Trademarking


#61

I’m not disputing your knowledge of IP law, I don’t have legal training, but I don’t see that a lower-case H makes it generic. And a hackspace can exist and use the term for itself without having applied for membership.

The only space I can think of that uses the term without being associated with HSF is Imperial’s Advanced Hackspace, but they copied our pattern early on and are unable to be a hackspace in our sense because of their funding. If you have examples of this sort of thing undermining a claim I’d be interested to read.


#62

I’m not worried about anyone else claiming “hackspace”. They wouldn’t be able to get it.

But what happens when HackSpace Magazine registers HackSpace Events and HackSpace Services? Or HackSpace Enterprises? What recourse do we have at that point?


#63

What happens if they have a HackSpace event in London and people start calling it London HackSpace?


#64

Manchester Hackspace (HacMan) is one of the 3-4 (I’ve lost count plus some come and go) hackspaces in the Greater Manchester Area.

There is also an event called Hack Manchester which is in no way affiliated with the Hackspace (it’s a series of hackathons). While it causes a small amount of confusion we’ve been jogging along fine for years.

OK so the names aren’t as close as your example but they’re close enough that we occasionally get questions about the event and I assume they do about the hackspace (I’ve never asked).


#65

I’m not entirely sure what you’re trying to argue here @Norro, if we want to understand this conclusively we’ll retain an IP law specialist - something that I’ve been wanting to do for a long time yet there’s been substantial pushback.

Regarding LHS having the right to the trademark in the UK, as far as we know this is true, and LHS is absolutely willing to transfer the rights to that to the HSF, which in turn would just act as a good-faith holding agent in the UK rather than one space holding the name. The point being that in situations like the one with the magazine it could be enforced - not to act as a hammer for other spaces staying in line. This would also have gone for “makespace” in Cambridge and “makerspace” in Newcastle - unfortunately those terms are now certainly generic.

My suspicion is that due to the amount of pushback on this it’s now too late to pursue and may be considered generic (which is also what the rpi foundation told us, although I’m not sure if we should actually believe them).

That said, perhaps it may be worth invoking an IP lawyer to actually get this settled one way or another instead of shouting at each other over the internet. Seem reasonable?


#66

Well just that I think the horse has bolted and I don’t think that anyone should own a word that we’ve been using generically for a decade. Among anything else it would be another slap in the face of Reading Hackspace.


#67

If we wish to prevent this happening repeatedly and the word losing any actual meaning, it’s about the only option - but it may not be an option we can take. I think it is reasonable to find out if the horse has actually bolted or if we’re being defeatist about it.

Given the amount of protest we’ve had in the past when any brand has attempted to use “hackspace” it’s pretty obvious that we all care about this - in the past we’ve had success convincing people to change track, but it was never going to work forever if we don’t have a legal basis. And now it hasn’t worked and people are distressed.

I’m unclear why it would be a slap in the face of Reading Hackspace, no current space would ever be prevented from using the name, including Reading.

I’m just going to re-state this: The point of the incoming HSF structure is so that the organisation is owned and run by as many spaces in the UK as we can feasibly get to agree on joining - again please stop assuming that Reading can’t join exactly as it is, that is at the discretion of the directors (who will be elected from all the participating spaces). We’re likely never going to get everyone to agree, but we have to accept that and aim for the largest coverage we can.

The trademark would then be joint-owned by all the spaces who join the HSF, with all other spaces who opt not to join (or really don’t fit the bill) still being allowed to use it anyway. The only time this would actually matter is in cases like this where a for-profit entity attempts to use the name for something that all the spaces agree isn’t reasonable - it would then be put to the spaces to make this call. Given the huge number of spaces in the UK and the amount we’re going to end up with as members, the chances of the trademark being misused is extremely unlikely.

Again: All I’m proposing is that we figure out if it even can be trademarked now and then we can actually have a reasoned debate rather than posting reckons.


#68

I think it would be very sensible to get advice at the least, if anything just to be sure what the options are.


#69

Right, good! Let’s get on with that then. :heart:


#70

Back in April for the “MakerspaceGate” Jo and I talked to a few IP experts to figure out possible next steps. Do we feel it would be useful to contact these people again so we can get their input?


