Trademark Wars: SPARC International Tells Small Electronics Website To Stop Existing

The whole David and Goliath trademark thing continues with two new players. Meet SPARC International, a self-described “extremely valuable asset” belonging to Sun Microsystems, and SparkFun Electronics, a website where you can buy things to make little robots and stuff.

SparkFun recently applied for a trademark for their logo. Part of the process includes a step where various entities can object. Enter SPARC International. It is important to note before moving on to SPARC’s demands that SparkFun is a website where you buy things.

From SparkFun’s blog:

SPARC Industries’ attorneys seem to think SPARC looks and sounds an awful lot like SparkFun. Tuesday morning we received a cease and desist letter from K&L Gates law firm. Amongst other things they demand that we “immediately take steps to transfer the sparkfun.com domain name to [SPARC International].” Right. Let me just find where I put that password…

Gee, we can’t imagine why they’d be reluctant to do that. If you’re interested in a full, blow-by-blow account of the letter, you can click here.

The short version is that SPARC is a type of server made by Sun Microsystems. SparkFun sells what appear to our uninterested eye to be the little circuit boards that are in like, birthday cards that play music. It would be pretty hard to confuse a tiny do-it-yourself Theramin with a SPARC product.

It’s our opinion that SPARC should be sending C&Ds to Stark Industries because, well, it would make about as much sense… they both seem sort of evil and they rhyme, which is really confusing for consumers.

SparkFun Gets a Cease and Desist Letter [SparkFun]

Comments

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  1. B1663R says:

    hey, lawyers need to eat too you know…

  2. Mr_Human says:

    The sad, final lashing out of a dying company.

    • PsiCop says:

      @Mr_Human: “Dying”? I’m not sure I’d say that. It’s being acquired by Oracle. It might actually survive being swallowed up by Larry Ellison’s empire. Then again, it might not.

      • Applekid ┬──┬ ノ( ã‚œ-゜ノ) says:

        @PsiCop: SPARC is a consortium of companies including Sun, Fujitsu, Motorola, Toshiba, and others.

        Still a scummy move by a consortium of companies including but not limited to Sun

  3. pecan 3.14159265 says:

    From what I hear, Stark Industries has pretty good buy 1 million/get one free deals.

  4. Xerloq says:

    But wait! Can any of those birthday cards be hacked to run Linux in a Beowulf cluster? If so, I can see the reason for the lawsuit.

    • Rachacha says:

      @Xerloq says Can I has Friday?: I hear that the next Pixar movie will be rendered on a SparkFin PICAXE Development Board ([www.sparkfun.com] )rather than Sparc servers. You see, the folks at Pixar were confused because a portion of the PICAXE product is phoenetically similar to Pixar, and the words both have similar letters.

      I think I am going to hire myself a lawyer as I have the same name as a famous Extreme sports racer, and I am older than he is, therefore I had my name before he did, and when I do a “Vanity search” for myself, he comes up and I keep thinking that I am him. That ought to be worth a couple million dollar settlement right?

  5. Eyebrows McGee (now with double the baby!) says:

    You had me at DIY theramin …

  6. PsiCop says:

    Seems to me the word “spark” should be common in the names of electronic products or companies.

    Ah, to be back in the early 90s, and with a Sun SPARCstation still on my desk. To think I actually liked that machine … !

    Does anyone need any more evidence that “intellectual property” attorneys are out of control? I’d say this example pretty much makes the case that they are.

    • RPHP says:

      @PsiCop: Under your argument SparkFun should not be allowed to register their mark because Spark is descriptive? That would be a better argument. The fact that a word may be used many times on certain equipment does not preclude it from being trademarkable unless it is strictly descriptive.

      I actually think Spark is in the middle of completely unique and descriptive. It brings to mind something to do with electronics but does not really describe what is going on. This is especially true when you put it together with another word like Fun.

      Further, one could argue secondary meaning if the trademark was turned down for this reason.

