Coexistence Agreement In Place
SparkFun and SPARC International agree to play together; do not throw sand.
After receiving our first Cease and Desist letter 5 months ago, SparkFun Electronics and SPARC International signed a coexistence agreement on Friday April 2nd:
"We are pleased to report that SparkFun and SPARC Inernational, Inc. have reached an agreement concerning use and registration of the SparkFun mark."
What does this mean?
Our trademark application for SparkFun includes a long list of types of products, from acceleration sensors all the way through the alphabet to voltage regulators. Turns out SPARC was concerned that if we registered a trademark for some of the product types we listed, SPARC's own trademarks could be weakened. Apparently this kind of issue is pretty common in the trademark arena. So we are editing our trademark application and taking off the terms that SPARC wants to protect.
We also agree to never register a domain or trademark with the word 'SPARC'. So long sparctshirts.com.
In return, SPARC will refrain from opposing our trademark application - serial # 77653601 (the USPTO is over here, I just can't link to our trademark application page directly).
In general, we have defined the different markets that we and SPARC are in, and we simply cannot apply for or expect protection of our trademark in each other's market. SparkFun can still sell a breakout board on Insight.com, next to a SPARC server, but we can't get mad at SPARC (or vice versa) for selling 'computer goods' (a term removed from our trademark application). We agree to coexist.
How did it all shake out?
After our original post, we began talks with SPARC International, directly, without attorneys! They were understanding and reasonable to work with. Because SPARC is a non-profit membership organization, any changes had to go through a series of the members' attorneys to get anything approved. After a tremendous amount of back and forth, we are very pleased to be signed off and still rocking from SparkFun.com.
Can I read the agreement?
Either because of our first post or because attorneys just prefer confidentiality, we are not able to post the actual document. Part of our agreement with SPARC International was confidentiality, but I'd be happy to answer questions where possible in the comments below.
Clear as mud?
Notice how I didn't want to post this too close to April 1st? It would have just complicated things.
How much did this whole thing cost?
It was many hours of discussions and phone calls, along with countless emails. Our attorneys have billed us for ~50 hours so you can do the math. We are very lucky that this did not cost us more. But more than anything, what we learned about our community and the support we received far outweighs any money we had to spend.
Thank you SparkFun users. With your help, we added a 'Cease and Desist' badge to our boy scout sash and lived to see another day.
I've never even heard of Sparc and wouldn't buy from a company that can't spell, or comprehend the difference between a 'k' and a 'c'. I'm glad things worked out for you guys.
SPARC is an acronym.
Scalable Processor ARChitecture.
There's a reason people have been writing SPARC, not sparc or Sparc.
Huh. I find this remarkable because SPARC had faded from the front of my memory. I recall using a under powered Sparc IPC in grad school (while my advisor's new SPARC Ultra sat idle in his office) some 14 years ago. Once in industry, my employer seems to enjoy buying HP machines. SparkFun is more more present and substantial in my mind since I caught the Arduiono bug.
Still... ~50hrs @ attorney bill rate of $300 per/hr equals $15,000. OUCH!
This is great news indeed.
Now, could we concentrate on improving the SPI Shortcut?
With a little tweaking, this little gem just might go down in history as the next-best thing to sliced bread!
Thanks!
n4qa
Thanks for the clarification.
The fun part about trademark law: If you don't try to enforce them, you can never enforce them. Say that SparkFun went on to larger things, such as computer hardware. If SPARC did not try to defend its trademark now, it would not be able to defend it in the future.
I don't blame SPARC as much now as I did. I would blame the Trademark system.
I am going to speculate about the reason for the insanity.
It was said in the original article about the Cease & Desist letter that Sun were in the process of applying for trademark for "SPARC". My understanding is that to retain a trademark, you have to demonstrate that you are continually defending it. This looks like Sun demonstrating that it is defending its trademark. And as with Java, Sun feels it is sensible to attack any company with a name that has is derived from the same English word that its trademark is derived from.
By the way:
google hits for "sparc": 6,490,000
google hits for "sparkfun": 249,000
google hits for "spark": 45,100,000
In my opinion it sounds like SPARC has used more money on lawyers than they're going to make out of this "treaty". I just can't see the prospect of Sparkfun selling computers. It wouldn't be very Spark"fun" anymore. Really, SFE will sell computers the day microcontrollers can dance like Ellen.
I'm glad to see that the folks at SPARC were willing to talk with you guys like humans - and agreed to leave you to your devices. I always get angry when big groups muscle little groups around! Glad to see this is ending on suitable terms! Congrats!
Oh yeah - and it would have been a pain changing my homepage on all of my computers to go to a new URL - so, hooray for that too!
Great news! Keep up the great work!
Glad that's over. Now get back to designing.
I find Spark International's use of lawyers petty and pathetic.
Are there any penalties if you choose to withdraw from this agreement other than having to pay more lawyers for their time?