#71

@marc Any contacts you have would be useful - if you can contact them for their feedback it would be very much appreciated.


#72

I have asked and will share if I get any advice. Also someone recommended me these free IP sessions with an expert at the British Library https://www.bl.uk/business-and-ip-centre/information-clinics. Any London based peep available to book a session?


#73

@marc I’m available to do this, however unfortunately every session appears to be “Sold Out”. Looks like bookings open at the start of the month.


#74

Heard back from an IP expert. This is an informal short answer and I will have another chat with her this weekend so do send any follow up questions:

To summarise:
"If you choose to apply for TM, you may end up having to defend it against any existing
TM mentioning the word “Hackspace”, so you may have to show prior use. You may also need to file for revocation of that TM, so that yours is the only one on the register.

The thumb rule for genericity tends to be that if the word is in common usage for the kind of goods/service being provided (and does not distinguish one goods/service provider from another), it may be considered generic. That said, the determination of genericity may be subjective and in the hands of the TM examiner. One good way of showing that it is not generic would be to argue and show that the word Hackspace is associated ONLY with the Hackspace Foundation and no one else."

I’ll try to get more details about what documents would constitute acceptable proof.
Remind me: when was HSF founded? 2009?

The avenue that should also be explored is that if we are told the term is too generic to be trademarked it also means we have a base to oppose any new TM applications from other orgs.

Please share any questions you have


#75

That’s great information, I look forward to hearing more.

The HSF was founded in January 2009.


#76

I’m adding notes of the chat I just had with the IP expert.
It’s a long read so grab a Club Matte, sit back and enjoy…

Key points for a successful application
1. Demonstrate prior use of the term
2. Demonstrate that the term is distinctive for the goods and services provided and directly connected to HSF
3. Term uniqueness should not be diluted by existing trademarks

Here are more details about each point:

1. Demonstrate prior use of the term
HSF will have to show that they have been using the term before anyone else.

What does constitute proof? (really depends on the view of the trademark application examiner)

  • Letter or document from HSF that mentions the first instance of the term with date and location
  • Announcement of public events
  • Domain name history
  • Hackspace Email account with discussions
  • Physical proof: ads, poster etc.
  • Mailing list (let’s check how old is https://groups.google.com/forum/#!forum/uk-hackspaces)
  • Any other publicly available document that would be an indication to the public at large that the term belongs to HSF
  • Note: A wikipedia page doesn’t constitute proof

Obviously an application can only include a short selection of these documents (or links) and a rationale detailing it. This would have to be written by a lawyer to maximise chances.

The process will be easier if HSF can demonstrate continuous use, not just the creation of the term. To that effect a timeline could be created in the application showing the evolution of the activity (maybe also adding a capture of the wayback machine could help).

One challenge though: When you do a google search a lot of the term activity overlaps with London Hackspace so there could be a need to show that all or part of it falls within the activity of HSF.

2. Demonstrate that the term is distinctive for the goods and services provided and directly connected to HSF
While I’m fairly confident that HSF could demonstrate easily it has prior use of the term, it gets trickers on the question of distinctiveness and direct link to HSF.

First a reminder:
"Trade marks are acceptable if they are distinctive for the goods and services provided. In other words they can be recognised as signs that differentiates your goods or service as different from someone else’s.”

“Hackspace" is not the easiest term to define or identify (see the HSF thread on the definition of “Hackspaces” for reference). The good news is that made up words like “hackspace" are usually acceptable as trademark because they are clearly distinct from any other existing names and brands. So we could demonstrate distinctiveness with this unusual name but we would still need to link it with our activity.

The goods and services are split into classes so a key question is which class or classes we would want to apply a TM for.
Guidance on classes can be found here: https://www.gov.uk/guidance/how-to-classify-trade-marks
Looking at the list: the classes 7, 9, 37, 41, 42 are relevant and we could apply for all or more likely some of them. Problem: None of the classes are clearly mentioning venues, workshops, clubs etc and what we would call our usual activity. We shouldn’t underestimate how crucial this choice will be and this is where we need further guidance from a trademark lawyer.

