[Foundation] Jabber (tm)

Mark Zamoyta mark at zamoytatech.com
Fri May 18 12:35:49 CDT 2001


RE: [Foundation] Jabber (tm)"Jabber" is an English word, therefore it can be trademarked for any specific purpose.  For example there are about 3 different "Jabber" trademarks: video games, pencil boxes, and voice compression.

As Jer stated, Jabber.Com purchased the "Jabber" trademark from a NY company for the purpose of "voice compression".  This is very different than IM / Presence and the XML protocol.

Since Jer (or j.o.) was the first to use the term "Jabber" to describe an IM / Presence product, he was the only one who could have trademarked "Jabber" for messaging and presence purposes.  

>From what I can recall before j.c. came along, everyone was totally fine with using "Jabber" in client names and product names, there wasn't any TM symbol for Jabber, j.o. wasn't sending out any cease and desist letters to protect "Jabber", "Jabber" was never registered as a trademark for the purposes of IM / Presence, and the public was invited to join the project.

The Jabber trademark for IM / Presence was not vigorously enforced for a large amount of time.  

Thus "Jabber" is in public use and cannot be trademarked by anyone for the use of IM and Presence.  

Is it j.c.'s position that their voice compression trademark covers IM / Presence too?  (this would be a nifty lawyer trick!)

Or is it j.c.'s position that Jer or j.o. actually did vigorously enforce the trademark for over a year before transferring the trademark to j.c. ?

Mark 

  ----- Original Message ----- 
  From: Colin Madere 
  To: 'members at jabber.org' 
  Sent: Friday, May 18, 2001 9:19 AM
  Subject: RE: [Foundation] Jabber (tm)


  Agreed.  However, it must always be close in the minds of the Foundation that at any time, Jabber.com could revoke ALL of this use (if I understand trademarks correctly.. which I could quite possibly NOT be doing :) )

