For approval: ENCUL

[Mark Shewmaker]

On Fri, 2003-05-23 at 12:02, John Cowan wrote:
> Mark Shewmaker scripsit:
> 
> > OSI abandoned an application for a registered trademark, but you don't
> > have to register a trademark to own a trademark, it's just not as strong
> > a claim.  (I do wish they'd make another go of official registration
> > anyway--especially since they've now been applying the mark in commerce
> > for more than 5 years.)
> 
> Expensive and futile, since "open source" is clearly a descriptive mark and
> as such not subject to protection, any more than "software" is.

No, not futile, because:

1.  Looking at the history of the term, "Open Source" was a phrase 
    created for just this purpose, had to be initially explained as to 
    what it meant, and has built up a distinctive meaning over time.  
    IMHO, we only think of it as descriptive in the lay sense because 
    we're used to the phrase, which is totally different from whether
    it would be considered "merely descriptive" in the sense of 
    trademark law.  In any event, OSI dropped the original application 
    without bothering to even argue the point.  (grr!!!)

2.  Even if it truly were "merely descriptive", after 5 years of 
    continuous use, you can claim that it the term has become 
    distinctive:  

    Looking at US trademark law, from 15 USC 1052 (f), at    
    http://www4.law.cornell.edu/uscode/15/1052.html

    | Except as expressly excluded in subsections (a), (b), (c),
    | (d), (e)(3), and (e)(5) of this section, nothing in this chapter
    | shall prevent the registration of a mark used by the applicant
    | which has become distinctive of the applicant's goods in
    | commerce. The Director may accept as prima facie evidence that
    | the mark has become distinctive, as used on or in connection
    | with the applicant's goods in commerce, proof of substantially
    | exclusive and continuous use thereof as a mark by the applicant
    | in commerce for the five years before the date on which the
    | claim of distinctiveness is made

    And from the USPTO's general rules of practice at 
    http://www.uspto.gov/web/offices/tac/tmlaw2.html

    | Also, if the mark is said to have become distinctive of
    | applicant’s goods by reason of substantially exclusive and 
    | continuous use in commerce thereof by applicant for the five 
    | years before the date on which the claim of distinctiveness is 
    | made, a showing by way of statements which are verified or 
    | which include declarations in accordance with §2.20, in the 
    | application may, in appropriate cases, be accepted as prima 
    | facie evidence of distinctiveness.

    And for more than twenty paragraphs of excruciating detail into
    how the USPTO goes about figuring it all out, see the
    "Trademark Manual of Examining Procedure" at
    http://www.uspto.gov/web/offices/tac/tmep/1200.htm under the
    section "1212.05    Five Years of Use as Proof of Distinctiveness"

    To me it looks another shot at registration would go through.
    But then again, I'm not a lawyer, so I may be seriously confused
    about it all.

Even so, I wish OSI would try again at registering what to me is their
most valuable asset, namely the well-known and understood "Open Source"
mark.

(Well, well-understood unless you're Lucent, but at least they've been
getting flack for that misuse.)

 -Mark Shewmaker
  mark at primefactor.com

(Now I guess I'm going to have to include myself in the list of
those-annoying-people-who-rant-and-rave-on-things-not-quite-exactly-on-topic.)  
:-(
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