[HN Gopher] VC-backed company just killed my EU trademark for a ...
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VC-backed company just killed my EU trademark for a small OSS
project
I run a small open-source project Deepkit (Trademark 017875717)
I've been building for many years. It's not huge, just a few
thousand users compared to the big OSS names, but to me it was
worth protecting, so I trademarked the name in the EU and US a few
years back. I had hoped to be protected from other corporations
this way and live peacefully. A $160M-funded company named Deepki
(Trademark 1751952) came along and filed for cancellation at EUIPO
since they needed the trademark now after getting lots of funding.
They won. Now my trademark is gone. The frustrating part? The EU
actually does allow open-source (even free projects) to have
trademarks, but you have to prove "genuine use" in the EU for the
goods/services your trademark covers. Which seems to force you in
collecting user sensitive data otherwise you are entirely unable to
prove that you have actual users in the EU. I generally try to
collect as little information as possible (also because I don't
care where my users are coming from). I had google analytics
running for some time on the main page (not documentation), but
most of the time it didn't work and it seems most of my users block
it anyway. Here's what I gave the EUIPO and why they said no: -
Google Analytics for my site with a full country breakdown from
2018-2023. A few hundred to ~1,800 EU visitors per year per
country. They said that's "too small" to count as real commercial
exploitation for my Class 9 software. Also, they said they couldn't
tell which goods those visits were actually for. - npmjs + GitHub
stats - hundreds of thousands of downloads and thousands of stars.
Rejected because there's no location data, so they couldn't confirm
if the usage was in the EU. In some cases, they said the timeframes
weren't even clear. - They basically kept repeating that they
couldn't clearly link any of the usage to the specific
goods/services my trademark was registered for. The conclusion:
>Conclusion: It follows from the above that the EUTM proprietor has
not proven genuine use of the contested mark for any of the goods
and services for which it is registered. As a result, the
application for revocation is wholly successful and the contested
European Union trade mark must be revoked in its entirety.
According to Article 62(1) EUTMR, the revocation will take effect
from the date of the application for revocation, that is, as of
18/03/2024. >COSTS: According to Article 109(1) EUTMR, the losing
party in cancellation proceedings must bear fees and costs incurred
by the other party. They even admitted there's no strict minimum
for usage, and free software can count, but in their eyes my EU
traffic was too low and not clearly tied to the trademarked goods.
I also have the US trademark for the name. This same company tried
to register in the US around 2022 (Trademark #79379273) and got
blocked because it was too similar (decision made by USPTO). But a
few months ago they somehow got it registered there too (Trademark
#7789522), not sure how they did that now. Now I'm sitting here
wondering: - Is it even worth getting a second opinion and
appealing in the EU? I mean the project is very small. - Should I
fight the US registration? - Or should I just walk away from
trademarks altogether for my open-source projects. I lost so much
money because of this already. - And for OSS projects in general,
is there even a practical, privacy-friendly way to prove EU usage
without generating revenue? - Is it even worth holding the
trademark if proving EU usage is this brittle for OSS? If the
trademark can be deleted just like that even after spending a few
thousands dollars on lawyers. Probably a skill issue, but still,
damn. It sucks to lose the name I've been building for years to a
corporation with $160M behind them, especially when this is just a
side project I do in my spare time, and to them I'm a nobody. If
nothing else, maybe my case can be a cautionary tale for other OSS
maintainers.
Author : marcjschmidt
Score : 242 points
Date : 2025-08-13 01:14 UTC (21 hours ago)
| nivertech wrote:
| IANAL, but I remember a case with a startup where 2 of the
| founders were lawyers. They found themselves in a similar
| situation & decided not to fight it, but to use it as an
| opportunity to rebrand
|
| On the other hand, a startup with $160M may be willing to pay u
| for a US trademark w/o going to court or arbitration
| kube-system wrote:
| > On the other hand, a startup with $160M may be willing to pay
| u for a US trademark w/o going to court or arbitration
|
| Not after this post, they're not. They've already got a US
| trademark, and if they simply Google it, and find this post,
| they're going to realize this person is never going to
| challenge them in a US court over it.
| marcjschmidt wrote:
| I've written Apache Foundation, Software Freedom Conservancy,
| Free Software Foundation, and OpenSource Initiative, and
| asked for help. We will see. If OSS has no value to our law
| makers and the trademark needs to be deleted, that's fine and
| I accept the loss. But I'm an open-source contributor since
| over decade and not only love the spirit, but my whole career
| is based on it. The last thing I can do is to fight for
| justice, even if it means I need help from bigger
| firms/initiatives.