  > -----Original Message----- 
  > From: Peter Saint-Andre [mailto:stpeter at jabber.org] 
  > Sent: Friday, May 18, 2001 10:19 AM 
  > To: members at jabber.org 
  > Subject: Re: [Foundation] Jabber (tm) 
  > 
  > 
  > Hi Piers, 
  > 
  > My understanding is that Joe Developer would be able name his program 
  > Jabber* (such as Jabbernaut or whatever) as long as it's not a 
  > commercial product. If you had a commercial product, or even if you 
  > didn't, you could still associate your product with Jabber in other 
  > ways, for example as Gabber has done. I'm not sure that such 
  > a solution 
  > will please everyone, but it's better than renaming the protocol to 
  > something totally different like IMTP or PIXI or whatever. 
  > 
  > Peter 
  > 
  > Piers Harding wrote: 
  > 
  > > Firstly: Losing the name "Jabber" to the protocol would be 
  > disastrous - and for me I would probably lose interest and 
  > walk away from the community if it happened. 
  > > 
  > > Secondly: I think the greatest worry of producing a product 
  > based on Jabber is making a clear link/brand association with 
  > Jabber, if you cannot use Jabber in the name.  Not being able 
  > to easily make that connection seems to me to be pivotal. 
  > > 
  > > Jer has crystalised the position of jabber.com, and I 
  > believe that they are "trying to do the right thing", but if 
  > we are to take away the ability of Joe average developer 
  > trying to establish his product through name association, 
  > then we have to compensate for that with another mechanism.  
  > Maybe a jabber commercial portal - an adaption of 
  > jabbercentral.com, that provides a vehicle for product 
  > promotion to go with product certification that has been 
  > previously mentioned?  The key would be to make the entry 
  > barrier free, or at least very cheap, and thus accessible to everyone. 
  > > 
  > > Cheers. 
  > > 
  > > 
  > > 
  > > On Thu, May 17, 2001 at 03:09:01PM -0500, Jeremie wrote: 
  > > 
  > >>/me chimes in :) 
  > >> 
  > >>On Wed, 16 May 2001, Mathew Johnston wrote: 
  > >> 
  > >>>First, some history. A company that did some sort of voice software 
  > >>>had a trademark on the word Jabber (or something involving 
  > that word). 
  > >>>They threatened Jer with a cease and desist when he 
  > started using the 
  > >>>word Jabber to describe his new XML based protocol that 
  > would be used 
  > >>>for IM and more. Jer had already used the name a fair bit and the 
  > >>>Jabber protocol that he had started became more popular. He didn't 
  > >>>have money to fight in court with or buy the trademark 
  > from the other 
  > >>>company. Jabber.com, however, did. So, they bought the trademark. 
  > >>> 
  > >>Just to clarify things a bit, the original company was Oquirrh 
  > >>Technologies Inc. from NY.  They had the domain jabber.com 
  > and a trademark 
  > >>on jabber for "computer software for reducing the number of 
  > bits required 
  > >>to transmit speech" and some java classes that did such 
  > voice compression. 
  > >>I never received a cease and desist, and IANAL, but I'm not sure how 
  > >>applicable it would have been given the specific usage of 
  > the trademark by 
  > >>Oquirrh.  Essentially, Jabber.com came into existence by 
  > purchasing the 
  > >>domain and trademark from Oquirrh, and has since then filed 
  > their own 
  > >>trademark on jabber for "Software for real-time 
  > communications over a 
  > >>global computer network." 
  > >> 
  > >>On Thu, 17 May 2001, Thomas Charron wrote: 
  > >> 
  > >>>    Jabber.com may not be ABLE to do this.  Rememeber, 
  > trademarks have 
  > >>>monatary value.  They are a publically held company.  
  > Start giving stuff 
  > >>>away, and you quickly find yourself in the midst of lawsuites by 
  > >>>shareholders.  'Specially when dealing with smaller 
  > companies who are in 
  > >>>tough spots right now.. 
  > >>> 
  > >>Another clarification, Jabber.com is not a publicly held 
  > company, they 
  > >>are private, but largely owned by a public company (WEBB). 
  > >> 
  > >>My thought yesterday was, would it be acceptable for 
  > Jabber.com to assign 
  > >>the trademark to the foundation, and in turn the foundation 
  > would license 
  > >>the commercial use of the name "jabber" as used by 
  > Jabber.com in it's 
  > >>domain and product names?  The reasoning behind this is 
  > that Jabber.com 
  > >>has said that they have not and do not plan on using the 
  > trademark as a 
  > >>direct source of income, so the discussion around the 
  > immediate financial 
  > >>value of the trademark to jabber.com doesn't make as much sense.  
  > >>Instead, they want to ensure the brand and quality, and be able to 
  > >>distinguish their products uniquely in the marketplace as 
  > representing 
  > >>that brand and quality.  They were the first entity to 
  > seriously pursue 
  > >>offering commercial services around Jabber and have 
  > definitely benefited 
  > >>the community by creating those offerings for other businesses. In 
  > >>addition they have been honest in their support of the 
  > community and being 
  > >>an open participant and not trying to direct or control it. 
  > >> 
  > >>So, as far as I currently understand the situation, with a 
  > transfer and 
  > >>commercial use license exchange, Jabber.com can see their 
  > vision of proper 
  > >>brand and quality management happen through the foundation, 
  > as well as 
  > >>retain the commercial value that they have worked hard for 
  > and deserve by 
  > >>using Jabber in their product names.  This is the highest level of 
  > >>protection for the community as well, and will allow the 
  > name "jabber" to 
  > >>co-exist peacefully in the various usages as a protocol, open source 
  > >>software, and product names. 
  > >> 
  > >>I guess the next step is to see if it's something that 
  > Jabber.com would 
  > >>find acceptible or if there were additional facets to the 
  > problem not 
  > >>taken into account.  There's quite a bit of work to be done on many 
  > >>fronts, so I hope we can work through this quickly and get 
  > back to the 
  > >>problems of growing the community and making things work better :) 
  > >> 
  > >>Jer 
  > >> 
  > >> 
  > >>_______________________________________________ 
  > >>Members mailing list 
  > >>Members at jabber.org 
  > >>http://mailman.jabber.org/listinfo/members 
  > >> 
  > > _______________________________________________ 
  > > Members mailing list 
  > > Members at jabber.org 
  > > http://mailman.jabber.org/listinfo/members 
  > > 
  > > . 
  > > 
  > > 
  > 
  > 
  > 
  > -- 
  > Peter Saint-Andre 
  > stpeter at jabber.org 
  > 
  > _______________________________________________ 
  > Members mailing list 
  > Members at jabber.org 
  > http://mailman.jabber.org/listinfo/members 
  > 

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