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UnternehmerTUM MakerSpace GmbH versus Makercommunity [UPDATE 5]

shameontu

On April, 30. I received the following tweet:

Hey @TU_Muenchen, why is your start-up center trying to register “Maker Space” as trademark?

originally by Peter:

Oh, oh, startup-center, shame on TU!

So I better go and check my mailbox, and BAM, apocalypse, war of the worlds, GAU. If you are capable of imagining the repugnancy of mailinglists with ettiquettes as well as the repugnancy of trademark and patent law with makercommunities, then you maybe can imagine, what happens, if you ignite all four of them in one tweet. And everything just because of this trademark application file. It’s not true with the ettiquettes, everything’s fine on our lists.

As a matter of fact the UnternehmerTUM MakerSpace GmbH from Garching ist trying to register the word makerspace, literally “Maker Space” as their very own trademark. That makes us wonder: Who are they? Are they makers? Are they trolls? And just because somebody owns a flower shop in Garching, must or can this person than register the trademark “flower shop”? And is the metaphor with the flower shop appropriate? And much more.

So first, the company, which has been founded (or at least filed in the trade register) on 1st of December 2014, does indeed run one of the largest and best-equipped open workshops present in Germany, in other words: a makerspace.

If or not the CEO General Manager Phill Handy is a real-deal maker may be questioned, but yes, “they” are makers. And what about the flower shop metaphor? Trademark law nerds call this “generic term”, which are words and expressions that are usual in common parlance, necessary for general communication and which therefore qualify for a public need to remain available for general use. In short: Words, that cannot be registered as a trademark (exceptions reserved). So is the term “makerspace” an expression usual in common parlance that we have to make sure remains available for general use?

The free cosmopolitain says: Yes, it is. Sorry gals, this point goes to the makers and makerettes.

Yesterday evening I sent a short message to the Hackaday Tip Line, and yes, those guys are fast. Brian Benchhoff writes:

While this could go badly for any ~space in Germany with a ‘maker’ prefix, trademarking ‘makerspace’ isn’t really that much different from calling it a TechShop, and the trademark application is probably just a product of lawyers.

Source: Hackaday.com

Which is true, of course, TechShop is brand and term, simultaneously. But the following graph also shows, in comparison to the above one, that here from the beginning efforts have been taken to establish the brand TechShop and still is been taken, while the expression makerspace developed slowly out of the center of a community. Therefore the case of the “makerspace” trademarking is much more like jumping on the bandwagon at full speed than taking honest and hard marketing and branding work. The UnternehmerTUM GmbH contributed nothing to coin the term “makerspace” to the expression it became today.

No matter if we want to agree with Brian on that one, we have to watch out here, because we’re actually in Germany, more accurately Garching, an Garching lies in Bavaria, which then again merely is a part of Germany on the paper. We have to think regional.

Oh! Ah! That sheds a different light on the situation. First I notice, how I still belong to a minority here, and second, the impact of the UnternehmerTUM GmbH on the search interest becomes a little bit more plausible, this point goes to UnternehmerTUM. It seems like the expression is only intensely used by workshop floor inhabitants, who rarely put a foot out of the smart home to communicate with people outside of mailinglists. People, who google for SMD part numbers instead of the word “makerspace”.

By the way, from this also can be concluded, that local makerspaces are mabe taken too much for granted by their members, since their existens is at least from the outside perspective extremely unlikely. A little more gratitude please! 😉

Then again, the question, why somebody would want to use this term of the underworld for his, pardon, makerspace, as a trademark? By mistake, an accidental priming during the creational process of creating a neologism within some marketing agency? Or is Phill Handy just lacking any contact to the maker scene, and therefore does not know, that the term “makerspace” has been a well established, holy term among the maker community for years and therefore has of course to remain free? Possibly, but why then become CEO General Manager of a makerspace?

Hard to tell. Phill Handy connects to 912 contacts on xing, so he is extensively cross-linked and could maybe have picked up on the linguistic usage of the makers. Language barriers might not have been an issue, since Phill, in addition to his supposed mother tongue English, claims to speak German as well. An exchange might have taken place. The Xing-Brometer however shows miserable 0 % similarity between Phill and me.

I mentioned mailing lists? Yes, at least now, the contact has been established. Nils H. talked to Phill on the phone, who commented defusingly on the issue and refers to a yet to expect press release.

[..]Main point is – we have NO intentions of taking over or taking away any of the Maker Spaces Open Platform / Community attributes.]