3. Term uniqueness should not be diluted by existing trademarks
Assuming that we answered all the questions above we would need to take the tricky decision on what to do with the 2 existing
trademarks that include the word “hackspace”. Because their existence lessen the uniqueness of our claim on “Hackspace”.

They are several ways to do this (Guidance on revocation is here: https://www.gov.uk/government/publications/trade-marks-revocation). We could either state prior use of the term or that it is now too generic. Let’s keep in mind that there are costs attached to this process, it takes time and won’t be ideal for our relationships with those TM owners.

A final note: Getting a registered trademark is not the end of the road as it also mean fighting off eventual opposition/revocation, monitoring other applications, renewal fees, keep active use of the term…

A summary of our main options:

  • Apply for a TM of “Hackspace"
  • Apply for a TM of “Hackspace" AND for the revocation of existing TM mentioning the term “Hackspace” (arguing prior use of the term)
  • Apply for a TM of “UK Hackpace Foundation” (easier to do, does not protect “Hackspace” but helps make the term more generic)
  • On the basis of genericity of the term: apply for revocation of current TM mentioning the term, and oppose any future TM applications
  • On the basis of genericity of the term: oppose future TM applications
  • On the basis of prior use of the term: apply for revocation of existing TM mentioning the term
  • Do nothing

Suggested next steps:

  • Get further support (e.g from free appointment with IP surgery and/or pro bono trademark lawyer)
  • Discussion on which option is preferred
  • Get an estimate of costs for the process of TM and revocation
  • Explore funding solutions

#77

For the sake of semantic clarity, and correcting a typing error:

Apply for a TM of “UK Hackspace Foundation” (easier to do, does not protect “Hackspace” but helps make the term more generic)

Or

Apply for a TM of “Hackspace Foundation” (easier to do, does not protect “Hackspace” but helps make the term more generic)

As the group had discussed dropping ‘UK’ from the name previously because then it doesn’t exclude neighbouring islands that aren’t quite part of the United Kingdom.

Current existing trademarks include the Hackspace Magazine and at least one ‘physical’ Hackspace.


#78

Sadly, we can demonstrate neither.

The UK Hackspace Foundation as it now exists was founded in January 2017.

The Hackspace Foundation which was founded in 2009 is now known as London Hackspace Ltd. And there isn’t any continuity of organisation between the three entities (there was a mostly-unused unincorporated association in the middle).

If we need to prove prior use (and not just non-objection) when trademarking, then London Hackspace could trademark it and then transfer the trademark. (I don’t think unregistered trademarks can be transferred.)

I expect it would not be hard for LHS to prove prior use.

As I understand it, there are a few issues here:

Firstly, the trademark examiner may reject the application outright on “absolute grounds”. The applicable statute here is s3(1) of the Trade Marks Act 1994, which prevents registration of:

c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,
d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:

Secondly, anyone who uses the uses the (registered or unregistered) trademark “Hackspace” could object to the trademark during publication on the same grounds. That’s more than 2 organisations, it’s more like 60.

It is, however, substantially similar in name and definition to “hackerspace” which is in the Oxford English Dictionary.

The more I look into it, the more I feel that “hackspace” is clearly a generic term. I should have just read the law to start with.


#79

The more I look into it, the more I feel that “hackspace” is clearly a generic term.

It might feel that way but for context earlier this year Gratnells had no issue with the IPO to register the term “Makerspace” (albeit for different classes). According to the IP expert genericity can be argued on known products and services but for a term like hackspace which is tricky to define the case is harder to make.

Anyway, I still think the best route is an organised vigilance on applications rather than trademarking the term ourselves. We just have to get better at monitoring applications, filing opposition in time (instead of attempting revocation) and get lawyer advice about genericity.


#80

Trademarks are always scoped to the class they’re registered in - so this makes sense. There’s absolutely nothing stopping someone from producing Hackspace washing powder.

I’m not sure what this means? It’s pretty simple to define hackspace. Given there are 60+ organisations using it, I think if “hackspace” was already a trademark then it would surely be in a position where it could be removed for being generic.

I’ll quote from the IPO’s guidance here as well:

Although evidence is often used to overcome objections, it will not help at all if the mark you wish to register is a word or term which has become customary in your line of trade.

I think we’re in agreement here.