      I will note the USPTO did ask SparkFun to disclaim the exclusive right to the word electronics but did not find a need to ask for the same to be done for the word Spark.

      • Rachacha says:

        @RPHP: As is noted on the SparkFun blog, they do not refer to themselves as “Spark Fun” or “Spark”, but always “SparkFun” or “SparkFun Electronics”, therefore they would not need to disclaim exclusive right to “Spark” because they do not use that word to refer to themselves (just as “Vermonster” should not be impacted by a trademark on “Vermon” or “Monster” .

        • RPHP says:

          @Rachacha:
          The also refer to themselves as SparkFun Electronics and they still have to disclaim electronics. If it was ElectronicsFun they would still likely have to disclaim electronics. If it is purely descriptive then the term must be disclaimed.

          So for instance if consumerist referred to itself as Consumerist website – even if they did it all the time – they would have to disclaim “website” in their application (same would be true if you put ConsumeristWebsite together). Monster and Vermon are not descriptive so they do not need to disclaim them. If it was MonsterDrink – Drink would need to be disclaimed because no one could claim exclusive rights to to the word drink in the drink industry. It follows since Spark is not purely descriptive in this context it does not need to be disclaimed.

          I am not sure what your point is unless you confused my initial comment.

          I did not read SparkFun’s blog but based on their application and its various mistakes I assume they are not trademark lawyers so I would take anything they say with a grain of salt.

  7. Tim says:

    With all this talk about sparks …

    You got a leaky spark tube. So your car’s totaled. Uh. You should probably wanna get a refund on that.

  8. jackbishop says:

    IANAL, but I don’t see how this might possibly be valid. There are a number of considerations for a trademark challenge, but SPARC’s case seems to be weak on all points:

    * similarities in artistic representation: different typeface, different capitalization, different layout. No case there.

    * similarities of unique words: ‘SPARC’ is indeed a unique word. If it’d been ‘Sparcfun’, they’d have a case. But their unique mark is not being infringed on, except inasmuch as it resembles a common word, which gets to…

    * similarities of common words: AFAIK this is only defensible if the common word is one whose relationship to the market is sufficiently peripheral as to make it a unique name within that market. In the field of electronics, I very much doubt ‘spark’ meets this criterion.

    * market overlap: If SPARC had a compelling argument for similarity of the trademarks, I’d imagine the overlap between ‘workstations and servers’ and ‘hobbyist electronics’ might be stretched into a point, but given the weakness of their case on other grounds, this would be the straw that breaks the camel’s back.

    • RPHP says:

      @jackbishop: It looks like they are selling in the same class of products (at least as far as trademark law is concerned).

      Further, your similarities of common words confuses the analysis. Sparc International has a variety of trademarks registered using various words with Sparc and has therefore probably acquired secondary meaning for Sparc in the line of products it sells. Therefore, someone else using the same work (different spelling does not matter) in the same line of goods that it has multiple trademarks registered in does have a potential to confuse consumers.

  9. Coelacanth says:

    So now spark plugs might suddenly be confused with a socket in which to plug in a SPARC processor?

  10. JGKojak says:

    Someone needs to put a stop to this– its just harrassment– someone needs introduce a bill (Sen. Franken?) clarifying this issue so as to discourage these nuisance suits.

  11. RPHP says:

    This is very common in Trademark law – it probably happens 100 times a day. Does the consumerist report on this just because someone else wrote a story on it so it is easy to pick up?

    I understand the monster trademark stories because they at least seemed to be reaching. This, however, seems like regular trademark positioning.

  12. elizass says:

    Companies HAVE TO DO THIS or they risk losing their trademark. It doesn’t matter that there is minimal confusion or no relation in product lines. It is simple trademark law. Blame the law, not the company.

