OSI enforcement? (Was Re: Microsoft use of the term "Open Source")

Matthew Flaschen matthew.flaschen at gatech.edu
Sun Jan 6 06:31:29 UTC 2008

Philippe Verdy wrote:
> Rick Moen [mailto:rick at linuxmafia.com] wrote:
>> Above, Philippe asserts that OSI could not be correctly asserted to own
>> an "open source" trademark (and no, capital letters are _not_ required)
>> without "registration", e.g., with USPTO.  Sorry, wrong.
> Possibly for the USA only,

Possibly?!  IANAL, but see
http://www.uspto.gov/web/offices/tac/tmfaq.htm on the official United
States Patent and Trademark Office site, which states, "Federal
registration is not required to establish rights in a trademark. Common
law rights arise from actual use of a mark. Generally, the first to
either use a mark in commerce or file an intent to use application with
the Patent and Trademark Office has the ultimate right to use and

Unless you have contrary legal evidence, I suggest your skepticism is

> but such tolerance in US does not mean that the
> trademark gets any protection elsewhere.

This in incorrect.  The U.K., and probably other countries also grant
common-law rights.

> Other countries will REQUIRE this registration. Otherwise the US would constantly steal trademarks used and
> registered elsewhere.

This does not make any sense.  Trademarks in the United States are
granted and/or recognized for first use.  A common-law right will not be
recognized if the mark is duplicative of an existing trademark.

> Trademark registration is effectively needed for international protection,
> without it, the trademark simply does not exist elsewhere, and all those
> authors that have used (and continue to use "open source" outside US are
> fully right to use it as they will, and it may even happen that they gain
> trademark protection in other countries,

Almost all countries have registration based on first use.   I wouldn't
be able to go to Europe and register a trademark on Windows just because
Microsoft hadn't done so yet.  I would be laughed out of court.

> it won't be enforceable against an internationally approved
> registered trademark, and US won't be able to forbid products using that
> registered trademark from being imported legally in US).

This is false.  In the U.S. I can't sell a product that infringes a
common-law trademark, regardless of where it was manufactured.

> The fact you may don't like the WIPO (notably its name that is denounced by
> open source supporters and free software supporters) is not relevant,
> because both need and highly depend on the protection of their licences by
> copyright laws.

You are conflating WIPO and Berne.  The Berne Convention was established
in 1886, when neither WIPO nor computer software were a twinkle in
anyone's eye.  WIPO now implements Berne, but that is hardly its only

Matt Flaschen

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