| snthd wrote:
| https://www.deepki.com/about/#certifications-awards
|
| >Deepki holds the label BCorp certification, thereby
| strengthening its commitment towards its communities and
| stakeholders.
|
| https://www.bcorporation.net/en-us/standards/complaints/
|
| >B Lab will investigate material, credible, and specific claims
| against a current B Corp in one of the two following categories:
|
| > 2. Breaches of the B Corp Community's core values as expressed
| in our Declaration of Interdependence.
|
| https://www.bcorporation.net/en-us/certification/
|
| >B CORP DECLARATION OF INTERDEPENDENCE
|
| >As Certified B Corporations and leaders of this emerging
| economy, we believe:
|
| > That we must be the change we seek in the world.
|
| > That all business ought to be conducted as if people and place
| mattered.
|
| > That, through their products, practices, and profits,
| businesses should aspire to do no harm and benefit all.
|
| > To do so requires that we act with the understanding that we
| are each dependent upon another and thus responsible for each
| other and future generations.
| Lionga wrote:
| What an absolute piece of trash company
| fakedang wrote:
| Is it possible to report B corps not working in accordance with
| the principles?
| keysdev wrote:
| Yes
| marcjschmidt wrote:
| I wrote B corps an email highlighting the issue and asking if
| this actions align with their principles.
|
| They seem to be very busy. It seems showing that your
| corporation accompanies positive social impact, fairness, and
| responsibility is in high demand.
|
| > Thank you for reaching out and for you interest in the B
| Corp Movement! Despite our high ambition for an inclusive,
| equitable and regenerative economic system for all people and
| the planet; we are still a small team. So kindly allow us to
| come back to you within 2-3 weeks
|
| > Due to a high level of inquiries recently, it may take us
| longer than usual to respond to your message. We will answer
| questions in the order received. Response times may be up to
| 2 weeks.
| kriro wrote:
| Good find. Might be worth to read this and consider filing a
| complaint. Seems pretty clear they are in violation of BCorp
| values: https://www.bcorporation.net/en-
| us/standards/complaints/
|
| If it's worth it. OP needs to decide.
| keysdev wrote:
| BCorp is just virtual signaling. There is no reason for small
| business or startup to be Bcorp
| runlaszlorun wrote:
| Remind me not to work with this guy... Lol
| molszanski wrote:
| What would you do if random corp would come and try to hijack
| your open source identity?
| bawolff wrote:
| Did they actually try and hijack their identity? Hijack to me
| implies actively trying to steal their reputation. Sounds more
| like the name wasn't particularly unique and they independently
| decided they wanted to use that name.
| marcjschmidt wrote:
| it's more like this:
|
| - They started as small firm in France, registered there the
| trademark Deepki, unrelated to software.
|
| - I created Deepkit around 2018, trademarked in US and EU
| with software category.
|
| - They raised substantial amount of money around 2022 $150M
|
| - Board/Shareholders likely decided that the brand is
| important
|
| - They tried to register the US brand under software
| category. The USPTO declined automatically because of
| "likelihood of confusion"
|
| - They reached out to me wanting a "Consent and Coexistence
| Agreement", I told them not for free, to which they never
| responded with an offer.
|
| - They tried to register in EU later, which I tried to block
| under the same "likelihood of confusion" ground.
|
| - They started fighting with legal terms to get my brand
| deleted.
|
| - They succeeded.
|
| It's not necessarily only their fault that the trademark is
| gone now. As I just learned, the EU requires very strict
| rules of proving you have legit users. I couldn't convince
| them. Maybe due to skill issues, missing data, or
| technicalities. The biggest danger is now though that they
| can get me deleted from the internet entirely once the
| protection is gone. It requires just one corporation to
| decide to start come after you with a cancellation process,
| and you are done.
| jldugger wrote:
| > They reached out to me wanting a "Consent and Coexistence
| Agreement", I told them not for free, to which they never
| responded with an offer.
|
| Man, imagine if you had asked for a thousand euros as
| consideration.
| molszanski wrote:
| This is sad. Sorry to hear that!
