Interesting.

> I have registered my existing trademark on the Bundler project.

As all of this was happening I had wondered if there was going to be some kind of copyright dispute, but I guess it's gonna be trademark based.

Does anyone have any insights into how this might play out? How do trademark disputes tend to happen? (I assume this is in the US?)

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jillesvangurp 3 days ago | parent [-]

After fifteen years of not enforcing the trademark, a common legal interpretation in case of a conflict would be to consider the trademark genericized or abandoned. Which means any trademark owners apparently were not interested in enforcing their trademarks and effectively abandoned their rights.

Of course this is not guaranteed and just a common interpretation of trademark law by judges in trademark related cases. In case of conflicts, the trademark owner would be unlikely to win for this reason if a defendent can argue that the trademark was abandoned for years.

Oracle is in the same boat with Javascript. Technically they own the trademark. But world+dog has been using that trademark freely without them doing anything about it. So, their claims to the trademark are weak at this point. Hence the recent articles about e.g. Deno wanting to challenge their ownership of that trademark.

And you are right to call out the jurisdiction. Because interpretations and laws vary between countries and even between states inside the US. This stuff is complicated.

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wgjordan 2 days ago | parent | next [-]

My (not-a-lawyer) understanding is that a trademark is 'genericized' only when it's become so ubiquitous that its public use no longer refers to a single, unique source or origin of product, but to an entire generic class of products: escalator, granola, trampoline are some older examples of 'genericized' trademarks.

In this case, 'Bundler' still refers pretty clearly to a single brand-name utility within the Ruby ecosystem. However, the goods/services in the trademark registration application [1] covers "Downloadable computer software for managing, processing, optimizing, and organizing source code and dependencies", which is a broader class of services. The descriptive word "bundler" is quite widely used in the JavaScript ecosystem, for example, to describe this general type of dependency-management software (esbuild calls itself "An extremely fast bundler for the web", for example). I could certainly see the "Bundler" trademark being contested as a descriptive mark that hasn't acquired significant secondary meaning in that broader context, so it will be interesting to see whether this trademark application is upheld upon review (or potential opposition).

[1] https://tsdr.uspto.gov/#caseNumber=99407082&caseSearchType=U...

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adgjlsfhk1 2 days ago | parent | prev | next [-]

There's a reasonable argument that the trademark hasn't been generalized or abandoned. There's not other project out there using the RubyGems trademark (as far as I know). As such, OP has a decent argument that there were no previous violations in need of enforcement. Until a week ago, the trademark was (arguably) being used by a community owned project as desired.

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Aurornis 2 days ago | parent [-]

> Until a week ago, the trademark was (arguably) being used by a community owned project as desired.

The community isn’t a legal entity. Saying that it’s owned by a public community with no boundaries or membership is equivalent to saying it’s genericized or abandoned.

Even if it was, that would undermine this trademark registration which was registered by a single individual.

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em-bee 2 days ago | parent | next [-]

that wouldn't matter though, would it? a genericized trademark is not the problem. the problem is ruby central wanting to take control of the name/trademark. if they want the trademark now, they now have to fight, and if in that fight, it is established that nobody gets to own the trademark, then the current trademark registration would have achieved its goal.

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Aurornis 2 days ago | parent [-]

If nobody owns the trademark then they're free to use it.

The person who wrote this post tried to register the trademark to prevent them from using it. If the trademark is determined to be abandoned and generic then they cannot stop Ruby Central from using it.

	▲	em-bee 2 days ago \| parent \| next [-]
		but ruby central using the trademark is not the problem. as long as everyone else can use it too. but ruby central wants to prevent everyone else to use it, and that's the problem. if the trademark is determined to be generic, then ruby central can not prevent anyone from using it. the goal is not to stop ruby central from using the trademark. the goal is to stop them from claiming ownership.
	▲	queenkjuul 2 days ago \| parent \| prev [-]
		I think the point is to prevent Ruby Central from owning it, not using it

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type0 2 days ago | parent | prev [-]

> owned by a public community with no boundaries or membership is

membership in github org is still a membership

	▲	Aurornis 2 days ago \| parent [-]
		A GitHub org is not a legal entity.

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petercooper 2 days ago | parent | prev | next [-]

And, yet, it seems to still be difficult to do anything about it, with Deno now raising $200k to fight it. Ultimately, someone still needs deep enough pockets to push the point even if the legal point seems straightforward.

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skywhopper 2 days ago | parent | prev | next [-]

There can only be “nonenforcement” if there was someone using the “Bundler” name without permission that went ignored. You can’t enforce something that isn’t being violated. And unless I missed something, that never happened until RubyCentral pulled this takeover.

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bdcravens 2 days ago | parent | prev [-]

Further complicating the issue is that for as long as I can remember, the two organizations have been kind of comingled at Ruby conferences, taking money. You want a Bundler sticker? Go to the Ruby Central table. You want a Bundler t-shirt? They'll happily sell you one for a donation. IANAL, but there has to be some nuance to "ownership" based on how it's presented to those who didn't read the fine print.