I'm curious about whether the product name "Postwoman" violates Postman's trademark and whether Postwoman will be getting a C&D letter soon, demanding that the name be changed.
Normally companies don't get to claim broad trademark protection for prefixes -- Facebook has been shut down when trying to broadly enforce its trademark against anything prefixed with "Face" -- but "Postwoman" is close enough and is marketed as a competing product in the same place.
Update: It seems the author is also worried about this. On her blog post announcing the service, someone raised the concern, and she acknowledged that it's a problem: https://dev.to/liyasthomas/comment/ee8m
It's like one of those marketing things - at some point or another Postman will need to decide what to do here. If they go after them, postwoman will get tons of "free" publicity and probably get the PR win, even if it means renaming to "Post Woman" (with a space) or declaring they will fight it in court.
If Postman decides NOT to pursue it, some users may simply be turned off to the fact that they decided to invade the space of Postman with a similar name. I and probably others would probably have respected a different name altogether.
If Uber got a competitor called Ubor people would probably also be annoyed.
EFF is debunked this myth many many many times I wish people would stop spreading it, as it just an excuse for Over Aggressive enforcement that companies that DESIRE to do it use to divert the bad PR, "We had no choice" sounds alot better than "We want to crush any competition"
> Second, Canonical is not “required” to enforce its mark in every instance or risk losing it. The circumstances under which a company could actually lose a trademark—such as abandonment and genericide—are quite limited. […] Courts also set a very high bar to show abandonment (usually years of total non-use). Importantly, failure to enforce a mark against every potential infringer does not show abandonment.
> The evidence in this case shows that Metalock Corp. has and is continuing to take reasonable steps to maintain its rights in the mark, to use that mark, to license its use, to advertise it and to prosecute infringers. The owner of a mark is not required to constantly monitor every nook and cranny of the entire nation and to fire both barrels of his shotgun instantly upon spotting a possible infringer. Lawyers and lawsuits come high and a financial decision must be made in every case as to whether the gain of prosecution is worth the candle. These defendants have not proved that because of the lack of efforts by plaintiffs in "policing" use of the mark, that METALOCK has become so diluted by widespread use by others that it has lost its distinctiveness.
My interpretation is that companies do indeed have to prosecute a high enough fraction of infringements to protect their trademark, but they don’t necessarily have to prosecute a given infringement. So, for example, Postman could keep their trademark if they left “Postwoman” alone, as long as they later sued “Post Man” for infringement.
Refusing or failing to pursue action against a violation of a trademark can cause a trademark to be considered abandoned and therefore invalid. It is a genuine legal concern. This is supposed to prevent individuals and companies from “sitting” on a trademark without the intention of using it.
So you are saying that you think that "Postman" declining to pursue legal action against "Postwoman" might lead to a court deciding that "Postman" is a generic mark - do I have that correct?
Can you point to a case even vaguely close to this fact pattern?
>So you are saying that you think that "Postman" declining to pursue legal action against "Postwoman" might lead to a court deciding that "Postman" is a generic mark
Per this posting from a law firm [1], as your question is stated with the inclusion of "might" the answer is yes. Apparently it can go one of three ways: abandoning, not impacting/abandoning, or diminishing. Two of these results are bad for the trademark holder.
I'd assume a C&D letter would be sufficient to get a proper result or at least should be the first move in these matters, but I'm not a lawyer nor play one on TV or online.
You don't necessarily need to sue competitors for being misleading, but you do generally have to show you are trying to defend your trademarks and a lawsuit is a nice expensive papertrail.
I assert that literally zero of these cases are even close to this one in terms of the degree of abandonment represented by failure to take action against Postwoman.
Can you specify a single one that you think is similar?
You could have made a simple search and found more confirmation than I could possibly provide. Even the USPTO has top-level search results to that effect.
Trademarks have to be defended or else you can indeed lose it. That's a fact. Copyrights on the other hand are not the same. You may be confusing the two and lumping them all together under "IP" but there are many legal differences between different types of IP.
I am very familiar, and have formally studied, trademark genericization. Your patronizing comment is not helpful.
Can you point to a mark that you think was genercized in a similar fashion to what you project happening if Postman does not pursue legal action against Postwoman?
Not a lawyer, but in this particular case it appears they reaffirmed the lower court stating the vendor couldn't sell products with trademarked Greek organization lettering (though he could make up ones using the Greek alphabet as demonstrations) and that they could continue to sell their "double raised crest backing" paddle which the group was requesting they be banned from doing.
So the trademark was protected it would appear. Even though the infringing company makes a good case (laches) for selling said products without regard from the fraternities/sororities for decades (in fact, they were selling to these organizations, so they were generally aware of the company's existence and practices).
>>>Quite simply, the view that a trademark holder must trawl the internet and respond to every unauthorized use (or even every infringing use) is a myth. It’s great for lawyers, but irritating and expensive for everyone else. And when done clumsily or maliciously, it chills free expression.
Trademarks are protected to prevent fraud and impersonation of other companies. So we don't want to accidentally mistake a e.g. gougle product as a google one. That was the very legal intention of trademark laws.
In the case of postwoman, it's kind of hard to imagine anyone would mistake it for postman. So it's unlikely postman would win a lawsuit against it.
IANAL but the basic sniff test is could "Postwoman" be confused with "Postman?" I think the answer is yes. With the author calling it an alternative to "Postman," you have the author acknowledging Postman is a strong trademark. And it's not like it's the only one available fitting the "{HTTP-METHOD}{MAN|WOMAN}" construct-- you could rename it "HeadWoman" and probably be okay.
Zero chance of that being a primary issue when you're dealing with a directly competing product.
If they allow their trademark to go unprotected from an extremely blatant hit like this, their trademark might as well be worthless. Having a competing product in the market using an intentionally similar name, is a large value debasement for the Postman brand & offering (not to mention the $58m in venture capital that is betting on the value of those things).
Is Postwoman from the Postman company? They're similar products? Are they competing products from the same company? The sound you hear is millions of dollars in venture capital being flushed down the toilet.
No serious company is going to hold back on a legal response just because you staple woman/women/her/she to their existing trademarks and seek to compete head-on with their products or services.
Trademark laws are about consumer protection which is why companies must enforce their trademark or they risk losing it. In this case, I initially thought Postwoman was a spinoff of Postman built by the same team (not sure why they would do this but I guess representation is all the rage nowadays). If a consumer could mistake the product as a different one then it's grounds for trademark violation.
Disclamer: I am not a lawyer but I have at least a high level understanding of trademark law.
Huh .. Postman is MPL-2.0 is seems, but it is also a commercial operation (and even non-commercial organizations often hold and protect trademarks like Mozilla). It's not a joke or broken project, so it wouldn't be protected under parody. I too am curious if Postman will go after this project to defend their trademark.
Normally companies don't get to claim broad trademark protection for prefixes -- Facebook has been shut down when trying to broadly enforce its trademark against anything prefixed with "Face" -- but "Postwoman" is close enough and is marketed as a competing product in the same place.
Update: It seems the author is also worried about this. On her blog post announcing the service, someone raised the concern, and she acknowledged that it's a problem: https://dev.to/liyasthomas/comment/ee8m