The term Joomla! conference and Joomla!Day are protected

[PhilTaylor-Prazgod]

Alex (Forum Moderator, Joomla! Core Events team lead and Joomfish developer) made this statement in another thread:

[quote="http://forum.joomla.org/index.php/topic,252714.msg1154382.html#msg1154382"]The term Joomla! conference and Joomla!Day are protected...[/quote]

Please can you tell us exactly what you mean here with the evidence to sustain such a quote.  Are they registered trademarks? and if so in which countries...

Can anyone just set up a meeting of people and call it a "Joomla! conference" or "Joomla!Day" ?

Does anyone need "permission" from "someone" in order to run such an event?

[PhilTaylor-Prazgod]

Joomla! and the Joomla! logo are a trademark of Open Source Matters

You need the permission of Open Source Matters to use the name in association with an event.

Registration of a trademark is not relevant to the question of whether the trademark exists.

http://en.wikipedia.org/wiki/Trademark

Thank you for dodging the questions put to the floor.  Let me rephrase them so that they can be answered in bullet form:

1) Alex has stated that the terms "Joomla! conference and Joomla!Day are protected" - How are they protected?

2) Can anyone just set up a meeting of people and call it a "Joomla! conference" or "Joomla!Day" ?

3) Does anyone need "permission" from "someone" in order to run such an event?

Also

Joomla! and the Joomla! logo are a trademark of Open Source Matters

This is factually incorrect (AFAIK).

According to my personal research, There has been trademark applications made which have been refused or additional information has been requested from OSM.  No trademark has been approved (AFAIK) if I am factually incorrect on this please provide solid evidence to support your statement.


The Joomla Name:  http://tarr.uspto.gov/servlet/tarr?regs ... y=77224536
The Joomla Logo: http://tarr.uspto.gov/servlet/tarr?regs ... y=77226768

Both of which have status:

Current Status: A non-final action has been mailed. This is a letter from the examining attorney requesting additional information and/or making an initial refusal. However, no final determination as to the registrability of the mark has been made.

So  4) Please can you direct me (so I can direct my lawyer) to the relevant documentation/factual evidence to support this claim.

And yes I know about the Australian trademark 1073509 for "Joomla" without the ! but that is not relavant to the statements made by yourself and Alex as your "Joomla!" contains the ! and thats important.

Registration of a trademark is not relevant to the question of whether the trademark exists.

Equally it is hard to prove a trademark exists, if no registration has been made.  And if a registration has been made (like above) and refused does that prove that no trademark exists?


Lastly, Wikipedia is not an authoritative legal resource for citing references in support of your points.


And finally: This thread is not about flaming or finding fault - I simply want to establish the facts on which bold statements have been made by senior joomla community members. - DO NOT tell me to "ask my laywer" cause I am simply asking for the FACTS from the OSM/Alex on which they are basing their bold statements (So I have your answers to give to my lawyer), It is not too much to ask for the evidence behind such statements. 

[mcsmom]

Phil,

I'm really not going to get into it with you, but the Joomla! trademark registration application has not been turned down at all anywhere. You can go to the USPTO office and follow the application procedures and you will see that your statement is factually incorrect.

The only registration applications that have been turned down are those by organization other than Open Source Matters who attempted to register names including the term Joomla!. 

If you want legal information about this I suggest you consult a trademark lawyer, since I wouldn't take any advice about legal issues off of a forum.

Sorry if it upsets you that I attempt to be helpful, but the information will be useful for others.

1) Alex has stated that the terms "Joomla! conference and Joomla!Day are protected" - How are they protected?

By our trademark

2) Can anyone just set up a meeting of people and call it a "Joomla! conference" or "Joomla!Day" ?

No

3) Does anyone need "permission" from "someone" in order to run such an event?

Yes

[PhilTaylor-Prazgod]

I'm really not going to get into it with you, but the Joomla! trademark registration application has not been turned down at all anywhere. You can go to the USPTO office and follow the application procedures and you will see that your statement is factually incorrect.

So I give up asking for direct answers then if you are going to misread my clearly laid out statement.  I did not say that the OSM application had been turned down - I have read the documentation and I know that you have 4 more months to reply to letters sent to OSM by USPTO in which you need to make changes to your application and provide proof of your use of the trademarks in commerce on the said start dates you have quoted in the application ELSE your application will be refused. FACT:[quote="http://tmportal.uspto.gov/external/PA_1_2_V9/OpenServletWindow?serialNumber=77226768&scanDate=2007101139724&DocDesc=Offc+Action+Outgoing&docType=OOA¤tPage=1&rowNum=1&rowCount=6&formattedDate=11-Oct-2007"] "Pending a proper response, registration is refused because applicant has not provided evidence of use in commerce of the applied-for mark"
[/quote]
I have yet to find - or be provided with - evidence from USPTO or from the Joomla legal team to support the statement that the terms "Joomla! conference and Joomla!Day are protected"  "by our trademark"

I have asked several times for you to provide me with factual evidence as to your trademarks you are using to support the statements you make and you have failed to provide them.

