The trademarking of maker culture

Thoughts on “MakerspaceGate” and how communities could get organised to prevent the privatisation of everyday words [Updated 8/5/2017]

The maker community is getting increasingly familiar with attempts to trademark words used in their daily making practices. Recently a German company tried to claim the word “makerspace”, now a UK company has filed a similar application.

It started with the always vigilant Jo Hinchliffe spotting the trademark request by a storage company called Gratnells.

Then everything happened really quickly:

It took only a day from the original question…

… to the official statement dropping the trademark request.

In between Jo had contacted a bunch of us in the UK maker community to put pressure on Gratnells to get them to stand down. You can easily find on twitter the community reaction.

Extract from Gratnells’ statement. Source: http://www.gratnells.com/News/makerspaceupdate.aspx

24 hours is not the usual pace for trademarks to find a resolution. Legal action is costly and it can take years to get a trademark removed from the UK register.

In many ways we were lucky. For now.

Why these trademark requests are highly problematic

If successful a company could get solicitors to prevent or limit the use of their TM word.

Attempts like these participate to the culture of ever growing privatisation of public spaces and services and it is especially absurd to see that IP could be attached to words synonym of openness. As Cory Doctorow said: “Just because something has value doesn’t mean it has a price”.

This TM episode raised 3 problems that we should try to solve:

  1. Get notified in time of trademark requests
  2. Easy access to IP expertise to effectively oppose this
  3. Find a community response

Let’s try to tackle first the notification issue

Trademark alerts

Technically we were too late to spot the TM request to file observations with the Intellectual Property Office. Surely it should be easy to get notified of making-related trademark requests so we can launch the maker community bat-signal? No such luck…

There is an “Intellectual Property Office eAlerts” system. Sadly this service only notifies events related to a current trademark, not for new requests.

Source: https://www.ipo.gov.uk/tm-ealerts.htm

Let the IPO know this feature should be added to their service by contacting feedback@ipo.gov.uk or alternatively ask them to set up an RSS feed on the website. The EU IPO has a more advanced system but still refers to existing alerts as far as I can tell. For now we can botch a google-alert or similar but this needs a better solution.

The platform TMview is equally bad for setting up notifications but will offer an overview of trademarks in about 100 countries. A quick search of their database shows that in 2015 an advertising company in Mexico successfully trademarked the word Makerspace. A TM only enforceable there but it shows that it can happen…

Source: https://www.tmdn.org/tmview/get-detail?st13=MX501985011620788

Getting support from the IP crowd

If Gratnells had decided to pursue their application the next step would have been to look for legal advice. Our calls for IP expertise on Twitter got some replies. Here are some quick comments received by Carwyn Edwards by an IP lawyer regarding Gratnells’ request (happy to credit the lawyers if they want this public or to insert an updated response):

“There is info on the opposition process here. However, it looks like the two month period for commenting on the proposed application has passed. The TM hasn’t yet been published yet, so it may be worth contacting the IPO to find out what is happening. Have you contacted someone like ACID (acid.uk.com)? They might take a view on supporting an opposition, though I don’t know to what extent their membership includes the maker community. You could try and do an opposition yourself, but it might be better to consult a trade mark agent (though that entails costs), as they would be able to say whether there are potential grounds for opposition and then deal with the filing of that opposition.

ACID is a non profit with a mission to support designers against IP infringement. Though focusing on design it is worth investigating what level of support or advice they could provide.

Another option would be to contact CIMA, the Chartered Institute of Trade Mark Attorneys to find the right expert, which obviously requires a bit of funding.

Find a community response

The 2 ways to solve this collaboratively: 
- Get the community to TM Makerspace so we can protect it and license it
- Organise a response team for all maker-related words

Register the TM ourselves

We could pick an existing non profit company or set up a new one to crowdfund the amount needed for the application and renewal costs. If granted by the IPO the company would license the use of the word on a case by case basis. If we decide to go down this route I would recommend setting up a cross-community group to curate the licensing of the TM to gather a wide support and avoid any tensions.

We would need to select which classes of goods and services we’d like the term to be attached to. A a starting point we should aim for classes 41 and 42.

A case could be made to attempt to extend the application as wide as making can be (class 9: for computers, class 10: for music instruments etc.). It is worth noting that Gratnells carefully applied to classes outside the scope of usual making practices to focus on their range of services. Another question remains: Should we apply for the UK? For the whole EU?

Organised vigilance

“Makerspace” is just one word. What about all its variants and maker-related words that could be trademarked? Rather than registering trademarks to defend them a better solution should be to get organised to fight back against trademark applications. We should keep an eye on all maker terms, which is why we need this TM requests notification system to be put it place. Then with support of experts we can file an opposition to the IPO that can be used as disincentive for future requests.

Until next time

This was a MakerspaceGate express: solved in a day with a minimum of effort and £0 investment by the community. No doubt it will happen again, on a different word or in a different country. We need to be better prepared so we can address a trademark request in time, bring in expert support to clearly make our case and get the community together to campaign against it.

Overall Gratnells received firm but polite comments throughout this short campaign. That said if you think some of us reacted too harshly, wait to see what happens if someone tries to trademark the word “hackerspace”…

Update: Gratnells also made a request for the word “Fablab”

After a short social media campaign Gratnells agreed to withdraw their trademark applications:

It should take time for the application to be officially withdrawn but by a strange coincidence the EU Intellectual Property Office decided to grant them the trademarks.

Screenshot of the registered trademark for Makerspace (source: https://euipo.europa.eu)

I can only guess that the IPO decided the classes for which Gratnells applied were different enough from usual making practices to grant them the right to own them. The most shocking aspect of this legal episode is to see how easy it is to privatise the use of words that are now very common to us all in the maker community.