Well, since SPARC already have a trademark in various computer areas, and have been around for many, many years, they have priority, and you'd have to be pretty dim to go up against that in court.
SPARC and SPARK sound very much the same to my ear, so it would be close enough for the court and lawyers.
At the end of the day, Sparkfun could throw a few million at the lawyers, but then who would win? Only the lawyers, regardless of outcome.
Nate: I am not a lawyer, but I believe it means that we can still sell stuff (like a mini computer kit) in the computer hardware arena. But if we try to trademark 'SparkFun Computers'(TM), then we break the coexistence agreement and SPARC has the right to send lawyers after us. The whole idea is pretty far out there in the universe of possibilities, but SPARC is being (and arguably must be) proactive in protecting their trademark.
Pretty far out there, like Apple Computers selling music :)
Yeah. And also remember Apples dispute with the Beatles music production company of the same name. If I recall correctly they agreed not to enter the music business ^^
What does this mean for you legally in regards to selling products like the BeagleBoard?
I had never heard of SPARC International, lol
No, don't.
SPARC did what was required of them BY LAW! They behaved very nicely, and they didn't sue or cost Sparkfun millions of dollars, when they could have, without even trying.
You should be saying nice things about SPARC and Sparkfun, as both have come out of this happy. And you should be too.
SPARC still deserves bad press from this. What a waste of time and money.
Glad to hear you all made it out alright without too much pain Nate! You'll always have my electro-widget dollars. : )
No, US law deserves bad press for this.
They're doing what's required of them in order to protect their trademark. If you don't protect it, you lose it and a lot of bad spark happens to your company.
If they were a small organization, there might have been a personal "hey, we have a problem" touch to a it. But this is the equivalent when your personal touch goes through a lawyer (particularly a US lawyer).
So basically you gave up the right to sell computer goods. In other words, if people put together a computer using multiple microcontroller parts which you sell, you have no right to put the Spark name on them even though you sell the components.
I am not a lawyer, but I believe it means that we can still sell stuff (like a mini computer kit) in the computer hardware arena. But if we try to trademark 'SparkFun Computers'(TM), then we break the coexistence agreement and SPARC has the right to send lawyers after us. The whole idea is pretty far out there in the universe of possibilities, but SPARC is being (and arguably must be) proactive in protecting their trademark.
Glad to hear that SPARC's real problem was sounding like lawyers. This puts them (SPARC, not lawyers) back on my good list. Which I like - the robot I want to build would be running sparc cores and spacewire.
Yeah, yeah... fluffy dreams, fluffy standards-compliant laser-wielding dreams... : )
Glad to hear the good news. Kudos to you guys for picking up the phone and engaging in reasonable dialog. So many times these things just blow up into epic legal battles, from which the lawyers are the only real beneficiaries. I�ve enjoyed your site immensely. I�ve checked in on it at least a few times a week for years now, if not for anything more than to see what�s new and see what cool tech stuff people are doing. I really believe you guys are on to something, empowering the masses with technology, and knowledge. It used to be that you had to have �connections� or work for a big company, or jump through several hoops to get your hands on certain chips, components etc. just to BEGIN to develop an idea. Even if you got that �hard to get� component, trying to use it was your next hurdle, where as the documentation was poor, if there was any at all! I figured it made sense that something this good was going to be squashed out as it�s really gaining momentum, but you have prevailed!
Glad this is behind you. Keep up the good work!
Goes to show that when you leave the lawyers out of business and engineering the world works a whole lot better.
Boy that was fascinating. I think I'll go watch paint dry now.
And they all lived happily ever after...
Well, that explains a lot of things.
I was on Insight.com before and couldn't find that Sparc Accelerometer breakout board I was looking for. Guess I mixed up the manufacturers - it was a SparkFun board.
(For the lawyers, that was a joke.)
Anyways, great news to hear. Glad both parties are happy.
Well Nate, you've concluded this in a far more gracious way then I probably would have had the patience for. I'm glad that, for once, the onerous U.S. legal system has not consumed another innovative business in the maze of I.P. law.
Time to get back to the FUN part, right?
You can only poke at the bee's hive for so long before it gets a bit tiring. It's certainly time to get back to the fun part. Too many things to build! Too little time.
Glad to hear it.
Glad it all worked out. I am guessing I am not the only one who sees the irony in one of the pioneers in open source and technology sharing being caught up in such a thing.
At least we know the lawyers won't go hungry this year, but like you said I guess it could have been much worse. At any rate it would not matter to me if you had to scrap your whole name and brand image and start from scratch- I would still follow your product offerings daily and recommend you every time the occasion arose.
Brand recognition can go a long way, but it is worth nothing without a quality product line, excellent service, and a company built on fair and ethical practices.
...and what was the name of the company that stirred all this up? Hmmm... I have forgotten already.
Rob
Excelent news Nate, Congratz.....
That's great news! What products were they concerned with?
SPARC was concerned mostly with protecting the SPARC trademark. They were not concerned about individual products.