    • RPHP says:

      @elizass: This is also vastly different than when Consumerist posted other trademark articles. This is a company trying to register a similar word in the same category as that another company has that word already registered in. The company has to oppose it or else risk hurting or losing their mark.

      This is not the reach of Monster suing people in different categories who they happen to hear about. In this case SparkFun is actively trying to register a mark in the same category where Sparc International has various Sparc marks registered. Of course Sparc International was going to see this an oppose it.

    • Ferris152 says:

      @elizass: They don’t have to do this if there’s no actual possibility of confusion. It’s not failing to protect your mark if your mark is not threatened.

      • RPHP says:

        @Ferris152: There mark is threatened because someone else is trying to register a similar mark in the same category.

        Possibility of confusion by the way is a low bar. You just need a small percentage of relevant consumers in a survey to think SparkFun is associated with Sparc International. Remember the purpose of a trademark is a designation of source. If some people in the relevant population would think SparkFun is associated with Spac International there is confusion. Given that Spark International has many trademarks of Sparc+another word it is not inconceivable that many people would get confused thinking SparkFun was another noe of Sparc International’s marks.

    • Applekid ┬──┬ ノ( ã‚œ-゜ノ) says:

      @elizass: Not really. They could have sent an agreement to allow them use of the trademark so long as they don’t produce SPARC-based servers or equipment. Instead they waltzed in with “oh, hai, give us your domain” and legal asshattery.

      • RPHP says:

        @Applekid: Kind of, kind of not. It would not be wise to allow another to register a similar mark in your category. SparkFun could withdraw their application and then work out a licensing deal.

    • elizass says:

      @RPHP: No, its not different at all. Beer and energy drinks are both classified as International Class 32 – Light Beverage. The fact that beer has alchol is irrelevant. The alcohol content in beer and wine coolers is small, so it is classified as a light beverage. Hansen had to protect their trademark against Vermonster and did absolutely nothing wrong. The Consumerist wrongfully painted them as a pully, while Rock Art Brewery disgustingly profited off of Hansen’s goodwill. That is certainly one brewery I’m not supporting.

      I’m a trademark lawyer. Trademark law is touchy and requires a lot of proactive steps that to many seem like “bullying,” but are actually required by law. It would be nice if Consumerist writers were forced to take some basic Trademark law classes and realize why these law suits and C&D letters are necessary, not only to protect the company’s intellectual property assets, but to protect the public from consumer confusion. Even if a particular product does not confuse the consumer, action still must be taken because it still risks diluting the mark and its strength in being associated with a particular product line.

      • RPHP says:

        @elizass: Sorry I was not referring to that monster post. I completely agree with you on Vermonster and I think I may have even defended the C&D letter there. If I remember correctly there were other posts on consumerist about Monster cables where they were going after people who were not in their class which is the monster thing I was referring to above.

        I agree with you about the general idea that consumerist attacks people who protect their trademarks unnecessarily. I do not practice trademark law but just from a class I took in law school I am able to bust huge holes most of the time they are attacking trademark owners.

  13. vastrightwing says:

    Can anyone tell me where to buy some SPARC plugs for my Ford?

  14. Jeff-er-ee says:

    See? This is what happens when we remove small children from the diet of international trademark lawyers. What in the world were we thinking? A few small children sacrificed to keep trademark lawyers happy is a small price to pay to ensure that we can call a company by a name that in no way infringes on other companies’ trademarks.

    I tried warnings, but they fell on deaf ears!

  15. Nighthawke says:

    Sounds like the lawyers are attempting to drum up some work, considering they have been doing a lot of pro bono as of late.

  16. pop top says:

    Everyone needs to read the letter from SparkFun. It is a complete dismantling of SPARC’s argument, and it even has pictures! Based on that letter alone, I can’t see this case having any real merit.

  17. [DFX] Deimos says:

    My letter would read:

    Dear Sun Microsystems,

    Go fuck yourself.

    Regards,

    SparkFun

  18. vladthepaler says:

    Sounds like SPARC really ought to sue fire. It has sparks.

