For approval: ENCUL

[Mark Shewmaker]

On Fri, 2003-05-23 at 17:29, Lawrence E. Rosen wrote:
> Interesting point, Mark, but I don't think your references to trademark
> distinctiveness apply even if we could prove it factually.
> 
> The mark "Open Source" was intended not as a trademark but as a
> certification mark, meaning it was to be applied to third parties' goods
> under the authority and control of OSI.

Yes, I've been sloppily using the term "trademark" in the generic sense
of encompassing all the different types--I realize that what's at issue
here is a certification mark, and I should have been more explicit and
exact in my wording throughout.

(But I think it does apply--as I posted just a few minutes ago, the
5-year-presumption-of-distinctiveness rule is expanded in later section
to apply to certification marks as well.)

> But as everyone keeps pointing
> out, the mark "open source" has been applied by lots of companies to
> lots of goods without any blessing by OSI.  How do we (or anyone else)
> now claim ownership of such a certification mark?

My understanding is that by and large, companies are applying the mark
with or assuming OSI's (implied) permission and blessing.  That is, that
they're using it exactly as a certification mark.  The only thing you've
technically dropped, as far as I know and understand, is the one attempt
at officially registering the mark, not any other ownerships to the
mark.

As far as the few cases in which people are using it in other manners,
(for which there is always a firestorm of debate), I would again look at
the Trademark Manual of Examining procedure, in the section I listed
previously, http://www.uspto.gov/web/offices/tac/tmep/1200.htm ,

|1212.05(b)   “Substantially Exclusive and Continuous”
|
| The five years of use does not have to be exclusive, but may be 
| “substantially” exclusive.  This makes allowance for use by others
| that may be inconsequential or infringing, which does not necessarily 
| invalidate the applicant’s claim.  L.D. Kichler Co. v. Davoil, Inc.,
| 192 F.3d 1349, 52 USPQ2d 1307 (Fed. Cir. 1999).  

I would take that to mean that if a few people are sometimes using your
certification mark inappropriately, that that won't by itself block
registration.

> We simply don't have that problem with the certification mark "OSI
> Certified" as applied to open source software.  OSI owns it, we have
> owned it since the beginning, and we have no intention of relinquishing
> it.

I suppose I do have a problem with it, in that it's not IMHO the best
term to use.  "Open Source" is a very powerful term, it's very well
recognized, and if OSI could possibly legally own it as a certification
mark, that would IMHO be a much better marketing term than "OSI
Certified."

In the mode of a programmer types looking for the freedoms of FLOSS
code, folks aren't going to worry about the naming of the mark--it's not
an issue at all.  And, as part of it's purpose that comes from history
of the OSD starting from the debian free software guidelines, any
recognizable term is fine.

However, from a *marketing* standpoint, which is the whole reason the
term "Open Source" was coined, that term has such invested mindshare
that I would think that OSI should still pursue getting a registered
trademark.

I am thinking of it all in these terms:

1.  If OSI could magically, instantly, and freely get a registration to 
    "Open Source" as a certification mark, would OSI want it?

    (ie, does the existence of a registered "OSI Certified" mark mean 
    that OSI would reject "Open Source" if it were handed to them on a 
    silver platter?)

Then to go back to the real world:

2.  Assuming a reasonable likelyhood of being able to get the 
    registration in reality, given time and money, would OSI be
    interested in pursuing the matter again?

> If any attorneys on this list have any suggestions to get around this
> problem, I'm all ears.

Woohoo!  That's good to hear.  (An open mind.  Or, uhm, ears)  :-)

 -Mark Shewmaker
  mark at primefactor.com
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