New Trademark Use Policy

19 comments

We have published a new trademark use policy that covers all aspects of using EllisLab trademarks in your endeavors, whether for commercial or non-commercial use. For simplicity, these guidelines are identical across the board for ExpressionEngine, CodeIgniter, MojoMotor, and all other text and logo marks owned and used by EllisLab.

Now instead of spending time investigating and answering each request individually, we are able to provide our community with a clear and open picture of the acceptable use of EllisLab’s trademarks. We hope you find the published guidelines to be liberal, simple to understand, and easy to follow.

Comments & Feedback

  1. While I understand protection of your brands and product names, I’m not sure I understand how or why you would protect common dictionary words such as “expression” in your “expressionforms.com” example. I understand being protective of defamation and/or dillution of your brands using those words, but are you now saying that you intend to claim ownership for any use of words such as “expression,” “engine,” “mojo,” “motor,” “code,” and “ignite”? What about other words used within your products, such as “add-ons”?

    Can you please clarify the list of words that you’re trying to protect?

    Picture of Jeremy Gimbel - Conflux Group

    Jeremy Gimbel - Conflux Group

  2. Good question Jeremy. No, not any use of the words, only uses that are intentionally trading on our marks. If it’s in an unrelated industry and unrelated to our products at all, then it obviously has no bearing. But these guidelines are intended for a reader who is making something related to our products.

    An add-on or tool for building forms in ExpressionEngine named ExpressionForms is not covered by these guidelines. Such a use is an example of trading directly with our marks, and would require a trademark licensing agreement to protect both us and you.

    Picture of Derek Jones

    Derek Jones

  3. jeremygimbel, you took the words right out of my mouth.

    Look, I’ve been a defender in general of EllisLab during this rough PR time, but it’s like you guys aren’t even trying sometimes. There’s already a lot of ill-will right now, why don’t you stop generating ill-will and start doing things that generate good will? While it’s important given the way the laws work in this day and age to have registered trademarks and the like for when situations really do call for you to defend your marks and name, getting all weird and defensive about it, and even going as far as to try to claim ownership of the individual words that make up the names of your product does not seem like a great thing to do in a community that is already not super happy with you guys.

    I dunno, I love EE, and I want to love EllisLab, but it seems like you guys are really making it hard.

    Picture of TJ Draper

    TJ Draper

  4. Thanks for the clarification. Mucho helpful.

    Picture of Jeremy Gimbel - Conflux Group

    Jeremy Gimbel - Conflux Group

  5. Can you please clarify the list of words that you’re trying to protect?

    Sorry, the list is here.

    Picture of Derek Jones

    Derek Jones

  6. Derek,

    How does #7 in the policy (“Do not use EllisLab’s trademarks in connection with disparaging EllisLab or its products or services.”) exist aside the protection of “freedom of speech” in the U.S. Constitution? (not being snarky; I’m genuinely interested)

    Thanks!

    Picture of Focus Lab Dev Team

    Focus Lab Dev Team

  7. @TJ - Please don’t misconstrue our motive. We want people to be able to use our marks for related products and services. These guidelines save people a lot of time, worry, and frustration to know that if they “stick to the script” that what they are doing is both legal and acceptable. It also doesn’t mean we aren’t willing to go beyond these guidelines, but these are uses that we can cover with a blanket.

    Picture of Derek Jones

    Derek Jones

  8. @Erik - Disparagement the legal term, i.e. it applies to false and misleading statements, typically made with the intention of swaying the public away from a product/service/company. Like slander and libel, it is not protected speech.

    e.g. Coke making a false claim about Pepsi in its advertising is not protected speech.

    Picture of Derek Jones

    Derek Jones

  9. Got it. Thanks!

    Picture of Focus Lab Dev Team

    Focus Lab Dev Team

  10. Saw these two points mentioned elsewhere:

    - Existing sites, add-ons, etc. that think these guidelines don’t cover their use are welcome to contact us, and grandfather consideration will certainly be given for tightly integrated names that have existed for a long time. No one should assume they have to jump and change their name without contacting us.

    - The trademark guidelines are not in reaction to any specific events. We’ve been tossing drafts around of global guidelines for well over three years. Annually we get anywhere from 50 to 150 requests for use of our name in some associated product, and dozens or hundreds more annually that use them without giving thought to it. We really just wanted to simplify as much as we could, as 90% of these uses are covered by using our marks properly and adding the disclaimers.

