smartadblock

From SmartAdBlock
Developer
Hey guys,
Eyeo gmbh (owners of adblock adblockplus) contacted us today for a copyright infringement claim! They want us to change our name and not use smartadblock.
We are thinking about changing to SmartAdblocker (adblocker is in the dictionary should be ok). What do you think? Is it a legit request?
 

Burrito

Level 20
Verified
Hey guys,
Eyeo gmbh (owners of adblock adblockplus) contacted us today for a copyright infringement claim! They want us to change our name and not use smartadblock.
We are thinking about changing to SmartAdblocker (adblocker is in the dictionary should be ok). What do you think? Is it a legit request?
You tell Eyeo to bite you. That seems ridiculous. "Adblock" is the descriptor. "Smart" (as a part of SmartAdblock) is the differentiator.

"Adblock" is a term in usage that probably can't be copyrighted.**

214290



**Not that I actually know the applicable law....
 

smartadblock

From SmartAdBlock
Developer
You tell Eyeo to bite you. That seems ridiculous. "Adblock" is the descriptor. "Smart" (as a part of SmartAdblock) is the differentiator.

"Adblock" is a term in usage that probably can't be copyrighted.**

View attachment 214290


**Not that I actually know the applicable law....
According to the email from their lawyers (redpoints.com) they own the trademarks ADBLOCK ADBLOCK_BROWSER ADBLOCK PLUS and ABP in a long list of countries including US.
 

redsworn

Level 3
Verified
You tell Eyeo to bite you. That seems ridiculous. "Adblock" is the descriptor. "Smart" (as a part of SmartAdblock) is the differentiator.

"Adblock" is a term in usage that probably can't be copyrighted.**

View attachment 214290


**Not that I actually know the applicable law....
Yeah, I agree that in most countries or states it can't be copyrighted. It falls into trademark category though. Which they do have it registered, well at least in US.

Edit: Dang @smartadblock beat me to it. Anyway I think it will be wise if you follow their demand. It's pointless to fight a battle you're not going to win. Just make sure you put additional info in your extension's description and/or changelog so your users won't be confused.
 
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oldschool

Level 36
Verified
You tell Eyeo to bite you. That seems ridiculous. "Adblock" is the descriptor. "Smart" (as a part of SmartAdblock) is the differentiator.

"Adblock" is a term in usage that probably can't be copyrighted.**

View attachment 214290


**Not that I actually know the applicable law....
I tend to agree generally that you should resist or adapt as needed. @smartadblock should seek legal counsel. SmartAdblocker keeps it close to your current name.
 
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Burrito

Level 20
Verified
According to the email from their lawyers (redpoints.com) they own the trademarks ADBLOCK ADBLOCK_BROWSER ADBLOCK PLUS and ABP in a long list of countries including US.
Wow.

And since they've made big bucks BY ALLOWING ADS, you probably don't want to tangle with them legally.

Even if not today, I think they'd eventually lose in court with the term "Adblock" assuming it continues to be a general descriptor of that type of product.

On the other hand...


Here's a list of terms that have been registered as trademarks and are actively enforced by their trademark owners.

  • Band-Aid. Trademark owner: Johnson & Johnson. ...
    • Bubble wrap. Trademark owner: Sealed Air Corporation. ...
    • Chapstick. Trademark owner: Wyeth Consumer Healthcare. ...
    • Dumpster. ...
    • Fiberglass. ...
    • Frisbee. ...
    • Google. ...
  • Hula hoop.
More items...
 
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smartadblock

From SmartAdBlock
Developer
Next they'll sue us for deformation or something lol

@smartadblock do you reside in a country where this copyright is valid?
I am in UK. the trademark does not seem to be valid here.

the email says:
Please be informed that EYEO owns the entire right, title and interest in and to the trademarks ADBLOCK, ADBLOCK BROWSER, ADBLOCK PLUS and ABP and Design used in connection with the provision of software and services for the screening and blocking of Internet banner, pop-up, video and other advertisements including, but not limited to, United States Trademark Registration No. 4574291; United States Trademark Registration No. 4680485; International Registration No. 1179436 under the Madrid Protocol designating China, India, South Korea, Mexico and the Russian Federation; Community Trademark Registration No. 009643453; Community Trademark Registration No. 011407251; China Trademark Registration No. 13327397; Mexico Trademark Registration No. 1455051; as well as an application for the trademark ADBLOCK in Brazil, and applications for the trademark ADBLOCK PLUS in Brazil, Canada, India and the United Arab Emirates (together, the “ADBLOCK® Marks”).
 

