Oracle Starts Laying Mines In JavaScript Trademark Battle

The Register's Thomas Claburn reports: Oracle this week asked the US Patent and Trademark Office (USPTO) to partially dismiss a challenge to its JavaScript trademark. The move has been criticized as an attempt to either stall or water down legal action against the database goliath over the programming language's name. Deno Land, the outfit behind the Deno JavaScript runtime, filed a petition with the USPTO back in November in an effort to make the trademarked term available to the JavaScript community. This legal effort is led by Node.js creator and Deno Land CEO Ryan Dahl, summarized on the JavaScript.tm website, and supported by more than 16,000 members of the JavaScript community. It aims to remove the fear of an Oracle lawsuit for using the term 'JavaScript' in a conference title or business venture.

'Programmers working with JavaScript have formed innumerable community organizations,' the website explains. 'These organizations, like the standards bodies, have been forced to painstakingly avoid naming the programming language they are built around -- for example, JSConf. Sadly, without risking a legal trademark challenge against Oracle, there can be no 'JavaScript Conference' nor a 'JavaScript Specification.' The world's most popular programming language cannot even have a conference in its name.' In the initial trademark complaint, Deno Land makes three arguments to invalidate Oracle's ownership of 'JavaScript.' The biz claims that JavaScript has become a generic term; that Oracle committed fraud in 2019 when it applied to renew its trademark; and that Oracle has abandoned its trademark because it does not offer JavaScript products or services.

Oracle's motion on Monday focuses on the dismissal of the fraud claim, while arguing that it expects to prevail on the other two claims, citing corporate use of the trademarked term 'in connection with a variety of offerings, including its JavaScript Extension Toolkit as well as developer's guides and educational resources, and also that relevant consumers do not perceive JavaScript as a generic term.' The fraud claim follows from Deno Land's assertion that the material Oracle submitted in support of its trademark renewal application has nothing to do with any Oracle product. 'Oracle, through its attorney, submitted specimens showing screen captures of the Node.js website, a project created by Ryan Dahl, Petitioner's Chief Executive Officer,' the trademark cancellation petition says. 'Node.js is not affiliated with Oracle, and the use of screen captures of the 'nodejs.org' website as a specimen did not show any use of the mark by Oracle or on behalf of Oracle.'

Oracle contends that in fact it submitted two specimens to the USPTO -- a screenshot from the Node.js website and another from its own Oracle JavaScript Extension Toolkit. And this, among other reasons, invalidates the fraud claim, Big Red's attorneys contend. 'Where, as here, Registrant 'provided the USPTO with [two specimens]' at least one of which shows use of the mark in commerce, Petitioner cannot plausibly allege that the inclusion of a second, purportedly defective specimen, was material,' Oracle's motion argues, adding that no evidence of fraudulent intent has been presented. Beyond asking the court to toss the fraud claim, Oracle has requested an additional thirty days to respond to the other two claims.

Read more of this story at Slashdot.