The 'SL' trademark: All those opposed?

by Tateru Nino Sep 17th 2008 at 10:00AM

Filed under: News items, Second Life, Legal, Virtual worlds

On a bit of a tangent to the battle between SLART's Richard Minsky and Linden Lab over the SLART trademark (which we will be getting back to, as there have been interesting developments there), we're going to take a few minutes to look at a rather interesting development surrounding the 'SL' trademark.

As we wrote previously, the 'SL' trademark is not a registered trademark in the USA, and the registration process was started almost three months after Minsky commenced the process for his SLART trademark. Linden Lab's 'SL' trademark has now reached an interesting stage.

It has been published for opposition. Let's look at what that means ...

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Basically, as of Tuesday 16 September, there is a 30 day period for parties to file opposition notices to the trademark prior to the USPTO (the US Patent and Trademark office) deciding whether to grant or deny 'SL' as a registered trademark to Linden Lab.

"The mark of the application identified appears to be entitled to registration. The mark will, in accordance with Section 12(a) of the Trademark Act of 1946, as amended, be published in the Official Gazette on the date indicated above [16 Sept 2008] for the purpose of opposition by any person who believes he will be damaged by the registration of the mark. If no opposition is filed within the time specified by Section 13(a) of the Statute or by rules 2.101 or 2.102 of the Trademark Rules, the Commissioner of Patents and Trademarks may issue a notice of allowance pursuant to section 13(b) of the Statute." -- from the USPTO.

Parties who feel that the mark would be damaging, cause confusion or be otherwise invalid by, for example, being 'merely descriptive' rather than uniquely identifying the originator of goods and services; or by being somehow generic. Opposition based on descriptive use or genericity can be rather tricky, unless you've got a good case.

Damage -- that is costs or other difficulties -- that arise from allowing the registration of the mark are the most straightforward to demonstrate.

So, there are 30 days to either file a Notice of Opposition, or a Request to Extend Time to Oppose with the USPTO. We will be interested to see if anyone does -- there are a few parties who could do so.

Tags: legal, linden-lab, richard-minsky, second-life, trademark, trademarks, uspto, virtual-worlds

Reader Comments (Page 1 of 1)

Kate Amdahl said on 10:41AM 9-17-2008

Thank you for this article! I tried to comment on the SLART trademark yesterday and got my facts tangled, only sorting it out after some time on Google and looking up the trademark applications themselves...and by the end of that, I *still* wasn't clear what the status of the SL trademark was, even though they applied for it back in June of 2007.

Anyway, it's a very confusing topic and I'm glad you're contributing to making it clearer.

Ari Blackthorne said on 10:46AM 9-17-2008

I'm filing opposition.

I've made it clear to LL how I feel specifically about the "SL" initials being a "trade mark" or any kind of copyright. I begin to wonder if my rant actually caused LL to file for a trade mark, because checking logs, I see a LOT of hits from Linden Lab's network hitting the page:

http://commonsensible.net/2008/07/29/linden-lab-i-bite-my-thumb-at-thee/

THIS is a fight I will enjoy.

Ari Blackthorne said on 10:53AM 9-17-2008

LOL @ Kate!

Cool - well if they applied way back then, then I wonder what has taken so long for it to get this far. I've registered trade marks for companies before.

Things that make you go 'hmmm."

Beau said on 12:31PM 9-17-2008

I am not understanding all the details here, being that it bores me, but essentially let's just say someone gains the SL trademark, for the mark "SL".

What do they want then? Because LL would just stop that person from playing, from accessing the site, or from being connected to SL in any way.

I am not sure what's at stake here..or what anyone thinks they will accomplish. Hell, someone could sue WoW for any number of things, and possibly win. Then they are blocked from the virtual world, which does them no good.

Anyway, I'm sure I'm missing something, but it just seems funny.

Beau said on 12:54PM 9-17-2008

Ahh, seems they are talking about seeking damages because of SL's claimed mark?

Er sumthin'?

Oh well, LL will be come out just fine, still, it's interesting.

Timeless Prototype said on 1:51PM 9-17-2008

But what about these guys: http://www.sl.com/

Won't they get upset? :)

Tateru Nino said on 2:44PM 9-17-2008

That SL trademark is in a completely different domain, and there isn't any crossover.

Timeless Prototype said on 3:05PM 9-17-2008

Ah yes, thanks for reminding me. That's quite an important point.

Yo Brewster said on 2:39PM 9-17-2008

A while back I was contacted by LL's legal department (and Robin) to "help us" in our quest to find a new domain name for SLProfiles.com. 2 months later, we eventually changed our site to ProfileSLive.com which was approved by LL. The only part that offended me was the fact that they were somehow trying to project this as a "good thing".

I'm convinced legally LL could have never forced us to change our domain name (since THEY promoted our site in the past). So why was I so stupid to change our domain name? Simply put - I didn't want to take the risk of loosing my account within Second Life due to a TOS violation.

To be honest, I still like my old SLProfiles.com name better and if I feel LL isn't being serious about this trademark bullshit, we WILL switch back...

Yo Brewster said on 2:42PM 9-17-2008

SL.com told me that they were not in violating according to their trademark lawyers which was clearly all they cared about.

Gwyneth Llewelyn said on 8:03PM 9-18-2008

Just to add my two cents... if you register a trademark and don't enforce it (and that means telling people to abandon their names which might be in conflict of the trademark), you lose the right to your trademark.

The whole point of registering a trademark is showing willingness to defend something which is an asset of your business. If you're not willing to defend it, well, then there is no point in wasting any money in registration.

Thus, LL had no choice but to "make a point". And they did. Their blog posts, their conversations about this, their changes on the ToS, and the many many emails to a few dozens (perhaps hundreds) of sites, is more than "proof enough" to support LL's claim on the trademark. Granted, this does not mean that people are not allowed to fight back. What it means is that nobody can claim that LL wasn't making an effort to keep their trademark.

IP laws are pretty interesting (if you're willing to look at them as a kind of contest), but I think that what was most interesting is LL's stance. To the best of my knowledge, they didn't sue anyone to remove their allegedly trademark-infringing names. They just pushed a bit for people to voluntarily change them.

In return, they were sued because of the SLART drama :) That was quite ironical, IMHO...

Scott McMillin said on 12:17PM 9-20-2008

Link to the record on USPTO: http://bit.ly/40Thyx

Nothing much to add to what Gwyneth said above. And she's right that LL seems to have been sensitive to the community in requesting changes as opposed to the more standard practice of just have lawyers fire of a cease and desist.

For those who haven't filed a trademark, if you do a search on USPTO.gov you'll notice a couple pages of trademarks for "SL" -- as Tateru said, LL's registration is in 3 specific classes:

"Software that is used for providing multi-user access to an on-line 3D virtual environment; computer software used to create, manipulate and participate in 3D virtual environments"

"Communication services in the nature of text messaging and electronic mail services used in an online virtual environment"

"Computer services, namely, hosting an on-line 3D virtual environment featuring a wide variety of user-defined subject matter, and hosting an on-line 3D virtual environment featuring a wide variety of user-defined subject matter that may be accessed by means of communications networks; design and development of multimedia and three dimensional virtual environment software"