02
Aug
todo_for_iphone_250x2501

As Android Police's unofficial person who knows things about laws (as always, none of this is legal advice), sometimes I see law stuff going on in the tech world that just makes me mad. This is one of those times. Appigo, an iOS and OS X developer, filed for a trademark on the word "Todo" (see it here) under the scope of a software application (basically).

Yesterday, we received an email from a developer of an app for Android called Star Trek ToDo Agenda. He was contacted by Appigo, with the following email (private information redacted):

Hello,

I'd like to discuss a small issue with one of your apps:
Your App Name: Star Trek ToDo Agenda
Your App URL: https://play.google.com/store/apps/details?id=com.stanlm.startrektodoagenda&feature=search_result#?t=W251bGwsMSwxLDEsImNvbS5zdGFubG0uc3RhcnRyZWt0b2RvYWdlbmRhIl0.

I see that you are using the word "TODO" in your app name, screenshots, and description.  TODO is a registered trademark of Appigo, Inc. (USPTO Reg. No. 3,964,288), which mark we have been using in commerce since July 2008. Your use of the "TODO" trademark is likely to cause customer confusion to our existing and potential customers.

I'm sure that this infringement was not intentional and am hoping that you can quickly release an update of your app that removes any reference of "TODO" and use a more descriptive term.  For example, "to-do list", "task list", "task management", etc. are appropriate substitutes.  As a side note, "to-do" in English is properly spelled with a dash between the "to" and the "do".

I would like to hear back from you by next Wednesday, August 1st, 2012 with your plans to publish an update of your app that resolves the issue.  I don't necessarily expect that you would publish an update by then, just that you will notify me of your plans.

I appreciate your help in promptly resolving this to avoid any further name confusion or unnecessary lawyer fees.  :-)

So, having read that email, does it read to you like something a lawyer wrote? Yeah, not really. It was someone with Appigo that actually sent this message to Star Trek ToDo's developer, and while I can understand wanting to keep it "informal" before calling in the lawyers, accusing someone of trademark infringement isn't something you do casually. Even if Appigo has the most honest of intentions (I sincerely doubt that), this definitely qualifies for what, in the legal parlance, would be termed "kind of a dick move."

The "Todo" Trademark

So, let's dismantle Appigo's claim piece by piece, shall we? Appigo filed for its trademark as "Todo." But it did so as the Spanish word - not as a fanciful respelling of the phrase "to-do." This is from said TM filing:

ADDITIONAL INFORMATION


Translation: The English translation of "TODO" in the mark is "ALL" or "EVERYTHING".

By including that information, Appigo has claimed its mark for the use of the Spanish word "Todo." Because of that, Appigo's registration is likely what we would call an "arbitrary" or, more likely, "suggestive" mark - the Spanish word "Todo" has no inherent descriptive relation to a software program, much like Apples have no inherent relation to computers - that would be arbitrary. Suggestive is probably a better descriptor here, though - Todo stores "all" your task management information in one place (not literally, but you get the idea), so it's an "all in one" sort of app. It takes a few mental steps to get there, and that's exactly what separates a suggestive mark from a descriptive one.

Had Appigo claimed "ToDo," a fanciful respelling of "To-Do," it would almost certainly not have received principle registration for its trademark until it had established sufficient secondary meaning. Why? Because it's probably merely descriptive, if not generic (generic marks are not registerable). Naming a task manager app "ToDo" merely describes the product (even if it is "more than just a to-do list"). In one rather famous case, the trademark "Lektronics" was struck down as generic because it was merely a fanciful respelling of the word "electronics." The company registering it? They sold electronics.

