Joomla Trademarks Name and Logo

The problem with trademarks is that if you don't defend them you lose them. Registering a trademark is a very expensive business - is it really worth 5 figure lawyer fees? And that doesnt include the ongoing legal costs of defending those trademarks. Is that really a good use of the limited community donations.

There is also a trademark issue with prior use, the word joomla being actively encouraged and promoted by OSM for including in your domain name.

What is the purpose of a trademark registration? Is it to protect the community from unscrupulous charlatans wishing to exploit the Joomla community and good name? There are many ways to do this without tradmearks that are targetted specificaly against the charlatan and not the enitere joomlaverse.

For the record when I was on the board of OSM I was against registering the trademarks.

Ok, so I know this will spawn an entirely different conversion (I hope different that the heated debate on the Joomla forum):
I know you can't use the Joomla logo on apparel like a shirt, but can you:
1. Create a shirt using the Joomla! name since it's trademarked?
2. If not, can you create a shirt using the Joomla name without the "!" since it's part of the trademark?

My understanding is that by including the "!" in the trademark it automatically means that "joomla" is a tm as well.

The use of the logo is a different issue as it was always protected by copyright law. (And that is far more wide reaching than a USA TM)

I am so impressed with the leadership of the Joomla! project and how they work hard to improve Joomla! and preserve it for the future. Nice article, as usual, Steve. Thanks for sharing!

I'd have to agree with Brian 110% here. Legal strong arming doesn't make a warm and fuzzy community, and leads to opaquness regarding OSM budget expenditure. In the case of the Joomla name, this is exacerbated because OSM actually encouraged people to get domains with Joomla in the name in the fall of 2005....

There is also a connection here with the forms at OSM. You recently had to agree that "I understand that the license to use joomla in a website name is revokable without notice by Open Source Matters, Inc"

I understand the desire to protect the Joomla name and logo (e.g. - to prevent sites like JoomlaPorn.com, JoomlaKKK.com, JoomlaWarez.com, etc.), so registering for a trademark makes sense from that perspective.

However, as has been mentioned, OSM not only encouraged community members to register domain names with the word "Joomla" in them, they pre-released the Joomla name to those folks who could prove they owned a domain name with "Mambo" in it, so they could have first dibs at "Joomla" domain names. With that in mind, I hope OSM shows wisdom in what they choose to do with this trademark. If OSM ever decided to arbitrarily shut down sites with the Joomla name in them, it would be extremely counter productive to building the community.

I am not a lawyer, following is my opinion. I don't think Joomla name in domain is an issue, there are domain names with sucks and such wording for all major companies like Microsoft, Apple, Paypal and etc, those site do business fine, if big companies can't shut those sites, what can Joomla do.

I agree with Aravot, also I think that if anyone has a positive Joomla-related website then it's not a problem to have the word 'joomla' in the domain name.

The only ones that should worry about that are spammers and other people using their websites for bad purposes.

BTW, legal expenses are not a good way to spend money that was donated by people.

@cory - yes you are correct OSM did actively encourage the domain registrations, with no restrictions, it was my name on the email.

@aravot I believe the "sucks" domains are allowed under a different law that permits the use in cases of satire, parody and complaint. I'm sure there is a google resource on this.

@flavio - I agree with what you are saying but my understanding of TM law (IANAL) is that you have to enforce your TM 100% and not selectively.

Legal expenses "may" be a legitimate way to spend "donated" money but at a time when joomla! bemoans the lack of donations is it really right to spend 5 figure sums on something with minimum value to the community as a whole.

I've yet to ever see a valid argument of the real, not perceived, benefit of a TM registration to the joomla community

Hi Steve,

I just read your post and thought that I would offer myself up to answer any questions you might have for your next blog post. My e-mail address is available in the comment details. I look forward to hearing from you.

Regards,
Rob Schley

Let's keep things in perspective and remember this trademark is not new. It has been in use since the project's inception. This week, the US formality is in place. That is great news, of course, but it's not "new" news. Just check the TM on the Joomla! Logos used since September 2005. The project must be a protector of its identity and using trademarks is a recommended means of helping ensure Joomla!'s future. (Google "open source trademark.")

Sorry Amy but that isn't correct.

