Tim Lince

A bitter dispute involving a series of US trademarks between Groupon and the open-source GNOME Project, which came to an end this week, has highlighted the power of online campaigns to have a major impact on corporate trademark strategies. Following concerted grassroots action, which saw Groupon withdraw several applications pending at the USPTO for marks containing the term ‘gnome’, a GNOME Foundation board member has claimed that the deal-of-the-day giant had failed totally in its attempt to obtain gnome-related trademarks, and confirmed that the fundraising campaign established to oppose Groupon’s applications had raised in excess of $100,000 in just two days.

Groupon launched a retail point-of-sale software called Gnome earlier in the year having previously submitted a series of trademark applications to the USPTO relating to the name, including GNOME and GNOME BY GROUPON. This quickly caught the attention of the GNOME Foundation - a not-for-profit that supports the 17-year-old open-source desktop software GNOME and has notable backers including Google, IBM and Intel. Its counsel started dialogue with Groupon immediately about the potential infringement of the GNOME trademark the foundation had been granted in 2006.

Andrea Veri, a member of the GNOME Foundation’s board of directors, told World Trademark Review that he did not understand why Groupon would choose to name its software Gnome: “I can't and won't believe no-one at Groupon ever heard about GNOME, the most famous desktop environment around the free and open-source software (FOSS) plaza since 1997. The letter we received from Groupon's lawyer suggested that they didn't realise how close the products are, but we provided them with more information showing that these products and services actually overlap. From that point, more applications were filed and we realised that there wasn't going to be a cooperative resolution so we had to start fundraising for the oppositions.”

After months of planning, the GNOME Foundation launched the fundraising campaign this week to raise the $80,000 it had been told by counsel that it would cost to oppose 10 Groupon Gnome-related trademark applications. The related website was, to a certain extent, a call-to-arms about what the foundation perceived as a challenge to the concept of free open source software, with a section reading: “We want to show that our brand matters and that you care. Help us raise the funds to fight back and most of all call public attention to this terrible behaviour by Groupon. Help us make sure that when people hear about GNOME software they learn about freedom and not proprietary software.”

And the call-to-arms worked with dramatic effect. Within hours the page had gone viral on TwitterReddit and various technology news websites. Money was pouring in, with over $100,000 raised in just two days. Public pressure was also building on Groupon. On the same day that the donation website was launched, the company released a statement saying “we’re happy to continue conversations” to reach “a mutually satisfactory resolution”. But just four hours later, and after no let-up in the social media outcry, a second statement was released: “We're abandoning our pending trademark applications around ‘Gnome’ and will determine another name for the product going forward.”

Veri is predictably happy about the result of the campaign and thinks that Groupon will take a substantial PR hit: “They will have to do some hard work to gather credibility back from the FOSS community. Why did they decide to step back and change their name only after we made the whole thing public, and after the GNOME Foundation reported the controversial nature of their chosen mark to them way back in May 2014? The real motivation behind Groupon choosing the name GNOME for their product is unknown to me as even today. Whatever the reason was - well, it was a total failure.”

He explained that, even though it looked like a David versus Goliath fight on the surface, the monetary difference between the two meant little when compared to the power of a fired-up online community: “Many predicted this was going to be the end of the GNOME mark as we know it today; they said that money is always going to prevail; but they didn't take into account the FOSS community. We spent months planning our fundraising campaign in every single detail, with the pro-bono counselling of Pamela Chestek (Principal at Chestek Legal) proving invaluable. It's definitely a good strategy and the results are totally testifying that's the case.”

When contacted by World Trademark Review, Groupon sent us the statements it had previously made public but did not comment further (though it is worth noting that it has stuck to its word and abandoned the marks).

It is not known whether Groupon conducted a thorough trademark search before the submission of its applications and the launch of the product. If it did, the search was either inadequate or the results it turned up were ignored. It may be significant that the person in whose name the Groupon statements were released is Sri Viswanath, the company’s senior vice president of engineering and operations.

But whatever the internal decision-making process, it is clear that the episode has become a PR disaster for Groupon. This surely confirms something that all trademark professionals understand: searches are important and their results cannot be ignored. But the episode also highlights something else that must be understood by all in the trademark community:  it is foolish in the extreme to ever underestimate the power of a passionate online community; if you do, what may seem like a minor blip in your trademark strategy could turn into a formidable obstacle should you come up against a cleverly-orchestrated and very determined campaign. 

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RE: Groupon trademark back down shows power of a fired-up community

Hi Tim,

I'll be telling the story at GUADEC, the GNOME Conference, in Gotenburg, Sweden on August 9. More info here: https://2015.guadec.org/how-the-power-of-community-prevails-its-not-only-about-the-code/

Pam Chestek

Anonymous user, on 02 Aug 2015 @ 23:39

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