Reported trademark infringmenet with "JobTraQ".

From: Jeremy Andrews
To: VAUGHN THURMAN - SWIFT SYSTEMS INC
Cc: info@drupal.org, support@tag1consulting.com, 'Carl Casserly' , 'VAUGHN THURMAN - JobTraQ / Swift Software'
Subject: Re: [tag1-support] JobTraQ - Trademark Brand
Date: Thu, 21 May 2009 11:10:58 -0400
Message-id: <1242918652.4540.80.camel@wanderer>

Hello Vaughn,

I am the primary author of the Jobtrack open source ticketing/helpdesk
system to which you are referring. Being open source, 100% of the code
(historical and current) is freely available under the GPL since January
5th of 2009 from http://drupal.org/project/jobtrack. Jobtrack is not a
product nor a service offered by my consulting company, Tag1Consulting,
Inc., it is instead software that we have written internally for our own
needs and then have made freely available to the Drupal community.

I had not ever heard of your product, JobTraQ, prior to receiving your
email. I am not familiar with its purpose or functionality.

As the jobtrack software is 100% open source, I have posted your message
in our issue queue for all members of our community to review. I will
also post this reply in the same place. I would appreciate if we could
keep future communications in this public forum which you can do by
updating the issue at the following location:
http://drupal.org/node/469210

Please let me know what "low key and polite solution" you have in mind
so that we can discuss it as a community. I would like to come to a
satisfactory resolution for all involved.

Thanks,
-Jeremy

--
Jeremy Andrews
877-875-8824 x100
Tag1 Consulting, Inc.
http://tag1consulting.com/

From: VAUGHN THURMAN - JobTraQ / Swift Software
To: 'Jeremy Andrews' , 'VAUGHN THURMAN - SWIFT SYSTEMS INC'
Cc: info@drupal.org, support@tag1consulting.com, 'Carl Casserly'
Subject: RE: [tag1-support] JobTraQ - Trademark Brand
Date: Thu, 21 May 2009 12:31:18 -0400
Message-id: <003301c9da31$914af070$b3e0d150$@com>

Hi Jeremy,

Thanks for the quick and courteous reply. I figured it was something like what you described, and have no issues with your product except that the name is pronounced exactly the same as our trademark and the functional similarities of the product just add up to clear and serious brand confusion for our customers and prospects. We were told by the patent and trademark people that if a case of brand confusion is brought to our attention, we have to do everything in our power to enforce it or we can lose our rights. I am no lawyer, so I don’t know what the terms for all of that are, but assuming the issue is clear I am sure we can work this out quickly and easily.

To get right to the point, we need you to change the name of the open source project you are working on because it infringes on our trademark. That would solve the problem plainly and simply. I figure no need to beat around the bush. J

I am not sure if it was intentional, but I noticed you dropped my signature line from my initial email, which would certainly have made it much easier for folks to see the JobTraQ product we are discussing. Perhaps you could leave it in this time so they could see the link and the simple description of what our product does. I am sure that will help clarify the issue.

I tried to call you, but I guess you were not in, so I left you a voice mail. I’d be glad to discuss this with you further whenever you have a few moments. Figure let’s just talk for a few minutes and get a sense for each other – sounds like a couple of reasonable people with no axes to grind to me.

Again, thanks for the quick reply and the upbeat tone. I look forward to working this out with you quickly.

Thanks and best regards!

~Vaughn

PS. For what it‘s worth… I understand that you could name your chicken plant “Rolaids” and it would not be a trademark infringement for the heartburn medicine, because it would not cause brand confusion. It isn’t a very good name for a chicken plant, but that’s beside the point. However, if you name your medicinal product “Rolaids”, then viola, you have brand confusion. As such, I am sure you can see why the combination of your name and functions are the core of the issue. We are not so arrogant as to think that we should be the only people able to make software that tracks jobs that people do, just that we should be able to enjoy the benefit of our trademark that we had to work for years and spend many thousands of dollars to secure. I hope you agree and can helps us out here. Again, best regards, Vaughn Thurman…

---------------------------------------------------------------------------
Vaughn Thurman - VThurman@SwiftSoftware.com
President - Swift Software, Inc.
Software for the Human Enterprise
www.SwiftSoftware.com
Toll Free: 866-640-CODE
Local (MD): 301-668-CODE
Fax: 301-682-5837
--------------------------------------------------------------------------

JobTraQ®: Agile Task, Project and Program Management, with Enterprise Grade Workflow and Powerful Dashboard Metrics.

