SparkFun Gets a Cease and Desist Letter

I have the utmost respect for Sun Microsystems (owner of SPARC International). They're just down the road! I understand the need for SPARC International lawyers to protect the SPARC brand, but we really have nothing to do with a fine architecture that SPARC produces. I don't think anyone else would confuse the two.

Why did this come up? SparkFun filed for a trademark on January 21, 2009. The process is fairly long, and towards the end the trademark office allows anyone to file an objection to a new trademark. Enter SPARC International.

From the letter: "The SPARC trademark portfolio is an extremely valuable asset belonging to SI..." Indeed, I feel the same way. I would feel bad if anyone confused SparkFun with SPARC International, so let's compare trademarks:
I don't see how our trademarks could be confused.

Letter: "Because the dominant portion of the SparkFun mark, namely, SPARK, is phonetically identical and nearly visually identical to SI's SPARC mark, and because it is used in connection with identical goods, we believe confusion is likely to occur among the relevant purchasing group."

• phonetically identical : Yes, English phonics work like that. However, 'spark' is not the dominant portion of our name. No one calls us 'SPARK'. We're always called 'Sparkfun' (even though we prefer 'SparkFun').
• visually similar : No one calls us Spark. Have a look at our logo. We don't separate spark from fun. We are, and are known as 'SparkFun' as shown by our trademark.
• used in connection with identical goods: No. We don't sell any product related to SPARC architecture.
• confusion is likely to occur among the relevant purchasing group: I have no doubt that some of our customers purchase SPARC based servers. But we have not received an email or phone call from anyone on our website looking for the 'Server' product category.

Letter: "SparkFun Electronics, Inc. is using the term SPARKFUN as a trademark in connection with the sale of computer hardware, including integrated circuits and circuit boards."

• The layman may call what we sell 'computer hardware' but we do not. We don't sell motherboards, computer processors, RAM, ISA cards, keyboards, or any hardware that is used inside a computer.
• Yes we sell integrated circuits and circuit boards. But does SPARC International or their partners? They may sell large scale motherboards and riser cards, but not the raw, exposed, 'meant for research' circuit boards that we do. I don't think any of our customers confuse the parts that we sell with the well-designed RISC architecture that SPARC International creates.

Here is the current offering of SPARC servers from Sun Microsystems. We do not sell anything like this. Nor does SPARC International sell any products close to ours.

SparkFun has been selling embedded electronics and actively using our trademark since January of 2003. We regularly post on our blog (300 posts and counting), we've made it into the New York Times, we've been hanging out at every Maker Faire (near Sun's Santa Clara headquarters), our full page ads are regularly featured in many tech magazines, and we paste our trademark all over our unsuspecting customers. SPARC International started using their trademark in 1989. SPARC International has been at it a lot longer! Let's see what google thinks:

• 'sparkfun' : ~147,000 hits
• 'SPARC International': ~91,800 hits
• 'SPARC': ~9,870,000 hits

Although 10M hits looks large, searching for 'SPARC' grabs a variety of different companies, groups, and websites including the Scholarly Publishing and Academic Resources Coalition, a Non-profit arts organization based in Venice, California, a site on divorce and custody help, amongst many others. We believe the term SPARC is confused by many people. However, when you search for SparkFun, every link has to do with us, the SparkFun company (admittedly I gave up after 11 pages).

What does it mean when folks at Sun (SunSpot is a Java development platform created by Sun) talk openly about using SparkFun products? Sun's employees don't seem to be confused, are you?

We care deeply for what we are trying to create at SparkFun. We don't want anyone to be confused, but we feel badgered, beat-up, and picked on by a much larger company. We would really appreciate your support and comments on this matter. Please post any comments below. Feel free to contact sparcinfo@sparc.org with your thoughts. CC in spark@sparkfun.com! We'd love to hear your thoughts as well.

If you're having problems accessing http://www.sparc.org, so did I. Try http://www.sparc.org/index.html