redsworn

Level 3
Verified
I am in UK. the trademark does not seem to be valid here.

the email says:
Please be informed that EYEO owns the entire right, title and interest in and to the trademarks ADBLOCK, ADBLOCK BROWSER, ADBLOCK PLUS and ABP and Design used in connection with the provision of software and services for the screening and blocking of Internet banner, pop-up, video and other advertisements including, but not limited to, United States Trademark Registration No. 4574291; United States Trademark Registration No. 4680485; International Registration No. 1179436 under the Madrid Protocol designating China, India, South Korea, Mexico and the Russian Federation; Community Trademark Registration No. 009643453; Community Trademark Registration No. 011407251; China Trademark Registration No. 13327397; Mexico Trademark Registration No. 1455051; as well as an application for the trademark ADBLOCK in Brazil, and applications for the trademark ADBLOCK PLUS in Brazil, Canada, India and the United Arab Emirates (together, the “ADBLOCK® Marks”).
Their trademarks is also registered in UK.

Search for a trade mark - Intellectual Property Office
Search for a trade mark - Intellectual Property Office

And considering that Eyeo GmbH is a Germany based company, it's safe to assume that they also registered it in most of European countries.
 

Burrito

Level 20
Verified
I am in UK. the trademark does not seem to be valid here.

the email says:
Please be informed that EYEO owns the entire right, title and interest in and to the trademarks ADBLOCK, ADBLOCK BROWSER, ADBLOCK PLUS and ABP and Design used in connection with the provision of software and services for the screening and blocking of Internet banner, pop-up, video and other advertisements including, ....as well as an application for the trademark ADBLOCK in Brazil...
Well.... @Nightwalker will put a stop to that. : )
 

smartadblock

From SmartAdBlock
Developer
I am almost sure that in Brazil Eyeo gmbh would lose in a legal dispute involving this trademark.
I'm actually surprised that USPTO registered this trademark in favor of Eyeo, just a case of burocrats being burocrats.
Apparently these guys had a similar experience
 

Nightwalker

Level 17
Verified
Content Creator
Apparently these guys had a similar experience
Sounds stupid to me, a fine example of patent trolling.

I noticed that Eyeo gmbh doesnt have the trademark in Brazil, they just submited an application, that by all means should be rejected.

Brazil law about patents and trademarks explicitly doesnt allow this kind of registration:

"LEI Nº 9.279, DE 14 DE MAIO DE 1996.
(...)
Art. 124. Não são registráveis como marca:

VI - sinal de caráter genérico, necessário, comum, vulgar ou simplesmente descritivo, quando tiver relação com o produto ou serviço a distinguir, ou aquele empregado comumente para designar uma característica do produto ou serviço, quanto à natureza, nacionalidade, peso, valor, qualidade e época de produção ou de prestação do serviço, salvo quando revestidos de suficiente forma distintiva; "
Google Tradutor
Art. 124. They are not registrable as a trademark:

VI - a generic, necessary, common, vulgar or simply descriptive sign, when it relates to the product or service to be distinguished, or that commonly used to designate a characteristic of the product or service, as to the nature, nationality, quality and time of production or service, except where they are sufficiently distinctive; "
 

Bill K

Level 3
You might be able to get by with a subtle change to "Smart Ad Blocker" without infringing upon their trademark on 'AdBlocker'.
 
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smartadblock

From SmartAdBlock
Developer
We think these guys are bluffing, they dont have the trademark Adblock. probably because they were unable to renew it at some point. We emailed back asking for proof of ownership of the trademark, until we see that proof we are keeping the name.

below the full email

Dear Sir / Madam,

We are contacting you on behalf of EYEO GMBH (hereinafter, “EYEO”) in our capacity as Lawyers that monitor and protect its Intellectual Property rights on the Internet.

