1. History of the Trademark
Prior to the development of Jabber instant messaging software by anyone (including Jeremie Miller, Webb Interactive Services, Inc., Jabber, Inc., or Cisco Systems, Inc.), a company named Oquirrh Technologies was using the trademark JABBER for its voice compression software (as of March 1996). When Jeremie Miller teamed up with Webb Interactive Systems (which later created a new subsidiary, Jabber, Inc.), Webb realized that potentially the IM software Jeremie had developed would not be able to be called JABBER, because such a use might infringe the trademark rights of the senior user, Oquirrh Technologies. Oquirrh also owned a federal registration for the mark JABBER (Reg. No. 2148182), which would prevent federal registration for the mark JABBER for IM software. Webb had Oquirrh assign its registration of the mark and its domain name (Jabber.com) to Webb, for which Webb paid Oquirrh. After it founded its Jabber, Inc. subsidiary, Webb assigned its rights to Jabber, Inc., which over tme paid several thousand dollars in attorney’s fees for advice related to the trademark and to file applications for federal and foreign registrations of the Mark for use in connection with IM software. When Cisco Systems, Inc. acquired Jabber, Inc. in late 2008, it thereby also acquired the JABBER mark.
2. Why Jabber, Inc. (through Webb) Purchased the Trademark
Jabber, Inc. had several reasons for purchasing the trademark:
First, it wanted to ensure that instant messaging software based on the Jabber protocols could legitimately use the JABBER name and not infringe on existing intellectual property claims.
Second, Jabber, Inc. wanted to make sure that anyone selling or giving away Jabber software is actually using the Jabber open source code, Jabber commercial software, or the Jabber protocols, rather than providing products or services unrelated to the Jabber protocols, but calling it “Jabber” in order to sell or distribute more copies (this is called “Passing off”). Everyone in the Jabber Community should share this goal, in order for the term JABBER to maintain its distinctive meaning. If there were no trademark right owned by anyone, Microsoft, for example, could develop a completely unrelated IM or non-IM product and call it JABBER.
Finally, at the time of purchasing the trademark, Jabber, Inc. wanted to ensure that it would be the only IM-related company called JABBER and that any other commercial or open-source entities using JABBER in their name did so in a manner that was deemed both good for the Jabber Community and not detrimental to Jabber, Inc.
3. What Does the Trademark Cover?
The Jabber trademark covers the use of the word “Jabber,” when applied to the general category of computer software, including its use in product names and company names. Trademark rights are associated with specific goods and services, so that DELTA is a trademark owned by Delta Airlines for air travel services and is also a trademark owned by Delta Faucets for plumbing fixtures. Similarly, even if Jabber, Inc. owns a JABBER trademark in the area of computer software, Toyota could name its new car model JABBER. The standard is whether consumers would be confused and think that the products came from the same source. Software is so different from cars, that it is unlikely that a consumer would conclude that Toyota made the software, and vice versa.
4. Governing Agreements
During 2002 and 2003, the XMPP Standards Foundation (XSF), then the Jabber Software Foundation, entered into agreements with Jabber, Inc. (the trademark holder) that authorize the XSF to sub-license use of the JABBER mark. These agreements are as follows:
- Letter of Intent (2002-12-16)
- Trademark License Agreement (2003-03-07)
- Trademark Enforcement Agreement (2003-05-02)
These governing agreements continue to be in force, with the responsibilities of Jabber, Inc. having been assumed by Cisco Systems, Inc. upon its acquisition of Jabber, Inc. in 2008.