Communications/Wikimedia brands/2030 movement brand project/Naming convention proposals/Legal commentary market research
The Wikimedia Foundation Board of trustees has resolved to pause the Movement Brand Project until March 2021. Read the full resolution on the Wikimedia Foundation Governance Wiki.
Legal Commentary on Movement Brand Naming ConventionsEdit
This document outlines some important legal context and considerations, particularly focused on trademark questions, related to naming elements considered and proposed as part of the Movement Brand Project.
The focus of this analysis is on the “dominant” element of the branding—the term that would replace “Wikimedia” in the movement brand system. Evaluation of the non-dominant elements of the branding—the terms that would replace “Foundation”, “User Group”, etc. in the movement brand system—is a subject for future analysis.
For the purposes of this document, the terms “we” and “our” are meant to refer to the Wikimedia movement as a whole. While much of the work related to protecting the Wikimedia trademarks is done by the Wikimedia Foundation, the Foundation’s role in this work is to act as steward of shared movement resources.
1. Why trademark protection mattersEdit
Trademarks are an important part of how we protect the positive reputation associated with the projects, activities, and organizations that constitute the Wikimedia movement. Every project contribution, edit-a-thon, conference, partnership, and outreach program builds the value of the movement brand, and every reference to the movement’s efforts in media and popular culture reinforces that value. Through trademark protection of the movement brand, we are able to ensure that the brand is used only in ways that further the movement’s mission and interests.
Specifically, trademark protection allows us to:
- Prevent third parties (other organizations or individuals) from impersonating movement organizations in order to trick people into donating money to them.
- Prevent third parties from creating their own website or organization that misrepresents them as being affiliated with our movement when they are not.
- Prevent third parties from using brands similar to ours (whether intentional or unintentional) in ways that would cause confusion.
- Grant permission to third parties to use our brand when we partner or collaborate with them, and set the terms for that use.
As the examples listed above show, trademark protection isn’t just about control over the brand—it is also about protecting the public (including readers, contributors, and donors) from being misled or confused.
2. Our current protectionEdit
Ever since it was formed, the Wikimedia Foundation has been investing in protecting the Wikimedia brands by registering trademarks for the project names and logos around the world. Because of the online nature of the Wikimedia projects, as well as their existence in hundreds of languages and our vision of reaching “every single human being”, the Wikimedia trademarks are in use in every country on the planet (and beyond). As a result, we have to think about trademark protection at a global scale. While there is some international standardization related to trademarks, trademark rights are territorially limited. So, receiving the full benefits of trademark protection in a given country generally requires registration of a mark in that country.
As we do not have infinite resources, we have had to prioritize which trademarks to register in which countries. For each country, the factors we have considered in prioritization include traffic to the projects, activity of movement affiliates, the existence of outreach and awareness efforts, grant activity, the organization of conferences and events, and fundraising activity.
It should not come as a surprise that consideration of the prioritization factors listed above has led us to invest most heavily in protecting the Wikipedia marks. The WIKIMEDIA wordmark and Wikimedia logo have received the next-most investment, driven in particular by their extensive offline use. Following those, we then have a number of registrations for the names and logos of the other projects in key jurisdictions.
Another strategic element of protecting our brands is registering relevant domain names. We have domain name registrations for variations on the addresses where content is hosted (wikipedia.org, wikimedia.org, wikisource.org, etc.), including variations that use different TLDs (including ccTLDs) and ones based on common typos.
3. Regarding “Wikipedia”Edit
In part due to the investment in trademark registrations mentioned in the previous section, the Wikipedia brand (including the WIKIPEDIA wordmark, the puzzle globe, and other Wikipedia associated logos) is the best-protected among the Wikimedia trademarks. The Wikimedia trademark portfolio includes over 2200 registrations worldwide, and over a third of those are for the Wikipedia marks.
The number of registrations only tells part of the story, though. Because the purpose of a trademark is to serve as an indicator of the source of a particular set of goods and services, trademarks are protected (and registered) not in isolation, but rather in connection with the goods and services for which they are used. As part of trademark applications for registrations, we are required to specify the goods (products that will bear the trademark) and services (activities the movement will perform for others under the trademark) for which each trademark will be used. Many jurisdictions use a standardized classification system for categorizing the goods and services for which a mark is registered. Not only have we obtained more registrations for the Wikipedia marks than for other marks in the Wikimedia trademark portfolio, but the collective designated goods and services is broader. This is because the Wikipedia marks are used more widely than others (such as on merchandise and in the names of associated projects and initiatives).
In addition to trademark registrations, the prominence of the Wikipedia brand also makes it eligible for famous/well-known status in many jurisdictions. Obtaining a “famous” or “well-known” status strengthens the scope of protection for the WIKIPEDIA mark to include protection for even dissimilar goods and services. We are in the process of securing official recognition of this status in some countries, in order to further solidify protection for WIKIPEDIA.
This document is focused on trademark considerations, but there are additional factors to consider regarding the use of WIKIPEDIA as a movement brand. In particular, affiliates have raised questions about what it would mean to them to use “Wikipedia” instead of “Wikimedia” in their names. While a change in branding would not affect the fundamental structure of the relationship between the Wikimedia Foundation and affiliates (for example, the Foundation would continue to run the servers that host project content), it is important to consider affiliate concerns in designing the implementation of any branding changes. Affiliates can raise questions about the impact of using “Wikipedia” in their names in the naming convention surveys or by contacting Chuck Roslof directly.