As you may know EYEO is the developer of Adblock Plus and Adblock Browser, the actually most popular adblocking open source extension (www.adblockplus.org) used by over 60 Million users worldwide.
Please be informed that EYEO owns the entire right, title and interest in and to the trademarks ADBLOCK, ADBLOCK BROWSER, ADBLOCK PLUS and ABP and Design used in connection with the provision of software and services for the screening and blocking of Internet banner, pop-up, video and other advertisements including, but not limited to, United States Trademark Registration No. 4574291; United States Trademark Registration No. 4680485; International Registration No. 1179436 under the Madrid Protocol designating China, India, South Korea, Mexico and the Russian Federation; Community Trademark Registration No. 009643453; Community Trademark Registration No. 011407251; China Trademark Registration No. 13327397; Mexico Trademark Registration No. 1455051; as well as an application for the trademark ADBLOCK in Brazil, and applications for the trademark ADBLOCK PLUS in Brazil, Canada, India and the United Arab Emirates (together, the “ADBLOCK® Marks”).

Upon revision of the following App / Extension that you have developed, we have detected an unauthorized use of the ADBLOCK® Marks in the title, that results in a trademark infringement according to relevant applicable laws.
We summarize the data that we have documented:
App name: SmartAdblock
Developer: https://www.smartadblock.co.uk
URL: SmartAdblock
We are not against the competitive distribution of your App / Extension. You are free to produce the best software possible and distribute them to your users via any channel if you like. However, you should not name it “Adblock” or anything related as this is a term protected by EYEO’s trademarks. In fact, EYEO has continuously used theADBLOCK® Marks since January 2006 in the United States and throughout the world, and has invested and continues to invest heavily to develop and enhance the fame of the ADBLOCK® Marks. As a result of such long-term use, advertising and expenditures, EYEO has established considerable goodwill and distinctiveness in the ADBLOCK® Marks. All this, for the purpose of protecting its users from getting confused. For further details, please refer to EYEO’s statement on the matter here: Adblock Plus and (a little) more: Adblock Plus trademarks.
For the foregoing reasons, we kindly ask you, upon reception of this notice, to immediately:

- Rename your App / Extension in order to stop using the protected term “Adblock” in the title.
- Stop and refrain in the future from including words, symbols or other distinctive signs in your App / Extension that can mislead consumers to think that it is EYEO’s official Adblock Plus extension.
- Notify us of the fulfilment of the aforementioned claims and of your compromise not to reproduce these activities in the future.

Any future use of our Client’s exclusive rights is subject to the previous written request and clearance of all rights following our Client’s policies.

The described unlawful conducts and uses have not been authorized by our Client; we believe in good faith that all the information contained in this notice is accurate. This notice is made without prejudice of all relevant actions, rights and remedies available under relevant applicable laws.

Sincerely,
--
RED POINTS SOLUTIONS
Online Brand Protection Division
adblockplus-bp@redpoints.com
www.redpoints.com
 

oldschool

Level 36
Verified
We think these guys are bluffing, they dont have the trademark Adblock. probably because they were unable to renew it at some point. We emailed back asking for proof of ownership of the trademark, until we see that proof we are keeping the name.

below the full email

Dear Sir / Madam,

We are contacting you on behalf of EYEO GMBH (hereinafter, “EYEO”) in our capacity as Lawyers that monitor and protect its Intellectual Property rights on the Internet.

As you may know EYEO is the developer of Adblock Plus and Adblock Browser, the actually most popular adblocking open source extension (www.adblockplus.org) used by over 60 Million users worldwide.
Please be informed that EYEO owns the entire right, title and interest in and to the trademarks ADBLOCK, ADBLOCK BROWSER, ADBLOCK PLUS and ABP and Design used in connection with the provision of software and services for the screening and blocking of Internet banner, pop-up, video and other advertisements including, but not limited to, United States Trademark Registration No. 4574291; United States Trademark Registration No. 4680485; International Registration No. 1179436 under the Madrid Protocol designating China, India, South Korea, Mexico and the Russian Federation; Community Trademark Registration No. 009643453; Community Trademark Registration No. 011407251; China Trademark Registration No. 13327397; Mexico Trademark Registration No. 1455051; as well as an application for the trademark ADBLOCK in Brazil, and applications for the trademark ADBLOCK PLUS in Brazil, Canada, India and the United Arab Emirates (together, the “ADBLOCK® Marks”).