    Picture of Derek Jones

    Derek Jones

  11. Got some questions, relating to web content (not offline documentation)...

    2. Use the ® trademark registration symbol when you use EllisLab’s registered trademarks, which are identified below.

    - does this include multiple mentions on any page, eg a blog post may mention “ExpressionEngine” several times, should the registration symbol be added to each instance?

    4. Place a conspicuous legend at least once on webpages using EllisLab’s trademarks and on the title page of any documentation or sales literature bearing EllisLab’s trademarks.

    “at least once” indicates it could be required several times on one page, would this be acceptable in say a site footer so it’s avaiable on most [key] pages?

    5. Place a disclaimer conspicuously at least once on webpages using EllisLab’s trademarks and on the title page of any documentation or sales literature bearing EllisLab’s trademarks.

    “at least once” - again need some clarification about required and acceptable usage on any web site.

    If the phrase “_________ is an independent _________ and has not been authorized, sponsored, or otherwise approved by EllisLab, Inc.” is mandatory it doesn’t read well for prospective customers visiting a developers site?

    Picture of Rob (bluedreamer)

    Rob (bluedreamer)

  12. - does this include multiple mentions on any page, eg a blog post may mention “ExpressionEngine” several times, should the registration symbol be added to each instance?

    The first or typically most prominent is the only one necessary, and mimics our own usage.

    at least once

    I can’t picture a case where more than one would be necessary, but that verbiage is apparently the standard, so there must be one out there. I’d personally expect to see it only once on a given page.

    it doesn’t read well for prospective customers visiting a developers site?

    How so?

    Picture of Derek Jones

    Derek Jones

  13. Thanks Derek…

    Re: Doesn’t read well for prospective customers

    “John Doe is an independent developer and has not been authorized, sponsored, or otherwise approved by EllisLab, Inc.”

    I think the word “approved” is the biggie, and could put customers off. I appreciate that there are no longer any “official” links between EL and people who use your products (aka the expired Pro Network), and that you have to say something along those lines, I just think it sounds and appears a bit on the negative side.

    Imagine a potential client visiting a developers site, what they see is:

    “not been authorised by Ellislab” - are they allowed to use EL products?
    “not been sponsored by Ellislab” - ok that’s fine, it’s not advertising
    “[not] otherwise approved” - are they using the software illegally? Do they know what they are doing? Stating this, people could be under the assumption that developers have to be approved first - buyer beware!

    Perhaps it needs to be reworded to something less sacry?

    “John Doe is an independent developer and affiliated to EllisLab, Inc.”

    Picture of Rob (bluedreamer)

    Rob (bluedreamer)

  14. I don’t think anyone would draw the conclusion that the developer is doing something illegal. If they were, would they put trademark notices on their page? If you google the phrase has not been authorized, sponsored, or otherwise approved, you’ll see that this wording is not our devising, it is the common language for this type of legal disclaimer that protects both parties from any exposure resulting from the other’s activity.

    Picture of Derek Jones

    Derek Jones

  15. Fair enough Derek, it seems to be a US-centric term because I’d never seen it before, being in the UK. Googling it I did see some UK sites use the phrase but it seems to be always in relation to US companies/products (eg Apple).

    Happy now!

    Picture of Rob (bluedreamer)

    Rob (bluedreamer)

  16. Rob, there’s an example I think of how to take the hurt for individuals and honest businesses out of such language, on the bottom of this page: http://expressionengine.stackexchange.com/questions/5234/you-are-not-authorized-to-perform-this-action-with-low-search

    - there’s a copyright statement saying who the content does belong to, as it should be, first.
    - there’s an acknowledgement of what EllisLab-tm owns.
    - there’s a statement that _this_website_ (not this person, this business, this organization etc.) isn’t authorized and so forth by aforementioned EllisLab-tm.
    - all of this is in appropriate typography.
    - all of it fit to the new rules

    Picture of narration

    narration

  17. I think it’s great that you guys came out with an official Trademark Use Policy. No one likes to get their brand kicked around, and it’s understandable that you want to protect it (and also protected your registered trademarks so you can keep them). If nothing else, there is something official to link to that discourages people from spelling ExpressionEngine as “Expression Engine”!!

    I do have a few points I would like to bring into this discussion:

    Policy item #3: This makes perfect sense when using the “Publish Your Universe®” phrase, but the other items are one-word, standalone product names, and are intrinsically easily distinguishable from their surrounding text. Coupled with the notice (policy item #4), it is quite clear which marks are being claimed. For example, this page refers to ExpressionEngine, CodeIgniter, MojoMoto, Pepsi, Coke, and Apple, and all of them are easily distinguishable from their surrounding text without being bolded or italicized.