  19. duncanblackthorne says:

    From what I can tell, SPARC makes malware, not servers. Go look for yourself: Firefox and Google both warn you away from the site as being potentially harmful to your computer! So you see they have no basis for this action, since they obviously make malware and sparkfun sells electronics.

    Meh.

  20. coren says:

    I’d love them to try and sue Iron Man. That would be great to watch on Court TV. Their lawyers come in, then his lawyers come in, all in Iron Man suits..fucking awesome.

  21. AngryK9 says:

    Well then they’ll need to sue SPARC, the Scholarly Publishing and Acedemic Resources Coalition [www.arl.org]

    Or this website [www.sparcmurals.org]

    Or how about this one? [deltabravo.net]

    Or how about the School of Performing Arts in the Richmond Community [www.sparconline.org]

    Yeah. Nothing to do with electronics would be the argument, right? It’s frivilous, no matter how you look at it.

    Sad thing: They’ll win…because they have the high-priced lawyers.

  22. SpiderPaintingDollars says:

    OK, I know I just posted but I didn’t mention this: Anyone who purchases or is considering the purchase of, well, anything from SPARC is *NOT* going to confuse anything from or to do with SparkFun with SPARC, whatsoever. If this happens, they’re pretty incompetent. SPARC is not like Dell, you don’t just go buy something from the for your son’s birthday or when you’re computer shopping. (Just an example, I never buy from Dell. Or SPARC, or SparkFun for that matter.)

  23. Mr.Rick says:

    First, the trademarks are not going to be displayed side-by-side. Of course anybody can find differences between two trademarks when you analyze them specifically for that purpose, but that’s not how trademarks work in commerce. Rather, a consumer hears the one mark “SparkFun” or sees the SparkFun logo, and finds it confusingly similar to the mark he remembers for SPARC, and assumes there is a relation. So while SparkFun is correct to point out the differences when viewing them side by side, that is irrelevant, from a trademark infringement analysis.

    Second, although SparkFun may be used most popularly for greeting card microprocessors, which is admittedly a much tinier use than that of SPARC processors, but if you read the SparkFun U.S. trademark application (the list of goods for which SparkFun would have EXCLUSIVE RIGHT in the United States to use the trademark on), it includes circuit boards, data files for integrated circuit and semiconductor design, electronic integrated circuits, integrated circuit cards and components, large scale integrated circuits, microcontrollers, RAM cards, software programmable microprocessors, very large scale integration (VLSI) semiconductor integrated circuits, and dozens of other goods within the same class (computer electronics) as SPARCS bread and butter. So while the limited use with greeting cards, mentioned in this article, might have been fine, that is NOT the supposed breadth of use planned by this trademark owner.

    Third, SPARC is not solely associated with servers. SPARC itself is the trademark that identifies the microprocessor within these servers, and other Sun and Fujitsu products. So that pretty picture putting a SparkFun tiny circuit board next to a two ton server is misleading. The picture should have put a SparkFun VLSI (very large scale integrated) semiconductor integrated circuit next to a SPARC semiconductor, and seen how different they appear then. Oh, and remember, in infringement analysis, the products aren’t placed side by side, rather the question is whether a consumer of one might be confused into believing, without the other in the immediate viscinity to confirm, that it is from the same source or sponsor as the other.

    Finally, what would you have SPARC International do? Seriously. It has invested hundreds of thousands of dollars, if not more, over the past 20 years, to protect this mark. SPARC is a very valuable asset of the organization. SparkFun is just now starting out with this proposed mark. That is why it hasn’t even registered yet. Now is EXACTLY the time for SPARC to show up and say that this is not going to work, and for SparkFun to realize its mistake and choose another name. Anybody who believes a trademark owner with that level of investment should look the other way while a new company registers a list of goods heavily overlapping in its own space clearly is not giving sound business review.