Upon revision of the following App / Extension that you have developed, we have detected an unauthorized use of the ADBLOCK® Marks in the title, that results in a trademark infringement according to relevant applicable laws.
We summarize the data that we have documented:
App name: SmartAdblock
Developer: https://www.smartadblock.co.uk
URL: SmartAdblock
We are not against the competitive distribution of your App / Extension. You are free to produce the best software possible and distribute them to your users via any channel if you like. However, you should not name it “Adblock” or anything related as this is a term protected by EYEO’s trademarks. In fact, EYEO has continuously used theADBLOCK® Marks since January 2006 in the United States and throughout the world, and has invested and continues to invest heavily to develop and enhance the fame of the ADBLOCK® Marks. As a result of such long-term use, advertising and expenditures, EYEO has established considerable goodwill and distinctiveness in the ADBLOCK® Marks. All this, for the purpose of protecting its users from getting confused. For further details, please refer to EYEO’s statement on the matter here: Adblock Plus and (a little) more: Adblock Plus trademarks.
For the foregoing reasons, we kindly ask you, upon reception of this notice, to immediately:

- Rename your App / Extension in order to stop using the protected term “Adblock” in the title.
- Stop and refrain in the future from including words, symbols or other distinctive signs in your App / Extension that can mislead consumers to think that it is EYEO’s official Adblock Plus extension.
- Notify us of the fulfilment of the aforementioned claims and of your compromise not to reproduce these activities in the future.

Any future use of our Client’s exclusive rights is subject to the previous written request and clearance of all rights following our Client’s policies.

The described unlawful conducts and uses have not been authorized by our Client; we believe in good faith that all the information contained in this notice is accurate. This notice is made without prejudice of all relevant actions, rights and remedies available under relevant applicable laws.

Sincerely,
--
RED POINTS SOLUTIONS
Online Brand Protection Division
adblockplus-bp@redpoints.com
www.redpoints.com
From: Red Points takes $12M to help brands beat fakes – TechCrunch

(My italics for emphasis)

"The startup offers a cloud-based SaaS solution for IP infringement detection and removal. The system scans for counterfeit products online on behalf of customers and automates the process of having any fake goods (and/or pirated content) removed."

This sounds like a cloud-based shakedown operation that has one or two attorneys on staff, one in customer service. The other one is head of the HR department. See here: About Us - Red Points Your notice is not even from a law firm. I'd suggest getting legal advice and ignoring these guys until you get more info or a letter from an actual law firm. Fight the power, brothers and sisters! (y)

Edited to show correct sources.
 
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Burrito

Level 20
Verified
Yeah, I noticed that their legal notice had a less-than-legal style of writing. Oldschool's analysis of their lack-0-legal-credentials seems right to me.

But... EYEO has been in some real court cases and has won some of them. And by one estimate, they have $19M in annual revenue. That's a lot of financial horsepower to fight.

I think it is a good idea to make them prove some things... and to make them use an actual law firm to address the issue and to respond to.

But but... as a back-up, a secondary name should be examined.

I think the very best name and better than AdBlock is "AdStop." SmartAdStop has a nice ring. Too bad I already trademarked it in 16 countries. But for a mere $10K, we got a deal. :p:ROFLMAO:


.
 

Windows_Security

Level 23
Verified
Trusted
Content Creator
Hi,

I help IT-startups with positioning, branding, (marketing) messaging and sales (I have worked in London City with the best, look up Landor Associates for example). Your proposal als was the first name that came to mind, because it is the closest to your current product name.

How ever . . . Smart Adblocker might be distinctive enough to circumvent IP-issues with it also has some lesser annotations. There are a lot of clones of (mostly) uBlockOrigin and Adblock(Plus) in the Chrome store. Most a superlative naming description to position themselves as the better alternative (to the original). Sadly most of them are just clones and some of them are malicious. Just have a look at this thread on this forum (link).

So this new name would solve a problem and might create another one (as we say in Dutch) puts you in the corner of the malicous-clones extensions (remember "I don't trust them" post of SumTingWong). So I give you something to consider:

When you go for a descriptive name, why not incorporate both functions: adblocker and popup-blocker or brainstorm on what benefits your extension is or what your product promise is?

Browse this thread and write down what advantages (DeepWeb "SmartAdBlock makes three extensions obsolete") and remarks (Oldschool " Needed to be included Smart to find your extension in the ChromeStore") forum members have posted. Try naming conventions from different angles.

214324
 
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Freki123

Level 6
Verified
Since they refer to very specific things like "United States Trademark Registration No. 4574291" I would try to find the document and see whats in it.
Lol first result for "United States Trademark Registration No. 4574291" was a reddit thread about that topic with some answers....