Phill Handy per E-Mail an Nils

Nils sums up the conversation, in which Phill Handy’s statement is mainly, that the UnternemerTUM GmbH is mostly after a trademark on the company logo. In fact, there has only been filed an application on the word. For the graphical preparation, a word/image trademark application would have been necessary, which has not been filed to date. A flimsy excuse in attempt of consiliation? First steps in matters of damage control?

[UPDATE 1] Official statement by Phill Handy

In the meantime, Phill Handy released his official statement on the issue in the comments underneath the Hackaday Article:

phillhandy_hackaday_statement
Source: http://hackaday.com/2015/05/05/trademarking-makerspace/

Which re-translates to:

Hello Hackaday’ers

the newly founded UnternehmerTUM MakerSpace GmbH will from the 1st of June operate the MakerSpace in the new Entrepreneurship Center on the Research Campus in Garching. MakerSpace is a publicly accessible, about 1.500 sqm large high tech workshop, offering startups, engineers, architects, designers, makers and tinkerers access to machines, tools and software. By the name MakerSpace we express our concern of becoming a center of attraction for a vivid community of makers from the most diverse areas. We also decided to, to file MakerSpace as a trademark, to be safe in using the name unlimitedly for communication.

But we do not have any interest at all in disputing or banning other workshops’ names. Quite the contrary – together with makers and other MakerSpaces and maker fairs we want to strengthen the maker community in Germany!

The MakerSpace starts its operation on the 1st of June – all makers and interested parties are very welcome to visit us and get informed.

Greetings from Garching,
Phill Handy

Translated version of: http://hackaday.com/2015/05/05/trademarking-makerspace/

To be honest, that does not sound bad at all. The UnternehmerTUM Makerspace GmbH states to have no interest in claiming or banning other makerspaces’ names. Sounds almost like a concession, but also a concession with limits:

  1. The UnternehmerTUM MakerSpace GmbH indeed plans to use the term “unlimited for communication” (translated quote from the statement).
  2. That also means, that it will probably also claim the transfer of the domain makerspace.de from its current owner, which therefore may not redirect to the Attraktor e.V. Hamburg makerspace’s website anymore.
  3. Other domains may also be affected, i.e. makerspace-muenchen.de
  4. There is no clear indication, that the company will never have different interests in the future. May it be a change of mind in the person in responsible about trademark enfocement, or may it be the acquisition by another company, wich then will control those trademark rights.

On the other hand, the UnternehmerTUM Makerspace GmbH is also a university-related project with the noble goal of supporting education and startup-businesses, and therefore, it all could’ve went worse for the maker scene in Germany. A lesson in brand management learned, a domain lost, sounds like we came away quite lightly.

Well, I don’t know what to think, but if you ask me, I would prefer if all the makerspaces I know could just continue calling themselves XYcity-Makerspace e.V. or Foobar e.V. Makerspace ABCcity and keep their well established domains, without getting into trouble with a company. Especially not a company, that robbs terms from the common parlance – on purpose or grossly negligent – that have grown in many years of community work. A company, that potentially enforces its trademark rights more aggressively, than we might find comfortable, i.e. when claiming domains, that have been used for years.

[UPDATE 2] So what should we do?

Because of this, and because of the uncertinity of the effects that a successful registration of the trademark makerspace could have on the german maker ecosystem, no matter which player holds the trademark, the consens – at least in our makerspace in Hamburg – seems to be clear: Somebody has to do something. The density of real trademark law experts also seems to be relatively low among makers, which probably leaves us no other option than getting into the materia on our own. Luckily, the DPMA offers a lot of information, and if somebody knows what the procedures are, then it*s probably the DPMA.

What we learn from this informative overview, is that the DPMA will check a trademark application for absolute, but not for relative grounds for refusal. This is good, because in our case, that means, that they will not verify, if the trademark collides with a previously filed trademark (hint: they don’t), but it will be very well verified, if the trademark i.e. lacks distinctiveness or contains descriptive terms that have to remain free. By the way, the DPMA also informs the applicant, that his creativity is needed.

Beyond sitting and waiting, the DPMA offers three official procedures for the proactive approach of proceeding against the trademark filing of a competitor, for which the forms can be downloaded here.

  1. Opposition to the filing of a trademark
  2. Request for deletion of a trademark because of expiration
  3. Request for deletion of a trademark due to absolute grounds for refusal

Whereas option 2 in above list does not matter for us, because it’s about deletion due to the owner not using the trademark. Two remaining

Opposition to the filing of a trademark: This possibility is reserved for players, who own rights on a previously filed trademark, which interferes with the trademark to newly file. But since nobody has been clever enough, to file the trademark “makerspace” previously, this is probably not the right way for us. If still somebody owns such a trademark, this person could file such an opposition for a 120 € fee.