The current text says "The Joomla! logo is NOT trademark free." but the original text was "The Joomla! logo is NOT copyright free"

Source http://web.archive.org/web/200...ew/259/70/

In fact as recently as Feb 4, 2008 the word trademark did not appear there.
Source http://web.archive.org/web/200...ew/259/70/

Steve, another question is why we have to guess at the costs for the TM. Shouldn't these be publicly available?

Confusion as to the purpose of the TM is also going to affect donations IMO. For example, I run a commercial GPL extension shop and just released some commerical templates. These are all consistent with the OSM interpretation of the GPL. And as a business owner, I am in a good position to make sizeable donations (as I have done in the past). However, i am now reluctant to donate fearing that the funds may be used to shut down my hypothetical domain - my-joomla-extension.com .

Brian - I said "Just check the TM on the Joomla! Logos used since September 2005." The Logos have not been altered in anyway and the TM by Joomla! has been there since the beginning.

Sooo, now it seems like there are varied opinions here
Would it be ok to create a shirt with "Joomla" without the logo and without the "!"? Or do you have to ask permission just like when you want to create a domain?

Well, OSM requires you to "ask them" for the name usage in domain atm. However, they never replied to me in the past 2 years on such requests.

OSM requires you to send a request for logo usage, however does this means everyone installing Joomla should ask OSM - as the logo is there - in the default template, in the admin panel, in the favicon?

Questions ... questions ... better focus on other stuff.

Yes there was an unregistered mark on the logo but not on the name. Thanks for your clarification Amy

@Kyle... I have the perfect solution for you. Create a t-shirt that says "My favorite CMS rhymes with Groomla", and then trademark that phrase so no one else can use it. If you want to include your domain name, just put "RhymesWithGroomlaPraise.com" on it.

I'm glad that helped. The trademark was more than the logo, of course. In fact, your response to a question "Doesn't Trademarking the Joomla name..." from September 21, 2005, is also good reference of that fact. It is impressive that things started properly.

Stop spinning you will get dizzy. That post you link to has absolutely no relevance to the trademark of the name. And there was no action at that time by OpenSourceMatters Inc to register any trademarks. (Remember I was one of the three founding members of OpenSourceMatters Inc)

Of more relevance is this one http://forum.joomla.org/viewtopic.php?p=51549 and the replies from OpenSourceMatters Board members

@Cory "GroomlaPraise", awesome.
I just really want to design some cool Joomla shirts, bc although the ones on the Joomla shop are nice, their very plain. Maybe there can one day be a shop on the official site where people can upload their own designs a-la CafePress or Zazzle, and share profit w/Joomla.

You don't have to worry about your use of Joomlarestofdomainname.com if you've requested permission to use it through the OSM form at opensourcematters.org.

The current policy is to accept requests for use, you put a little "The Joomla name is used under limited license " or whatever the text you're given says, at the bottom of your website, and then you've got permission. Joomla wouldn't and couldn't "shut you down" at a later date without just cause.

@Kyle, There is a form on the OSM site specifically for requesting permission to use the logo in the way you are describing: http://www.opensourcematters.o...iew/97/67/. You should submit a request. I believe we are a little behind in reviewing them but we should get to it soon.

Kyle - Like it. You might want to discuss that idea with Michelle Bisson.

Brian - I shared a couple of Joomla! Trademark links from September 2005 and expressed my support for excellent project foresight. I am confused how your link electing German moderators is relevant, but, honestly, I'm not interested in a debate and I am guessing you just grabbed the wrong link.

I know we all agree that Joomla! is an amazing project. There are now over 200,000 forum members and there have been over 5 million downloads since March 2007. A lot of good is coming out of our collective efforts and I personally believe that protecting the identity of the project helps ensure it's continued growth. Judging from the number of free software projects that do so, I'd say many others agree.

OK. JMHO. AFAIK. IANAL. YABBA DABBA DO. JOOMLA! ROCKS. I am done. Thanks again, Steve.

http://www.compassdesigns.net/...orums.html

Oops the link was meant to be http://forum.joomla.org/viewtopic.php?t=51549. Not suprised you were confused at the other one

Please keep in mind that most of this is FUD.

http://www.opensourcematters.o...ew/101/75/

http://www.opensourcematters.o...iew/97/67/

Registering the trademark makes the name protectable. Meaning, you can still license use of the trademark. So your domain names are safe, as long as you take the steps above. It's there to prevent abuse...