So, if Appigo claimed "ToDo," it might be able to get it in as descriptive if it was later proven secondary meaning was acquired. But that's really, really hard (read: almost impossible) when you're an independent developer claiming a geographic scope of the entire United States. And even then, the trademark examiner probably would still have major misgivings about the mark simply being generic. So what did they do instead? They claimed "Todo" - spelled exactly like ToDo (rather convenient for search results, I might add). What comes up when you Google "to-do app iphone"?

tada_er_todo

Funny, that. It's almost like they knew they wouldn't be able to get a trademark for "To-Do" or "ToDo," so their clever filing attorney went with "Todo" because it was easier to get in the register as suggestive or arbitrary. In fact, they even use "to-do" on their homepage to describe the app:

to-do

It gets better. Head over to Appigo's Media Center page and you find this little gem:

disclaimer

That's there because in order to file for a trademark, you have to show you actually intend to use it in business as described in the filing. If Appigo had simply filed for "Todo" and then started referring to its app under the pronunciation (and yes, pronunciation is relevant to trademark analysis) "To-do," they would not have been using the mark as described in their filing. Appigo is specifically stating that its name is not ToDo, and not pronounced that way.

So, how is it anyone else's fault that you just happened to pick a Spanish word that is spelled exactly like an English word / phrase that describes what your app does very well? Clearly, it isn't. You chose to trademark a foreign word you knew was similar to, if not exactly the same as, an English word you couldn't, and now you're trying to tell people they infringe on your trademark because they're using that word in the way you couldn't register.

Give me a break.

There is a "doctrine of foreign equivalents" that sheds some light on the issue of registration of foreign words as trademarks in the US, but it really confuses the issue more than anything (it's also a widely-hated doctrine). Basically, we look at the translation of "Todo" ("all" or "everything") from the trademark filing, and compare it to the name of the allegedly infringing mark, "ToDo." Under this analysis, there clearly is no likelihood of confusion, even if the marks are in the same sector of business - the words have two very different meanings.

While it would be hard to prove, this all suggests to me that Appigo filed for its tradmark on "Todo" in bad faith. It knew that it would easily be mistaken as a misspelling of "ToDo" and "To-Do," and that's something the examining attorney at the USPTO should have caught (I've read the registration docket, they didn't). But, as with most small trademark filings, no opposition was filed, and a mark that should have never made it onto the principle register ended up there because some attorney got cute with his Spanish.

If you're a developer who has been threatened by Appigo, please, get in touch with an attorney. Even if just to explain to them the situation and see what they have to say - that part's free.

In the meantime, let's hope a little negative attention will shame Appigo into stopping this nonsense.

Thanks, Mike!

David Ruddock
David's phone is whatever is currently sitting on his desk. He is an avid writer, and enjoys playing devil's advocate in editorials, and reviewing the latest phones and gadgets. He also doesn't usually write such boring sentences.

  • http://kennydude.me/ Joe Simpson

    OH GOD :') I'm dying with laughter. Someone save me from this madness :') :') :')

  • http://www.joshbroton.com KillaPenguin

    I think this would fall into the "douchebaggery" category of moves...

    • anywherehome

      no no, it is OK....how rotten is Apple, so rotten are iOS developers...so everything is normal

    • mikedg

      This kid deserves it, if only because he's abusing the Star Trek trademark too

  • Kent Andersen

    wow. what else can I say?

  • Banai

    wth is wrong with all these governments granting idiotic trademarks and patents? It's like they have no idea what a trademark or a patent is _supposed_ to be for.

    • Simon Belmont

      You're new here aren't you? Pull up a seat and grab a beer.

      What you described has been the hallmark of tech blogs for a long while now. Get used to it.

      • Simon Belmont

        And, of course, by tech blogs, I meant what they have to report on. The idiotic patents that companies are being awarded.

        It's sad. Very sad.

  • denbo68

    Wait! Isn't "Star Trek" owned by CBS Studios? According to startrek.com (at the bottom):

    STAR TREK and related marks are trademarks of CBS Studios Inc.

    So the app developer can't use Star Trek unless they sought permission, right?

    • http://www.androidpolice.com/ David Ruddock

      There may be issues with that, yes. But that's neither here nor there.

