Coexistence Agreement In Place
SparkFun and SPARC International agree to play together; do not throw sand.
After receiving our first Cease and Desist letter 5 months ago, SparkFun Electronics and SPARC International signed a coexistence agreement on Friday April 2nd:
"We are pleased to report that SparkFun and SPARC Inernational, Inc. have reached an agreement concerning use and registration of the SparkFun mark."
What does this mean?
Our trademark application for SparkFun includes a long list of types of products, from acceleration sensors all the way through the alphabet to voltage regulators. Turns out SPARC was concerned that if we registered a trademark for some of the product types we listed, SPARC's own trademarks could be weakened. Apparently this kind of issue is pretty common in the trademark arena. So we are editing our trademark application and taking off the terms that SPARC wants to protect.
We also agree to never register a domain or trademark with the word 'SPARC'. So long sparctshirts.com.
In return, SPARC will refrain from opposing our trademark application - serial # 77653601 (the USPTO is over here, I just can't link to our trademark application page directly).
In general, we have defined the different markets that we and SPARC are in, and we simply cannot apply for or expect protection of our trademark in each other's market. SparkFun can still sell a breakout board on Insight.com, next to a SPARC server, but we can't get mad at SPARC (or vice versa) for selling 'computer goods' (a term removed from our trademark application). We agree to coexist.
How did it all shake out?
After our original post, we began talks with SPARC International, directly, without attorneys! They were understanding and reasonable to work with. Because SPARC is a non-profit membership organization, any changes had to go through a series of the members' attorneys to get anything approved. After a tremendous amount of back and forth, we are very pleased to be signed off and still rocking from SparkFun.com.
Can I read the agreement?
Either because of our first post or because attorneys just prefer confidentiality, we are not able to post the actual document. Part of our agreement with SPARC International was confidentiality, but I'd be happy to answer questions where possible in the comments below.
Clear as mud?
Notice how I didn't want to post this too close to April 1st? It would have just complicated things.
How much did this whole thing cost?
It was many hours of discussions and phone calls, along with countless emails. Our attorneys have billed us for ~50 hours so you can do the math. We are very lucky that this did not cost us more. But more than anything, what we learned about our community and the support we received far outweighs any money we had to spend.
Thank you SparkFun users. With your help, we added a 'Cease and Desist' badge to our boy scout sash and lived to see another day.
