over on her blog. Here are some excerpts:

Allow me to convey my gratitude as both a fan and a corresponding legal target. I recently received the most flattering letter from your IP lawyers in which they allege that I committed a federal crime of TM infringement by mentioning your name in a blog post. That they would devote time and energy to catching my blog in their social media dragnet and do me the honor of writing a cease and desist letter is thrilling.

You see, humble as it may be, I take my writing very seriously (as, apparently do your lawyers). I have a Ph.D. in English, teach college writing and literature courses in Boston, and am working on my first novel manuscript. For anyone to allege lightly and insubstantially that my writing infringes on any kind of TM, IP, Copyright, is personally insulting and slanderous. WordPress’s lawyers have proven their worth by establishing promptly that your lawyer’s charges against me are entirely unfounded. I will not burden this article any further regarding the ins and outs of IP law and this case. WordPress understands the importance of protecting independent writers and free speech from corporate legal bullies.

Click through to read the full thing.