Request for deletion of a trademark due to absolute grounds for refusal: In general, everybody can make such a request for deletion of a tradmark. If you’re not the owner of the trademark to delete, you of course have to give a proper reason for that, which must be a so called absolute ground for refusal. The DPMA mentions some examples for such grounds:

  • lacking distinctiveness
  • trademark contains descriptive terms that have to remain free for general use
  • obvious risk of deception
  • trademark contains national emblems
  • violation of public policy or principles of morality

Quelle: http://dpma.de/marke/markenschutz/index.html

By the way, the fee for such a request of deletion is 300 €. It is not clear, if such a request for deletion can be effective, if the trademark in question is still under examination and therefore not yet filed. My guess would be, that such a request only makes sense, after the examination through the DPMA has been completed.

Now, I already mentioned, that the DPMA will check the trademark for exactly those absolute grounds for refusal during the processing of the trademark application, and therefore will refuse the application if those are given. That means, that within the processing of the trademark application of the UnternehmerTUM MakerSpace GmbH a person responsible at the DPMA will research the term makerspace, and then take notice, that this term does not yield any distinctiveness against other makerspaces, is common enough to qualify for the need to remain free (and besides that, is not a very creative choice at anyway). The application will then be refused and the term would for now be free for everybody.

To sum all that up, at the moment there’s not much we can proactively do on the formal way, but there’s still the informal way. Therefore, it can’t hurt if post mail arrives at the DPMA from as many directions as possible, this could indeed positively influence the meticulousness with wich the examination takes place. For now, we have to wait and see, how the results of the DPMA examination turn out. Time will tell.

[Update 3] Talking to Phil

I had the opportunity to have a short talk with Phil on the phone. While Phil seems to be an objective and likeable pal, with whom in such a discussion results might be achieved, but besides the promises from the press release, this talk was surprisingly fruitless. Maybe it’s just that he’s understandably weary of having damage-control-conversations with bloggers. Also, restrictions about the disclosure of the content of the conversation have been set, but anyway, any content was nothing really new, and I believe, until the DMPA speaks a word in this case, this rock will not move at all.

Watch out!

Even if the outcome of this issue is still uncertain, one thing is probably sure: This dispute is not the first and not the last fight between a community, generating terms and values out of its own needs, and a company, taking those from the silver plate of a zero item DPMA-research result. Maybe the awareness over the own public presence and the values of the community has to grow to avoid such predictable conflicts in the future. Even if that only means double checking about what terms are used in the assembly’s name or claim, and if they are or should be protected.

[UPDATE 4] UnternehmerTUM applies for word/image mark after word mark still not through, I’ve been there

After the word mark still has not been approved after 3 months, the UnternehmerTUM MakerSpace GmbH now has applied for a word/image mark, which is basically this logo:

Bildschirmfoto 2015-08-24 um 22.49.44
Source: https://register.dpma.de/DPMAregister/marke/register/3020151047876/DE

 

Also, I’ve actually visited the site and was welcomed and showed arround by the friendly staff, which is still busy setting up everything, since some of the announced workshops are still under construction. This “Makerspace” is probably the first makerspace I’ve ever visited that looks like it has been actually made instead of grown. It’s the textbook version of a prototyping workshop, nicely laid out in large seperated working areas for wood, metal, electronics, RP and lecture, each one equipped with the most complete suite of properly maintained and ready-to-use tools. There’s a waterjet, Nylon-SLS, Shopbots, a professional heavy duty CNC, I counted three Makerbots, and enough powerful state-of-the-art workstations to run a renderfarm. It’s a place full of equipments that waits to be flooded by creative makers to actually make something. Though, when I was there on a Saturday afternoon, it was completely empty except for the staff. The staff told me they actually have about 500-600 members by now, yet I saw none. It’s hard to foresee what’s going to be going on there in two or three years from now, there definitely has to be some community work done before and if it can become a self sustaining business.

[UPDATE 5] DPMA rejects application for word trademark “Maker Space”

Just checked, the trademark application for “Maker Space” by the UnternehmerTUM GmbH has recently been rejected by the DPMA, stating it lacks uniqueness and the term itself is generic and therefore may remain free to use. So, yes, at least in Germany your makerspace may continue to call itself “makerspace” without having to fear any trouble.

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