Are foundry initials an inherent part of a type family name?

Adam Jagosz

Suppose foundry XYX released a type family XYZ Abc. Is 'Abc' now considered to be 'taken'? Can I still release my own font under the name 'Abc'?
I get it that sometimes an aged font is being digitized by more than one party and the individual renditions get the initials or the whole foundry name attached. But it appears some of the foundries just stick its name to all of their products for whatever reasons. My thinking then is, " 'Abc' is a cool font name, so since you guys decided to christen your baby 'XYZ Abc', I'm gonna grab the pure pristine 'Abc' for myself". (Btw, it looks kind of like a surname and a given name positioned in Japanese or Hungarian tradition )
What are your thoughts?

Adam Twardoch

Generally, it is a matter of trademark law. One entity can introduce a product under a certain name, and either claims or registers a trademark.

If another entity introduces a different product under the same or similar name (in the same product class), and the first entity feels that this can lead to confusion among the consumers (they may search for one but find the other, be mislead as to the second product's origin etc.), the fist entity can enter a dispute with the second entity.

The dispute can have a form of arbitration (be it inside a major distributor that offers both products, or in front of some panel of peers, or within a trade organization both entities are members of), or happen in court. 

In the process of the dispute, the first entity needs to demonstrate that the word or phrase they claim a trademark on is unique and can be uniquely attributed to their product within its class. If it's generic (like the words Serif or Sans in case of fonts) or had been used by other competitors without protest, then the trademark claim is void, and a trademark registration can be anulled. The first entity also needs to demonstrate that there is indeed potential for consumer confusion. 

It really is up to the first entity whether to open a dispute with the second. There are no absolute rules. It’s like with offense: you can only potentially offend a person if that person feels offended. 

Jackson Showalter-Cavanaugh

Suppose foundry XYX released a type family XYZ Abc. Is 'Abc' now considered to be 'taken'?

tldr; Yes.

Adam Jagosz

In some cases, it feels like they ate the cake and have the cake. My question was purely theoritical, anyway. Just something bothering me for a longer time.

Johannes Neumeier

In cases of revivals I understand the need to differentiate between different releases of similar design or namesake. When some foundries do this as a matter of principle for all their releases then this kind of blunt force marketing seems so off-putting to me, personally. Some grocery chains have their own line of low budget bulk products under their own in-house brand... it feels like that.

Adam Twardoch

Jackson Cavanaugh said:

Suppose foundry XYX released a type family XYZ Abc. Is 'Abc' now considered to be 'taken'?

tldr; Yes.

That's a bit general, no? Monotype claims the trademark on "Monotype Scotch" and "Scotch Roman MT", but claiming the trademark on "Scotch" alone would be tricky. Nick Shinn released Scotch Modern and claims a trademark on that combination, but, again, not on the word "Scotch". 

All kinds of common words, e.g. "Commercial", aren't trademarked, so you have Commercial Script and Basic Commercial. 

Trademark law doesn't work by the "tldr yes" principle. You cannot freely register common words, personal names or names of places as trademarks, and while you can claim them, this can be disputed. If the trademark is a neologism, then it's easier of course. 

Jackson Showalter-Cavanaugh

Sorry, I was being general on purpose. I think the golden-rule starting point needs to be 'No.' 

There are certainly exceptions, like generic terms, but they should be carefully considered. The first step would be to ask yourself if you really want to use (part of) another font's name. If yes, you need to approach the original designer to explain the situation and to ask for their permission.

After all of that, you can look at the nitty gritty details of trademark law. But starting with legal technicalities to justify your not original idea will quickly turn you into the asshole. We have enough of those already. 

Hrant Հրանդ Փափազեան Papazian

Jackson Cavanaugh said:
But starting with legal technicalities to justify your not original idea will quickly turn you into the asshole.

Agreed. On the other hand being a gollum about one's work (especially when it's an unoriginal design with merely an original name) does the same.

The golden-rule starting point is Be Reasonable.

Wolf Böse

Johannes Neumeier said:

In cases of revivals I understand the need to differentiate between different releases of similar design or namesake. When some foundries do this as a matter of principle for all their releases then this kind of blunt force marketing seems so off-putting to me, personally. Some grocery chains have their own line of low budget bulk products under their own in-house brand... it feels like that.

I like having a cluster of fonts of one foundry in the font menu.
Just a matter of sorting I thought.

Thierry Blancpain

Grilli Type wanted to release GT Federal in 2016. The typeface that had this name since 2009. But also in 2009 a typeface with the name Federal was actually released.