Please feel free to delete this thread if you want - Im not here to stir things - I just dont believe you can make such bold statements without proof - I'm about to commission YOUR trademark lawyer and request his services (He must be good!)

Mod Edit: Attorney information removed

[PhilTaylor-Prazgod]

Darn - only got his voicemail !

[mcsmom]

Trademarks are established by use and use only. Even a registered trademark is lost if you don't use it.

Clearly the Joomla! trademark is in use to refer to a framework and content management system  in every geographic area of the world.


Mod edit: removed attorney's name


Yes, if you want to have a Joomla Day that is about cooking or politics, that would probably be an allowable use without permission because it would not cause confusion with Joomla! or potentially harm its good name as a framework and content management system.

But I really do advise that you have an experienced trademark lawyer such as Brian  Spross or perhaps someone local who could answer your questions.

[akede]

Sounds like a trademark issue for me, so no need to answer the event related questions to me.

If you ever intent to organize a Joomla!Day in the UK, I'm the person you should talk to Phil.

Alex

[DesignGuy]

Maybe it's time to call it Joomlaw Day, and avoid it altogether.

[jayjoomluh]

joomlaw

LOL i love it

i need more popcorn



(FYI ztek has several LARGE ATTORNEY presences in NYC who have nothing better to do then get paid to fight with others, if we wanted to set up a joomluh day, we probably would. We have the resources and the knowledge to unite people to learn such a wonderful "open source" technology.

I wonder just how many lawyers joomlaw can afford

sorry to hear people arguing over the joomla stuff, its supposed to bring people together, hope you all get it worked out

[brad]

jayjoomluh,

Just because a handful of people choose to be argumentative, don't conclude we (the community) is like this. By and large, the majority of us are 'all together' and cooperate just fine.

It's great that people who use the term JoomlaDay in an approved way also get the support of Joomla, like promotion etc on our websites. Just for that alone it's worth following the few simple guidelines to have your usage approved.

[jayjoomluh]

brad

i totally understand what your saying, i know there can be "whiners" out there

as for the whole joomla day or joomla group thing, i figure we put up a notice, if people want to they will come, though there may already be a group in the area (couldnt track one down though)

thanks for understanding.

if you have any info on how to or whatever drop me a line

thanks everyone

Jayjoomluh

[brad]

If you are in NYC, I know there are a few usergroups/user etc around. Keep your eyes out for a JoomlaDay or arrange one yourself.

All the best.

[jayjoomluh]

brad

Baltimore COunty Maryland here

4 hours or so from NYC (depending on how fast i get through NJ turnpike without getting pulled over) 

[jcracknell]

All this talk is a waste of time because......

1) If you go to court (under the particular country) you have to claim damages if such an event had been organised.
2) You'd not get anything unless you proved real damage had been done e.g. If I organised a JoomlaDay! at my school and got lots of my students interested in using Joomla that would be a benefit to the community.
3) You need plenty of money and backing for a court case of that type and what are you going to get out of someone who earns say $35,000 per annum?

Please can certain people come off their high-horses. It would only be possible to press charges if damage had been done - proving it with a decent judge and not the Judge Judy US system or certain people's want for a kangaroo court (especially in respect to charging for components).

If Joomla took an individual to court it would rock the boat so much several people would be drowned.

J.

[DesignGuy]

Free advice:

Pure speculation here - and I am not a legal expert but...here's a strategy which Joomla/OSM could employ, to give justification for oversight of the term, "JoomlaDay."

I know Joomla! / OSM has not yet been granted official non-profit 501(c)(3) status, but if they were, I could see justification for controlling the use of "JoomlaDay" as an event series.

The IRS here in the US is (finally) clamping down on so-called charities, and it's getting far tougher to garner approval. Organizations are blatantly cheating on their rules, and not following what are SUPPOSED to be strict guidelines for this status. There are basically three areas in which you can be approved for official status:

1. Human Services (uh, no, Joomla! and/or OSM is not providing hot meals, health care or safety from wife beating thugs)
2. Religion (we're not there yet, although one could start Joomlation, I suppose)
3. Education (ahah!)

So, to keep their EDUCATIONAL purpose, and make sure that at any time, should an IRS happen to Google (the verb) "JoomlaDay," well then, an EDUCATIONAL pureplay had best show up on his/her monitor, or else, what could happen...?

STAMP!!! "DISALLOWED 501(c)(3) STATUS!"

Make sense?

So, I don't view the head honchos as hardasses, I just think some further communication and explanation would be helpful, so they communicate that they are in fact doing this FOR the community.

Then again, my whole theory could be off.