| raverbashing wrote:
| Honestly just cut your losses and move on
|
| Google Analytics is not something that's "trademark used for
| actual trade"
|
| Is the big company being a jerk? 100% But then sign m again the
| project is self-described as a "small OSS project"
|
| I can understand it being handled like that as it prevents
| "trademark squatting"
| suspended_state wrote:
| While I think there's very little chance for the author to
| overturn this decision, and thus agree with you that he should
| just move on, you should have a look at the amount of features
| this small project offers. I don't think this could be
| considered "trademark squatting", there's a real effort put in
| that project, and for many years.
|
| Perhaps I have the wrong idea of what it means to do trademark
| squatting, or did I misunderstand your point?
| terminalshort wrote:
| I would be inclined to agree in the case of trademark
| squatting, but I fail to see how it can be squatting if the
| "squatter" owned the trademark since before the squatee
| existed. That just doesn't really make sense.
| fzeroracer wrote:
| What about their use of their trademark is 'trademark
| squatting', exactly?
| kube-system wrote:
| It isn't and the person you replied to didn't claim it was.
| But there just simply is not much evidence that OP was using
| the term commercially.
| mmmlinux wrote:
| Trademarks mean nothing. A bigger company can always come along
| and bully you till you give it up. Just like what happened to
| Allen Pan and his Mythbusters trademark.
| ljlolel wrote:
| My friend won a 9 figure trademark case with a mag7 company
| o11c wrote:
| Don't forget the greatest enemy of both abusive companies and
| abusive government: the news media. And this definitely seems big
| enough for them.
|
| See if you can "shop" around (start local) to see who's
| interested in publishing a story something along the lines of
| "The EU has declared war on small businesses. I'm being forced to
| pay thousands of euros because a brand-new company decided they
| wanted to steal my years-old project name."
| WhyNotHugo wrote:
| > Don't forget the greatest enemy of both abusive companies and
| abusive government: the news media. And this definitely seems
| big enough for them.
|
| Bad publicity is still publicity.
| terminalshort wrote:
| The news media _is_ abusive companies. Some of the worst. And
| they are one of the largest beneficiaries and supporters of
| abusive government, like how they are attempting (and sometimes
| succeeding) at getting governments to shake down companies who
| link to their sites. That 's not to say they aren't sometimes
| the enemy of other abusive companies or governments, but that's
| purely incidental and transactional in cases where it goes
| against them.
| tmpz22 wrote:
| Wealthy US startup steals EU trademark is a sticky title
| daedrdev wrote:
| The EU pushes heavily for consent for tracking, yet you need to
| track your users locations to keep your trademark, thus requiring
| that every company has to have a popup asking to track that data.
| bcrosby95 wrote:
| IANAL, but.... you only need consent if it isn't required for
| your business to function. If you need to track to maintain
| your trademark, couldn't you argue any business with a
| trademark needs to track users?
|
| I'm sure it wouldn't work in a real court, but it sounds funny
| in my head.
| cantalopes wrote:
| You still need a consent
| kube-system wrote:
| Most trademark holders have much more solid ways of
| demonstrating their mark's use in commerce, like financial and
| business records.
| kriro wrote:
| I saw on Reddit, that you already reached out to some people in
| the OSS space that might have the legal expertise. This actually
| seems like a very relevant case to me. If a trademark is granted
| to an open source project, it seems ridiculous to me to apply
| market based use criteria.
|
| Tbh...use should already be satisfied by having a Github or
| website and using the registered name.
|
| Keep us posted.
| comrade1234 wrote:
| Trademarks are for commerce, no? If you had charged even a few
| customers would it have helped?
|
| Now that they own the trademark you can't make money off of it
| but you don't have to give anything up - if you have the url and
| aren't charging anyone you can hold onto it.
|
| > I dealt with this years ago - it would have been about $250K to
| challenge the trademark for something that I'd been using for a
| few years.
| chris_wot wrote:
| You can't trademark something that is used already. That's why
| this is so egregious.
| comrade1234 wrote:
| That's not true though.
| kube-system wrote:
| You're thinking about patents.
| molszanski wrote:
| https://deno.com/blog/deno-v-oracle3
| sshine wrote:
| Walk away.
|
| Life is too short for lawsuits.
|
| This comes from someone who dated someone for three years who was
| in a lawsuit when I got to know them, and was still in a lawsuit
| when we split. It affected them daily, hundreds and hundreds of
| hours were lost, thousands and thousands of dollars went to a
| nice, well-intended family lawyer.