      • denbo68

        I agree it just seems funny that they are being hit for using "todo" but not "Star Trek".

        • http://www.androidpolice.com/ David Ruddock

          Yeah, it's a bit funny, for sure.

      • will

        he'll be hearing from CBS for sure, since he's charging money to use the app (one in-app purchase)

        They went after an app developer who made a tricorder app (and was also free) it went back up, but CBS ripped it down again sadly.

        • Geeks on Hugs

          I might have gotten a copy of that before it was removed and if I did I wouldn't OFFER it to anyone. So you'll have to ASK around if you want a copy. If I had it I would say its a blast.

      • anon

        I read somewhere that any real technology inspired by Star Ttrek was allows in Gene's contracts

    • Tomi Golob

      Yes but CBS doesnt want a contagion of douchebaggery infecting the StarTrek fanbase. Immagine the world with all geeks being douchebags...mass murders in every corner of the world. It would end the geek civilization

  • http://www.facebook.com/profile.php?id=1645382940 Красимир Стефанов
  • Bariman43

    Is this the new fad? Annoying Android and Android App devs with pointless, time-wasting lawsuits? Give me a break.

  • Joe Anderson

    All android developers should change their apps names to include todo

    • http://www.androidpolice.com/ Artem Russakovskii

      I am Spartacus.

      • Geeks on Hugs

        I see what you did there ;-)

    • Geeks on Hugs

      Actualy what would really get him is a good old fashioned Google bomb. He was obviously fighting against search rank competition. Let's make this page come up 1st so potential customers can know who they are gonna do business with.

    • storm14k

      Was about to create one...

    • mikedg

      And Star Trek!

  • http://www.facebook.com/profile.php?id=1036552729 Matthew Fleisher

    They trademarked the word "todo," shouldn't they file that with the Mexican patent office?

    • Williams

      Get a little more education as spanish is not only spoken in Mexico, but most of South America countries and needlees to say SPAIN. Before to post, check how ignorant you are.

      • http://jeremyperez.com Jeremy

        And before you post, you should locate your sense of humor.

      • http://www.facebook.com/profile.php?id=1036552729 Matthew Fleisher

        I am not ignorant since Spanish is spoken in my house regularly. The Spanish spoken in Spain is nothing like the Spanish spoken in Mexico and a lot of South America speaks Portuguese. Do not judge me based on my German name Señor Dümpkof.

  • Clayton Reeves

    What, they are just following big brother Apple. You need to use the legal system as a safety net.

  • ogopinion

    They seem to be playing by the rules of a broken system. Don't hate the player, hate the game.

  • Dirtyfrank

    Here is the owner of Appigo email.
    calvin@appigo.com name is Calvin

  • Alex Pacheco

    Don't like Star Trek nor have a need for such app but I went ahead and installed just so I can rate and tell Appigo GFT.

    • master94

      Nice, just did the same.

    • Dan

      Installing now. 1-star rating for the douchbags in 3... 2...

  • HarveySpencer

    Regardless if you think its a 'dick move' or not is irrelevant. TODO is a registered trademark and that retarded developer has legal precedence to sue for trademark infringement. Not sure what law school you went to but the court doesn't recognized hurt feels and "dick moves". There's no need for an entire article about this. Move along.

    • http://www.androidpolice.com/ David Ruddock

      Did you even read the legal explanation portion of this piece? Apparently not - there's plenty of reason to think their trademark infringement allegation is unsupported, and that their mark itself may be ripe for cancellation.

      • storm14k

        Probably didn't. That person and the other 3 voters are probably fascinated with "dick move" and failed to understand anything else.

      • moorecha

        David, I'm a new attorney with a little bit of trademark experience and I thought you did an excellent job of giving the basic analysis of the situation. Excellent job, as usual man. It is stuff like this that brings me back here.

        I do think it should be noted that this has absolutely nothing to do with anything regarding the patent debacle lately. Many non-attorney folks don't realize the differences between different IP laws. Just a note.