    Policy item #5: This wording does not have to be exact, right? It would be fine to give another simple disclaimer stating that a product or service using ExpressionEngine is in no way affiliated with EllisLab or ExpressionEngine. I agree with Rob that the wording on this policy item comes off a bit abrasive. The important thing is to unequivocally convey who owns the mark, and that there is no official connection with the third-party that is referencing it, right? Having a registered mark doesn’t also dictate the wording for citing the marks ownership, does it? I don’t remember that from business law classes (but I’m certainly not a lawyer, and the courses were several years ago…).

    Policy item #7: In response to some previous comments about this point, it is important to note that it is perfectly okay to express an opinion about a product, company, or service (and pretty much anything else if you are a US citizen in the US), *as long as* it is stated as an opinion and not as a fact (or if it correctly stated as a fact). For example, I can say “I think ____ is the buggiest product ever made” and that’s okay. However, I could get in trouble for saying, “_____ has more bugs than any other software ever written,” because that is defamatory and incorrectly presented as a fact. The former is covered by freedom of speech and supersedes any product trademark policies, the latter is defamation and could result in litigation.

    Policy item #9: Where is that line drawn? I know that it is not okay to use registered trademarks in domain names, but is it okay for articles that have ‘expressionengine’ in the title (and URL title)? What about URL segments? For example, on http://www.causingeffect.com, I have a software section with different categories that are used in the URL. It is quite clear (in my opinion anyway) that I am not trying to impersonate EL or claim ownership or endorsement, but rather that I’m selling and/or giving away software that I have authored for the various software platforms. Do I need to change ‘expressionengine’ in the URL to ‘ee’ and ‘codeigniter’ to ‘ci’ for all applicable pages in the software section of my site? If so, that would be quite an undertaking. I don’t feel like the site is set up to be deceitful or malicious, but rather relevant and descriptive.

    Closing thought: Following these policies on the EllisLab website would be a great thing to do. When people see EllisLab specify that ExpressionEngine is a registered trademark on its own site, I bet they would be more likely to cite it as such elsewhere. I see that the little ® (registered mark) symbol was added to the product names on the homepage, but it doesn’t seem like it goes much beyond that. On this page alone (excluding the article and comments text), there are 5 uses of “ExpressionEngine” (1 in the header, 3 in the side navigation, and once in the footer), and there is not one registered symbol, or notice stating that the marks are registered.

    Picture of Aaron Waldon

    Aaron Waldon

  18. @narration - thanks

    Picture of Rob (bluedreamer)

    Rob (bluedreamer)

  19. For example, this page refers to ExpressionEngine, CodeIgniter, MojoMoto, Pepsi, Coke, and Apple, and all of them are easily distinguishable from their surrounding text without being bolded or italicized.

    Quite, that point was originally meant for a specific purpose that seems to have been covered as the document evolved, but did not circle back.

    Policy item #5: This wording does not have to be exact, right?

    Correct, hence “An example of an acceptable disclaimer”. The examples provided are built from the common legal language.

    “_____ has more bugs than any other software ever written,” because that is defamatory

    Defamation and disparagement have some pretty specific requirements, so even a statement such as that would have to be in a certain context to be defamatory or disparaging, in a legal sense.

    Policy item #9: Where is that line drawn? I know that it is not okay to use registered trademarks in domain names, but is it okay for articles that have ‘expressionengine’ in the title (and URL title)? What about URL segments?

    I’ll check on making that more clear. From a non-legalease perspective, we are absolutely okay with using the full names in URL segments. For example, Red Carrot shared their ExpressionEngine page with me today, and their use is perfectly okay. Narration’s example of Stack Exchange is also right on the money.

    I see that the little ® (registered mark) symbol was added to the product names on the homepage, but it doesn’t seem like it goes much beyond that.

    We don’t require more than the first and/or most prominent use on a page (and those have been there all along). All of those ®‘s clutter things up. We wouldn’t use them at all if we didn’t have to, but we have to operate within the structure of laws that apply to us. So for instance, the nav doesn’t have it even though it’s technically the first use, because it would look bad and it would needlessly take up horizontal space. Judgement can certainly be used. In this case you are correct, the “built on” should have it, since that is on every page of our site, including those which do not reference ExpressionEngine.

    Picture of Derek Jones

    Derek Jones

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