|
| But the best advice they could have got:
|
| When given the chance, walk away.
|
| Life is too short for lawsuits.
| mindcrime wrote:
| A good friend of mine always used to say "Once the lawyers are
| involved, you lose no matter what. Only the lawyers win."
| (paraphrased from memory).
|
| I don't know if I agree that that is correct every single time,
| but it strikes me as a very useful heuristic at the least.
| marcjschmidt wrote:
| That's a very good saying. I keep that in mind.
| b_e_n_t_o_n wrote:
| Life is too short for far more things than just this. It always
| strikes me just how much time we waste on stuff we won't care
| about in one year or five. Myself included. Time is by far our
| most precious commodity.
| chychiu wrote:
| I am sorry to hear that OP, I hope you fight the good fight and
| wish you all the best.
|
| On a different note, a quick cursory glance of this company
| really makes me wonder who even gave them $160M? The company site
| is soulless and filled with corporate jargon, and the whole
| company smells of bloat and leadership team is a long list of
| people in bullshit jobs. Is this where VC money goes these days?
| I am dumbfounded by the degree of mismatch between capital and
| utility
| dannyobrien wrote:
| It's fairly unusual for FLOSS projects to register any trademark,
| and (despite this lack of strict IP protection) it's _also_ very
| unusual for the owner of a trademark to ask or require a FLOSS
| project to change their name because it violates a trademark. Not
| completely unheard of, but still rare.
|
| I don't know why you decided to trademark your project name, but
| I think the biggest issue here is that trademark law is naturally
| the domain of IP rightsholders and an outlook that presumes and
| enforces scarcity when it comes to names, name spaces, and
| digital content.
|
| There aren't that many reasons why FLOSS projects need to work
| within that same domain. My thought is that it is better to try
| and defend the environment of a digital commons that exists
| outside of them, than to enter into it and try to participate in
| a quite alien system of existing IP law, which has a lot of
| presumptions and standards that, as you say, don't really match
| the world you work within.
| marcjschmidt wrote:
| > decided to trademark your project name
|
| I decided to protect the name because I liked it and wanted to
| build upon it in the future. Be it OSS, or further commercial
| offerings.
|
| I hoped to get also protection against corporations that just
| try to register the name or very similar ones and then decided
| to get me deleted or sue me for infringements.
|
| In EU it's first to file principle, which means whoever holds
| the mark, has the right. This means if I would not have
| registered it, the company could just register "Deepkit" or
| "Deepki" and sue me to death. Now that I lost the trademark
| (not totally final, I can appeal), I risk getting sued for
| having a too similar name - which is exactly what I tried to
| avoid by having a registered trademark.
|
| Did I make some mistakes with appealing and not collecting
| enough user data? Likely. Was it too naive from me? Yes. But I
| think reasonable and the whole idea behind trademarks is to
| protect projects like this. I could be wrong though, am not an
| expert.
| neom wrote:
| I'll never pass up the opportunity to remind that Ryan Dahl is
| still fighting the good fight against Oracle:
| https://x.com/rough__sea/status/1953335245412946327
|
| https://deno.com/blog?tag=freejavascript
| molszanski wrote:
| There is a related, interesting legal battle over JavaScript
| trademark.
|
| I think that it might be a good idea to flagpole an OSS
| trademark just in case some bozos come and spoil the fun
|
| https://deno.com/blog/deno-v-oracle3
| throwawaymaths wrote:
| trademark as far as i know is the only form of IP that is
| actually rivalrous. that is: use by you deprives me of of my
| use. for example. suppose i started an (independent) mcdonalds
| restaurant and used their livery and had trashy service and
| poor customer service and cleanliness, this would damage (real)
| McDonald's reputation
| will5421 wrote:
| I guess you've fallen foul of the rules to protect against
| trademark "squatting". They surely weren't designed with (non-
| commercial) OSS projects in mind.
| neilv wrote:
| Did you also lose the name in GitHub?
|
| Currently:
|
| https://github.com/deepkit => 404
|
| https://github.com/deepkit/deepkit-framework => 301 redirect to
| https://github.com/marcj/untitled-code
|
| https://deepkit.io/ => still up
| marcjschmidt wrote:
| No, I started to rename the repo and moved it to my personal
| account, out of frustration mainly. Not sure yet what the new
| name is going to be, or if I can keep the old one.
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