Like Jackson recommends, we contacted the designer of that typeface and at first he seemed okay with it. Then he changed his mind and we of course changed the name of the typeface before its release. That’s how it goes.

We ended up naming it GT America and lived happily ever after (until 3 weeks after release, about a year ago...). But now the ACLU and other great organizations have embraced the typeface, which makes me happy about the name choice again.

Hrant Հրանդ Փափազեան Papazian

@Thierry Blancpain Did EvB ask Jeff Levine for permission?

PabloImpallari

There is also a practical point to it... having a unique name also helps when people search for your font, so even if it may be legal to use a similar name, it still better to use a unique one.

Robin Mientjes

I had been using the name ‘Monument Grotesk’ online, in my portfolio, since 2008 or 2009. In 2014 someone released a font by that name, and so I ended up renaming my own retail release from 2016 to ‘Monumental Grotesk’. I felt screwed, but I had the choice to do the better thing and I did — names matter, but I’m not getting into a conflict if I can avoid it.

Kent Lew

Also, in the U.S., you can become subject to the judgment of a USPTO trademark examining attorney who has to approve a registration.

In 2012, when Carter & Cone and Font Bureau submitted to register Matthew Carter’s “Postoni” — the name of the custom Bodoni-esque headline fonts that the Washington Post had been using since 1997— the USPTO rejected the application on the grounds that the name was too similar to Adobe’s registered trademark for Postino.

So, for retail release, the family was rechristened as Stilson.

Chris Lozos

the family was rechristened as Stilson

for the wrench that was thrown into it?  ;-)

Adam Jagosz

I think many of you will agree, though, that once you've decided on how to name your baby, according to how she is, feels, looks, and all, so that her name reflects her soul, is her guiding light; and you thereafter discover that someone bigger and older than you has already used that name for their own, far more perfect, usable, practical and soulless, though...
The dissappointment.
That's why sometimes picking a reasonable name, and making sure it's viable is so painstaking with some projects.

Tl;dr: Just kidding, disregard. Ofc if the name is the most important part of the typeface, the typeface itself must be of little value.

Btw, there was a thread recently mentioning that ITC wanted ITC Kabel sorted like 'Kabel' in lists. So again, have the cookie and eat it. Plus it makes some users unhappy.
And as a database-savvy coder, I see having the foundry name included in the font name very not-2NF. I mean, this column ought to be computed if requested by a boolean flag set by the designers, to the horror of the word processing software developers.

André G. Isaak

Btw, there was a thread recently mentioning that ITC wanted ITC Kabel sorted like 'Kabel' in lists. So again, have the cookie and eat it. Plus it makes some users unhappy.

Actually, that was me mentioning that I would prefer ITC Kabel sorted as Kabel. I have no idea what ITC would prefer (though IIRC, the version of Kabel from ITC is called ‘Kabel ITC’, whereas the one from Adobe is called ‘ITC Kabel’).

Adobe apps still sort ‘ITC Kabel’ as ‘Kabel’, but they also sort ‘New York’ as ‘York’ — which illustrates the dangers with apps trying to impose their own rules on sorting — their internal rules might make sense in some cases (e.g. sorting ‘New Baskerville’ as ‘Baskerville’), but generally not in all cases.

André

Wolf Böse

ugghh
just came across a recent release using a name that i have been using as well for one of my own. which made me wonder has anyone ever looked at this matter like song titles?

example:

"The Power of Love"
Three different songs with this title, by Frankie Goes to Hollywood, Huey Lewis and Jennifer Rush, were in the charts in the same year, 1985.
source: http://www.independent.co.uk/arts-entertainment/music/features/the-top-ten-different-songs-with-the-same-title-10251231.html

The distinquishing part obviously would only be the foundry initials. the designs wouldn't even have to be anything similar in this case. as they are not "cover-versions" but creations in their own right simply using the same "song"-name
I would find that legitimate. If referred to to including the author initials.

Wasn't Dalton Maag asking Rasmus Andersson recently to rename his font from Interface to something else. Not sure if this can be trademarked. Hence why they use InterFace i suppose.

i guess we have to ask if our initials are taken next… lol ughh


also a vsauce video on "When Will We Run Out Of Names?" for anyone who cares
https://www.youtube.com/watch?v=f8WsO__XcI0

jeremy tribby

i guess we have to ask if our initials are taken next… lol ughh

We're already there: https://www.microsoft.com/typography/links/vendorlist.aspx

Wolf Böse

neat!