4. Regarding “Wiki”Edit
“Wiki” is commonly used both within the Wikimedia movement and among the general public as a shorthand to refer to Wikipedia, individual Wikipedia articles, or other projects and elements within the Wikimedia ecosystem. While wiki software predates the launch of the Wikipedia project, the popularity of Wikipedia played an unquestionably significant role in creating public awareness of the term “wiki”.
However, we are not the only ones currently using the term “wiki” or the only ones to have incorporated “wiki” into the name of our projects and organizations. Because of this lack of exclusive use of “wiki” by us and association of the term “wiki” with us, we would face significant challenges if we tried to claim exclusive rights by adopting “Wiki” as the dominant name element for our movement brand.
As explained in Section 1 above, trademark protection is crucial for a successful movement brand. Attempting to obtain the necessary trademark protection for WIKI to use it as a movement brand, though, would be extremely difficult for two main reasons:
- 1) We would need trademark offices around the globe to approve trademark registrations for WIKI. No matter the time or money dedicated to securing trademark rights, certain subject matter cannot be protected or registered as a trademark, including those that are: generic, deceptive, or confusingly similar to another mark. In this instance, “wiki” is a term that has its own meaning, with entries in many dictionaries (including Wiktionary). When that is the case for a term in a trademark application, trademark offices usually require applicants to prove that the term is being used as a trademark (to indicate the source of the applicant’s goods or services) and not just as a description of the applicant’s goods or services. That is easy to do when the term is unrelated to the applicant’s business (such as APPLE for computers), but is very difficult when the term is highly related to the applicant’s business (such as APPLE for fruit).
- 2) We would be positioning ourselves in conflict with other organizations that use “wiki” in their name. There are several dozen third-party (non-Wikimedia) registrations for marks incorporating “wiki” in the United States alone, and there are hundreds of third parties making unregistered use of “wiki”-based marks. If we were to try to obtain trademark registrations for WIKI, we would have to decide whether we would need to stop these third parties from continuing with their uses of these “wiki”-based marks, if we were even able to stop them at all. Attempting to stop them from using these marks, some of which have been in use for many years, would require a massive investment of time and resources with no guarantee of success. It would also make us a lot of enemies, including from among individuals and organizations whose mission and values are aligned with those of the Wikimedia movement. Even if we decide not to pursue an aggressive enforcement strategy, there is the possibility that third parties using “wiki”-based marks would feel threatened by our attempts to secure the trademark rights to WIKI and initiate legal proceedings against us. The amount of work and financial cost that would need to be devoted to such proceedings could materially impact the Foundation’s resources.
In short, use of WIKI alone as a dominant branding element would not position us for effective legal protection. Obtaining the trademark protection needed for a movement brand would be an uphill (and possibly futile) battle requiring substantial resources in terms of both time and money.
Importantly, the concerns outlined in this section primarily apply to attempts to use “wiki” as a trademark. There are a number of elements to movement branding, and there are possible ways to incorporate “wiki” into some of those elements without encountering all of the issues listed above. The most important branding elements to be able to protect as trademarks are the names of movement organizations. That is where the control and protection described in Section 1 above is most needed.
5. Regarding “Free Knowledge”Edit
We have been talking about “free knowledge” in relation to the Wikimedia movement for a long time, so it makes sense to consider whether we should use it as our central movement brand. However, from the perspective of trademark protection, FREE KNOWLEDGE presents significant challenges.
In contrast to “Wiki”, as examined in the previous section, “Free Knowledge” has the advantage of not being widely used as an element of third parties’ brands. That means we would not face the same sort of conflict with other trademark owners if we were to try to obtain trademark registrations for FREE KNOWLEDGE.
However, also unlike “Wiki”, we do not have evidence that “Free Knowledge” is already highly perceived by the public as associated with the Wikimedia movement. We would need to provide significant and voluminous evidence that there is public perception that FREE KNOWLEDGE is exclusively recognized as a source identifier for the movement in order to convince trademark offices to allow us to register FREE KNOWLEDGE as a trademark. As there is not already a widespread trademark-level association in the public of “Free Knowledge” with us, it would be a long road to get to that level of association. We would essentially be starting from scratch with a new brand, and we would need to invest heavily in aggressive marketing for at least several years in order to potentially be successful.
From a trademark perspective, we are well-positioned to use “Wikipedia” as a movement brand. It is already our best-protected mark, and it is already world-famous.
“Wiki” on its own is not feasible as the dominant element of a movement brand, given its existing widespread use by third parties. However, there may be ways to use “Wiki” in more informal elements of the movement brand system.
To the extent that it might be feasible from a trademark perspective to use “Free Knowledge” as a movement brand, the costs and difficulties associated with trying to do so likely make it unsuitable as an option.
Jurisdictions targeted in trademark researchEdit
The following jurisdictions were researched in determining whether the naming options could be successfully registered as trademarks:
- European Union
- Russian Federation
- South Africa
- South Korea
- United Kingdom
- United States