Also, given that you posted it in January of 1997 (which is before their filing of the trademark on August 17, 1999), so long as you can provide witnesses (e.g. people who looked at/downloaded the software at that time) I don't think they even have a leg to stand on. The fact that they cancelled the previous trademark means that unless they can prove that they continued to use the mark continuously through the new filing (which was filed as "intent to use", making it almost self evident and admitted that they discontinued the use) they have now way of enforcing the trademark.
But here's the catch. Since you don't have a registered federal trademark for JDE, you are relying on "common law" trademarking. >From what I have read, this means that if you use a trademark in a state you have rights to it in that state and any other states that you use it...but you don't have those rights in states where you haven't used it.
But given the "locationless" nature of the internet, I'm not sure how posting to the Internet would be interpretted. Without a doubt, if you could provide a witness from each of the 50 states (and possibly US territories) who had seen/downloaded JDE prior to the filing you would be ok. If not, then I think they could pursue on the technicality that you would not be allowed to use the mark in states where it wasn't used prior to their application for a federal mark. (I hope that makes sense...just trying to think like a lawyer here ;^)
So I think the real question is whether you can collect a list of people who will testify that they have used JDE prior to August 17, 1999. Personally, I can do precisely that. I know I used JDE on a project during the first half of 1999. So Illinois is covered.
Another interesting point. If you look at their original filing from July 16, 1990 through December 14, 1998, they had registered the trademark as being associated with:
Goods and Services (CANCELLED) IC 009. US 038. G & S: computer software for use in business, government, educational institutions and hospitals. FIRST USE: 19801200. FIRST USE IN COMMERCE: 19801200 (CANCELLED) IC 041. US 107. G & S: computer educational training services. FIRST USE: 19801200. FIRST USE IN COMMERCE: 19891200(CANCELLED) IC 042. US 100 101. G & S: consulting services in the field of computer software; computer software design services; computer programming services. FIRST USE: 19801200. FIRST USE IN COMMERCE: 19801200
My interpretation is that the purpose of JDE in no way violates
this usage. However, their filing in 1999 states:
Goods and Services IC 009. US 021 023 026 036 038. G & S: COMPUTER SOFTWARE APPLICATIONS IN THE FIELDS OF BUSINESS INDUSTRY, GOVERNMENT, EDUCATIONAL INSTITUTIONS AND HOSPITALS FOR USE IN FINANCIAL ANALYSIS, BUDGETING, ACCOUNTING, PAYROLL PREPARATION, BILLING, REPORTING, BUSINESS PLANNING AND MANAGEMENT, LOGISTICS PLANNING AND MANAGEMENT, DISTRIBUTION PLANNING AND MANAGEMENT, PROJECT MANAGEMENT, HUMAN RESOURCES MANAGEMENT, CUSTOMER RELATIONSHIP MANAGEMENT, MANUFACTURING PLANNING AND MANAGEMENT, SERVICES MANAGEMENT, PROCESS MANAGEMENT, SUPPLY CHAIN MANAGEMENT, MAINTENANCE PLANNING AND MANAGEMENT, ASSET MANAGEMENT, PROCUREMENT, INFORMATION MANAGEMENT, ELECTRONIC COMMERCE AND SOFTWARE DEVELOPMENT IC 042. US 100 101. G & S: CONSULTING SERVICES IN THE FIELD OF COMPUTER SOFTWARE; COMPUTER SOFTWARE DESIGN SERVICES FOR OTHERS; COMPUTER PROGRAMMING SERVICES FOR OTHERS; COMPUTER SERVICES, NAMELY PROVIDING INFORMATION IN THE FIELDS OF COMPUTER SOFTWARE, COMPUTER HARDWARE, COMPUTER SUPPORT AND INFORMATION TECHNOLOGY USING A COMPUTER NETWORK IC 041. US 100 101 107. G & S: COMPUTER EDUCATIONAL TRAINING SERVICES
Notice the use of "software development". This would be the
obvious conflict. However, if we can prove that JDE was posted and
used in 1997 then I don't think the 1999 application holds any water.
Again, none of this means that they can't pursue the matter and file for court action. However, I think you can gather a lot of evidence that you can provide them with to convince them that they do not have a valid claim. It at least warrants them explaining why they think they do, so that you can decide whether you feel their claim is worth possible litigation. (A subtle reminder about the bad press these incidents create for companies might also help here.)
I dunno, in the end it is obviously completely your decision. Personally though, I would at least present these facts to JD Edwards and ask them if they still feel you are in violation of their trademark. And if so, please refer to which statutes they feel you are in violation of. (I would present it in such a way that states that you are open to possibly changing the name but that you aren't sure why you should have to...the goal is to receive a legitimate response and not a supeona to show up in court).
Based on what I read it seems that the vast majority of valid trademark infringement cases result simply in a court injunction against the guilty party. The possible monetary penalties that I know of are "legal fees" (in which case, I think they would have to prove you were unfounded in contesting their claim), and "loss of income" in which case they have to prove that your use of the trademark has directly impacted their bottom line.
OK, IANAL but I'm beginning to think I should play one on TV...
Paul Kinnucan wrote:
At 09:23 PM 7/18/2001 -0500, you wrote:
>You are correct regarding enforcement. Hence the reason that they sent
>Paul the "cease and desist" notice. However, that only means that they
>took a cursory glance at JDE, saw that there might be a conflict and took
>the appropriate measure to notify the potential violator.
>
>They are probably unaware of the duration of time that JDE has been used
>as well as the details of what it really is and the fact that the full
>name is "Java Development Environment". For these reasons it seems
>perfectly valid to provide them with the facts regarding the product,
>provide several possible solutions, and request further information with
>regard to their ownership of the trademark, and which sections of the law
>they are citing as a violation.
>Here is the meat of their claim:
"Your use of "JDE" in your organization name and on your web site is likely
to cause consumer confusion as to possible affiliation or sponsorship by
J.D. Edwards and confusion as to the source, origin, or approval of goods and
services offered by your organization. Such use, without authorization,
constitutes
infringement of J.D. Edwards' rights in its marks and unfair competition, even
if a disclaimer is included."Needless to say this claim is patently absurd. First, I have no
organization so it is factually wrong. Secondly, my website makes it clear
that JDE stands for Java Development Environment so there is no possibility
of a consumer confusing my software with any product or service offered by
J.D. Edwards. My site nowhwere mentions J.D. Edwards or any of its product
or services. Thirdly I do not offer any product or service that competes
with any product or service offered by J.D. Edwards.[snip]
>I would not recommend asking them if JDEE is an acceptable name without
>first changing the name of the product on the web site and getting formal
>proof of use of the name (after which any future trademarking is
>irrelevant due to common law). Otherwise, they could submit an ITU
>trademark registration for the new name prior to that decision.
>I have just changed the website back to use JDEE to forestall such a move.
- Paul