ACHIEVE OPERATIONAL EXCELLENCE TODAY!

http://www.JobTraQ.com

From: Jeremy Andrews
To: VAUGHN THURMAN - JobTraQ / Swift Software
Cc: 'VAUGHN THURMAN - SWIFT SYSTEMS INC' , support@tag1consulting.com, 'Carl Casserly'
Subject: RE: [tag1-support] JobTraQ - Trademark Brand
Date: Thu, 21 May 2009 13:05:37 -0400
Message-id: <1242925532.4540.159.camel@wanderer>

Hello Vaughn,

On Thu, 2009-05-21 at 12:31 -0400, VAUGHN THURMAN - JobTraQ / Swift
Software wrote:
> Thanks for the quick and courteous reply. I figured it was something
> like what you described, and have no issues with your product except
> that the name is pronounced exactly the same as our trademark and the
> functional similarities of the product just add up to clear and
> serious brand confusion for our customers and prospects. We were told
> by the patent and trademark people that if a case of brand confusion
> is brought to our attention, we have to do everything in our power to
> enforce it or we can lose our rights. I am no lawyer, so I don’t know
> what the terms for all of that are, but assuming the issue is clear I
> am sure we can work this out quickly and easily.

Understood.

> To get right to the point, we need you to change the name of the open
> source project you are working on because it infringes on our
> trademark. That would solve the problem plainly and simply. I figure
> no need to beat around the bush. J

What is the time frame for this? I need to do a little research to
confirm that I really need to take the time to change the name -- this
involves changing documentation, the name of the project, and much of
the code too, as the name is inherently embedded in every function in
the code, etc.

If I determine that a name change is necessary, I will need time to
select a new name. I would prefer to give the community time to select
a new name, and then would need time to perform the actual code changes,
setup a new project, update documentation, etc.

Also, if I do end up renaming the project, is it allowed to leave the
old project page as a placeholder to redirect previous jobtrack users to
the new project? ie, http://drupal.org/project/jobtrack would include a
brief text pointing to the new project.

> I am not sure if it was intentional, but I noticed you dropped my
> signature line from my initial email, which would certainly have made
> it much easier for folks to see the JobTraQ product we are discussing.
> Perhaps you could leave it in this time so they could see the link and
> the simple description of what our product does. I am sure that will
> help clarify the issue.

Certainly. It was not intentional, I just quickly cut and paste
everything. I will be more careful to include everything this time.

> I tried to call you, but I guess you were not in, so I left you a
> voice mail. I’d be glad to discuss this with you further whenever you
> have a few moments. Figure let’s just talk for a few minutes and get
> a sense for each other – sounds like a couple of reasonable people
> with no axes to grind to me.

I would prefer to let jobtrack users discuss this publically, in the
same way that the jobtrack code has been designed and developed. Can I
get back to you on June 1st with a final determination? If the name
change is determined necessary/preferable, we will move forward as
quickly as we can in the effort.

Cheers,
-Jeremy

--
Jeremy Andrews
877-875-8824 x100
Tag1 Consulting, Inc.
http://tag1consulting.com/

From: VAUGHN THURMAN - JobTraQ / Swift Software
To: 'Jeremy Andrews'
Cc: 'VAUGHN THURMAN - SWIFT SYSTEMS INC' , support@tag1consulting.com, 'Carl Casserly'
Subject: RE: [tag1-support] JobTraQ - Trademark Brand
Date: Thu, 21 May 2009 14:30:07 -0400
Message-id: <00ab01c9da42$2aa51b50$7fef51f0$@com>

Hi Jeremy,

Again, thanks for the quick turnaround on this - and the very reasonable approach.

I am told by one of my peers that if we can agree to an acceptable outcome within 14 days, then the time to achieve that outcome is up to us to agree upon. As such, I will be glad to work with you as amicably as you have with me.

It also makes sense to me that your community deserves input on this. It's no different than any corporate scenario (like when we have run into the same unintentional conflicts with another more traditional organizations) as they would need to run something like this by a board or corporate counsel or whatever. So to me it sounds like you are just asking for some time to "corporately consider" what to do, as a group of stakeholders, before committing to anything. Seems reasonable to me. So, in light of all that, and the excellent and positive communications so far, it sounds like the 1st of June would work out just fine. And, I know and can appreciate better than most how much work is required to rename software, so we'll work with you if you will work with us. We just need to know that we can get the core issue resolved.

The only remaining issue I see from your concerns or thoughts below is that of leaving the old project page up. That gets sticky, because that was the actual reported problem. I would say we care more about that than we do about internal method names and so forth. Perhaps we can agree to some transition period or something? I don't want to be unreasonable here, but I think we have to address the issue of "confusing signage or brands". This is like leaving a Rolaids sign on the medicine shelf saying "if you were looking for the other Rolaids go to aisle 17". That doesn't really solve the problem of someone getting confused about our trademark. Let's leave that to be a discussion point for later as it doesn't make sense to put ahead of the core issue - in my humble opinion. I am sure we can work something fair out.

I look forward to hearing back from you.

Thanks and best regards,
~Vaughn

While it is quite likely that this trademark would prove unenforceable in court, we have decided that it is not worth the price. This project is being renamed to "support". An upgrade path will be provided in the new project once the first release has been issued.