        • http://www.androidpolice.com/ David Ruddock

          Completely agree. This was reddited as being about patents. -_- Probably should have put trademark in the title.

    • http://twitter.com/kuyanyan Yanyan | RR

      The court may not recognize "dick moves" but it will recognize bad faith. The article just described some grounds on which Appigo's trademark may be cancelled.

    • jordanjay29

      No, they won't be able to sue.

      Appigo's trademark is on the word 'Todo', note the spelling and capitalization.
      The app in question uses the word 'ToDo'.

      Yes, there are a mile of differences between those two in trademark terms, especially considering that Appigo's trademark is on the Spanish word and not on the English phrase.

      Thanks for not reading and comprehending. Please come back when you get some intelligence. kthnxbai

  • Greyhame

    This article is one of the reasons why I love reading this site!! Nice work.

  • Major_Pita

    Someone should disinfect this douche before the contagion spreads

  • anon

    reventive, anyone? Oh, excuse me, that's Analy Retentive. Perhaps Sigmund's descendants should file for legacy rights ;)

  • Havoc70

    The idiots are from Orem Utah, and they really think that using the Spanish version of Todo makes a difference...Geez more idiots following Crapples line of worthlessness. That trademark Cough Cough should have never been allowed in the first place.

  • Mārtiņš Belte

    They followed their Apple-mentor, but they failed, since they are just a plain apprentice in being an ass.

  • Geeks on Hugs

    What a dick...threatening to sue with a smiley. I can't get my head around someone actually behaving like that and living with themselves.

    Sociopaths are everywhere. Nothing else explains. Don't wait for this to shame him. The dirt bag is obviously shameless. Pathetic Steve Jobs wannabe.

    • MonkeyWork

      Damn funny. I couldn't make it to the end of the actual letter. Thanks for pointing that out.

  • Kenny O

    That letter has some serious passive aggressive bullsh!t Douchebaggery indeed. And the cherry on top....wait for it......ending it all with a smiley.

  • Geeks on Hugs

    BTW I see something else here.

    This was a fine work of analysis by the author of this article. Too many of these fandroiddailypatrol.com type sites are full of articles that are painfully bereft of something to say. This was interesting, informative and excellent analysis in addition to being a noble service exposing Asagios evil deeds.

    I say BRAVO good sir! Bravo!

  • storm14k

    Something I always notice about iOS apps. The FIRST bulltetin point about their apps is almost always something about "retina graphics" or "beautiful" instead of what the app can actually do for you. I truly believe folks over there download apps to look at them. And then when the devs come over to Android and find out that "beauty" doesn't trump functionality they get mad.

  • Jon Garrett

    Im no fan of iOS and developers who only develop for them but I have to side with Appigo on this one. If they have a registered trademark then they have every right to stop others from using that name.

    • Geeks on Hugs

      I will make it legal, said Palpetine

  • Geeks on Hugs

    Is this the attorney that filed it? It appears to be the one from the linked document.

    http://www.chcpat.com/edwards.html

    He appears to have specialized in intellectual property after he found out what zoologists get paid lol

  • Everybody Love Everybody

    Sounds like the jerks from Appigo need to apologize...or else, as another user posted, we will make sure their reputation reflects their actions.

  • Justin

    Doesn't the EFF love shit like this?

  • HO ME

    Just another C*r*a*p pops out of iShi(t)(p)

  • KC

    I'm filing a patent on every English/American words ever used since time immemorial. Anyone found using any English or American without myr written permission, s violating my patent. Howzat!!

    This is getting ridiculous!! That includes you, USPTO!!! Patents should be applicable only for certain industry, definitely not the IT industry.

