Ma.gnolia back for a week already being forced to change name

http://ma.gnolia.com/blog/2009/09/29/by-any-other-name

by abraham • 17 years ago

38 23 17 years ago

ma.gnolia.com

Lol, "within 5 days". Some people are so very unreasonable... nor does it massively sound like they know what they're talking about. 5 days appears to be a little too short imo, wouldn't most of these kind of things be measured by the week/month or is this just scare tactics.

Can I send a cease and desist that says minus 10 seconds? (meaning they've already failed to comply with it :D )

ajg19772• 17 years ago

Frankly I thought the tone of "hey, we need to ask you to stop" was a refreshing and reasonable change from the usual threats and bluster to be found in most C&D letters.

Whether they have a valid claim or not would be for a lawyer to decide, but if they do have a registered trademark for Magnolia that relates to computer/internet services they're in pretty good shape.

sdrinf• 17 years ago

Is this the case, where they're forced to send out C&Ds, or risk having their trademark lost? (such as happened with Google: http://209.85.135.132/search?q=cache:UCKy7KCtdhQJ:xooglers.b... )

blasdel2• 17 years ago

Big surprise: Ma.gnolia guy continues to be an idiot.

At least this time around he's blogging about the uninformed idiocy he's about to do before he does it...

caffeine• 17 years ago

Would you care to expand? You mean that changing Magnolia's name is idiotic? Or keeping it intact is?

I think he should be able to get away with renaming the site Ma.gnolia (with a dot).

ErrantX3• 17 years ago

I suspect he is referring to the fact that Magnolia lost all their data a little while back due to a poor backup policy (I forget the exact details).

blasdel2• 17 years ago

He demonstrated pretty clearly that he had no idea what he was doing when he lost all the data behind the site, and then revealed that he had set whole thing up to run on OS X (a sure sign of a dilettante, as someone who had to administer other people's boxes running Mac OS X Server for several years) and that his backup scheme naively synced the in-use database files.

Now he's decided to change the name based on a ridiculously weak letter that anyone who'd even bothered to look at the introduction to the Wikipedia article on Trademarks would have brushed off with laughter.

patio112• 17 years ago

The lawyers that I used to work with would advise merely putting the letter in a filing cabinet and taking no action on it ("Even if they have no case, having you flapping your lips in print just makes my job potentially more difficult later").

That said, I'd be inclined to write him something like this:

Dear CEO:

I received your letter regarding your belief that ma.gnolia.com is in violation of your trademark for "Magnolia" in the United States.

In the future, you may find that when sending a cease and desist letter, it is helpful to include pertinent details of your trademark registration such as reference numbers, a detailed sample of the registered mark, and what classification you are registered under. Your legal representation can explain the significance of these to you. Without them it is impossible for me to conclusively evaluate whether ma.gnolia could possibly infringe on your registered trademark.

As a matter of US law, your trademark is likely not to the word "Magnolia" in all senses, but probably scoped to its use in CMS software. As ma.gnolia does not sell CMS software, there is no possibility of market confusion with regards to the purchase of CMS software. We both have presences on the Internet, but frankly, trademark law is not a guarantee that you will be the only mention of the word Magnolia on the Internet.

You claim that "[ma.gnolia's] graphic appearance can be totally related to our CD". It is unclear to me that you are making a claim here based in trademark law. If you are, I would need a copy of your registered specimen to compare it to our logo to determine whether the claim is valid. That being said, a cursory inspection of the logo present on your website shows the word Magnolia. A cursory inspection of our logo shows the word Ma.gnolia with a giant flower on it. Your claim that these are confusingly similar is baseless as a matter of law.

Your lawyers are welcome to contact my lawyers if they have any other questions.

Cordially yours,

patio112• 17 years ago

Oh, I found their registration:

http://tess2.uspto.gov/bin/showfield?f=doc&state=4004:ri...

Their trademark is for [Magnolia] is scoped to "in the field of content management".

ErrantX3• 17 years ago

The search session expires :) But (for everyone else) if you run a search for Magnolia on that site it is the first (or second) one on the list.

I cant find the supposed Europe one.

pbhjpbhj• 17 years ago

The Nice classification ( http://en.wikipedia.org/wiki/International_(Nice)_Classifica... ) is not CMS but "classes 9,42" which encompasses computing and lots of other [sort of] related things.

In the UK at least any other use of a similar mark to your RTM in that classification is potentially infringing.

Whilst USA is a signatory to the Nice Classification I don't think that means anything beyond the requirement to use the Nice terms as classifiers, presumably finer classification can be used as the region of exclusivity.

Four EU and UK results from ipo.gov.uk in classes 9,24:

http://www.ipo.gov.uk/madridEU?madridEUnum=U00000909350 - Magnolia Int. Ltd.

http://www.ipo.gov.uk/domestic?domesticnum=2510591 - Magnolia Hi-Fi, Inc.

http://www.ipo.gov.uk/domestic?domesticnum=2422850 - Jayne Nation (Dr)

http://www.ipo.gov.uk/madridEU?madridEUnum=U00000898571 - Boehringer Ingelheim International GmbH

yuvouv2• 17 years ago

Trademark law generally requires them to defend their trademark or lose it. This means lots of letters from Apple inc's lawyers to small orchards in the middle of nowhere.

The general response is either to ignore it or send back a simple letter saying "thank you - we don't believe there is sufficent similarity"

If they mean it they will try an take you to court, then you can decide wether to fight or change your name. At the moment they probably don't expect you to do anything - this is just something they have to send out in case anyone ever does a direct copy of their software and calls themselves magnolia. In which case they have to prove they have always protested.

mbrubeck• 17 years ago

"Trademark law generally requires them to defend their trademark or lose it. This means lots of letters from Apple inc's lawyers to small orchards in the middle of nowhere."

No, it doesn't.

You don't automatically lose a mark through lack of enforcement. There are specific ways that marks may be weakened (genericization, tarnishment, dilution) depending on the action or inaction of the trademark holder, but someone defending an alleged infringement would still have to argue in court that one of these specific cases applied.

And in no case does it mean that Apple Inc. has any reason to contact fruit growers. (This should be obvious from the fact that Apple does not in fact send cease-and-desist letters to fruit growers.)

compay• 17 years ago

Perhaps a name change wouldn't be such a bad thing for him, to make a clean break with his previous site which died spectacularly with no backups.

callahad• 17 years ago

From what I recall, the old Ma.gnolia did have backups. They just weren't tested, and thus, it turned out that they weren't functional. It was a failure of method, rather than an outright failure to try.

wavesplash• 17 years ago

The Magnolia trademark hasn't been issued to Magnolia Systems yet. It's only been published for opposition. Which means if the gnolia.com crew have been using the mark in commerce before March, 2006, they can file an opposition claim.

The whole cease and desist letter is bogus until the trademark has been approved. However, if gnolia.com doesn't oppose the trademark claim now, before it's approved, then it's an uphill battle if the other company decides to sue.

Note Magnolia Systems is filing under multiple subsections - the only one you care about is the online commerce section. They can have all the others.

Ma.gnolia back for a week already being forced to change name

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