  • cooldoods

    Apparently, "todo" is an English word in the Oxford dictionary (as of 2008) and dictionary.com

    • arrowdrewls

      I like the as of 2008 part

  • Osama Ahmad

    I think I will file a patent of laughing face for me so that everyone is left out with the option of crying. We certainly have learned something from big brother DAPPLE. (Sorry cant use the word @pp1e is trademarked, just wanted to avoid unnecessary lawyer fees.) Well we have alternatives to it like Dapple or simply dump. lolz

  • Tomi Golob

    In short,it's a cry for help; folks at Appigo crave cock. End of story case dismissed

  • Freak4Dell

    "So, having read that email, does it read to you like something a lawyer wrote? Yeah, not really."

    I'm not sure what you're talking about. My lawyer always ends his letters with a smiley face. He also uses poor grammar, so I think this letter is totally legit.

    Because nobody puts the space or the dash in this word, I always end up pronouncing it toe doh. At least I'm right for one app now.

  • http://www.facebook.com/koniczynek Michał Droździewicz

    I see that the app name contains ToDo, not Todo, so what's the problem?

  • mikedg

    Maybe he should get in touch with an attorney AFTER he stops using Star Trek in his apps.

  • Vyrlokar

    Simple question, I'm Spanish. Imagine I realease an app, in Spanish only, called "Todo el correo" (all the mail) that merges multiple email inboxes. It's clearly a descriptive name, and so it could not be trademarked (AFAIK). Would I then be subject to a cease and desist letter from this guy?

  • http://www.facebook.com/thediabolic Kaan Aurora

    Next thing they're going to trademark should be "FIXME" in order to kill developers from leaving TODO and FIXME comments into their source files. Well at normal times noone should be see the actual behind but what is going to happen when a user decompiles the APK and sees all these trademarked keys? BLASPHEMY! IT'LL BREAK THE COMPANY APART!!!

  • http://twitter.com/Bazar6 B Azar

    With all of these patent filings... it makes me wonder if the USPTO uses nothing but macs/iPhones... since they're always granting permission to Apple and dev's alike who try to pin down something so general and obscure.

  • http://www.facebook.com/paul.reay.71 Paul Reay

    solution is simple just put a space between to and do, hence no trademark and it actually reads as proper english!

  • Dshroyer

    Trademarks and patents are not the same. Do not use them interchangeably.

    You cannot trademark the word ToDo. If the developer is claiming this, let them go to a lawyer and they will learn they are in the wrong. If the word ToDo came with a logo or an icon of some sort, then you could trademark that, but not simply the word "ToDo."

    How is this news?

  • http://twitter.com/daliz84 Daliz

    iOS developers have 'good' teachers.

  • Darren Kopp

    This situation is a bit stupid, but trademark law is what it is. If you don't defend a trademark, then you can lose it (different than patents).I do think that it's a bit over the top to "... shame Appigo into stopping this nonsense" because they didn't make trademark law, and I really don't have any problem with what they did for a few reasons:

    1. They send a polite letter to the developer, clearly explain what they want
    2. What they are asking isn't unreasonable (add a hyphen)
    3. They only ask for a bit of communication from the developer on when they think they can resolve the issue, but don't put any stipulations on how long they have to resolve it (only on when to communicate back)
    4. They aren't trying to shake down the developer for money.

    You should really modify this story and take out the "Appigo is a troll, shame shame shame" because they are completely wrong in this situation. I agree with almost everything object you make about the situation in the article if you were solely talking about trademark law, but not so much when you are talking about Appigo.

    • captain obvious

      No, they ARE being a troll. Their trademark doesnt even COVER what they're fighting!!! Read the article next time.

  • http://www.facebook.com/jesus.barajas.96 Jesus Barajas

    So the U.S has the power to grant such trademark when this word doesn't even belong in the English dictionary? They should have filed that to a country in which this word belongs to

  • MonkeyWork

    I was wondering, when reading this, how is it that a random
    app developer is considering a suit over an obviously BS thing, and not
    the big company that owns 'Star Trek'?

    That alone should be a sign of the stupidity of this.

  • Versatile1

    simply replace a "o" with a "0" (zero)