[OSGeo-Board] FW: shirt logos

[Jennifer Daehler]

All very good points.  Hopefully I can shed some light and not confuse.
It may be more efficient for me to sit in a board call at some point in
the future and we can discuss live voice.  There is also a lot of great
information about trademarks on www.uspto.gov:


1. When names are just names:  This can be confusing, particularly when
something is the name of an organization and also a trademark. Let me
use some examples from other contexts and hopefully this will facilitate
things.  Hopefully the Coca-Cola Company won't take issue with me using
them as my example in this email chain.

If you're just using the word "Coca Cola" to mean the name of the
company (as opposed to products/services delivered by that company), you
never use a trademark symbol.  This is actually considered a
"non-trademark use" because I am not using Coca-Cola as a trademark to
designate a product or service of a particular origin.
- EXAMPLE:  Coca-Cola was founded over a 100 years ago and has a museum
in Atlanta, GA.
- EXAMPLE:   Coca-Cola and Pepsi are big competitors.

Nobody can restrict me from using the term Coca-Cola to indicate the
name of the company (of course I need to do so in a manner that is
truthful and not misleading or derogatory, but that's a different issue
and has nothing to do with trademark law).  

Also, there is no problem with me using an apostrophe with the name of
company (provided that I'm referencing Coca-Cola in a non-trademark
manner as the name of the company):
- EXAMPLE:  Coca-Cola's museum is located in Atlanta, GA.  
- EXAMPLE:  Coca-Cola's biggest competitor is Pepsi.

Similarly, with the Open Source Geospatial Foundation:  this is also the
name of an entity.  If you use the name to mean the name of the
organization, then this is not considered a trademark use and you
wouldn't use a trademark symbol.  When you are using the name to refer
to the name of the organization (non-trademark use), it is also OK to
use a possessive.
- EXAMPLE:  The Open Source Geospatial Foundation was created to support
and build the highest-quality open source geospatial software. 
- EXAMPLE:  The Open Source Geospatial Foundation's goal is to encourage
the use and collaborative development of community-led projects.

2.  When names are trademarks:  a trademark is a word, phrase, symbol or
design, or a combination of words, phrases, symbols or designs, that
identifies and distinguishes the source of the goods of one party from
those of others. Trademark law considers this type of use grammatically
to be akin to using an adjective.  It is generally considered acceptable
to reference other people's trademarks in text to accurately refer to
their products.  

EXAMPLE: Coca-Cola(R) soda distributed in the U.S. contains corn syrup
whereas Coca-Cola(R) soda distributed in Argentina contains cane sugar.

Here I'm using Coca-Cola to designate a soda made by the Coca-Cola
Company (as opposed to soda made by any other company).

You might think that the Open Source Geospatial Foundation doesn't have
any products or services and so how can it ever be used in a trademark
sense?  You might not have products or services in a traditional
commercial sense, but you definitely have "products"/"services" that
trademark law would recognize as such.  

Those are things like your particular open source community (which is
distinguished from other open source communities), your "service" as a
web portal for projects, your "service" of providing open source
resources.  

EXAMPLE:  Open Source Geospatial Foundation(TM) portal

Using it this way is designating a particular service whose source is
your foundation.  You don't really want someone else creating a portal
under the same name unless you want to permit it and can have some
assurance of what that entity is offering through that portal.  So, for
instance, you might want to let a local chapter in another country
establish a portal of the same name.  But you might not want a
consulting group who charges lots of money for geospatial software
consulting services to do it.  This would confuse folks.  They might
wonder: has the organization changed its focus? [to one of your
anecdotes: this is why Linus cares so much about his Linux trademark --
he wants to protect the quality behind it and stop others from using it
to pass off cheap or confusing substitutes.]

Because you want the public to recognize your trademarks as coming from
one source, you want to use your trademarks consistently when you're
using them in a trademark sense to designate your products/services.
For example, do you want to say "OSGeo(R) community" or "OSGEO(R)
community"?  You're better off selecting one or the other and being
consistent. 
  
I think the vast majority of your uses will be non-trademark uses meant
to refer to the name of your organization rather than to the particular
services/products that originate from your organization. 

3.  About the guidelines:  The "rules" in the guidelines follow what
most trademark laws around the world say about how trademarks should and
shouldn't be used.  These rules only apply when using a name as a
trademark.  They don't apply when you're using your name as the name of
your organization.  They are meant to introduce consistency of use and
thereby avoid consumer confusion.

I really doubt this would ever be a problem for your organization, but
they are also meant to avoid having your trademark become a generic term
for a category of product/service (as opposed to a product or service
from a particular origin).  This is why there are restrictions on using
it as a noun or verb.  This is a problem for "Kleenex" (which arguably
has become a generic term for any facial tissue, whether manufactured by
Kimberly Clark or Walgreens) and for "xerox" (which arguably has entered
the common vocabulary as any act of creating a copy using a photocopy
machine).  Not a big worry for you guys.  

4.  Gentle policing:  a letter or email to someone using your marks in a
way not intended by you.  This will solve the huge majority of misuse
out there.  If folks really want to usurp your name, they'll ignore a
letter and so then you have a tougher decision.  Then you have to decide
whether to take stronger steps.  But you have a much better position in
your policing activities (including your initial gentle email) if you
can show that you have policed others in the past and have consistently
used your trademarks yourself.  If you don't want to reprimand others
for misusing your trademarks, then that's your choice as an
organization.  But you'll have a more difficult time creating consistent
recognition of what you have to offer as an organization if others are
also using OSGeo, your logo or Open Source Geospatial Foundation.

Hope this helps.  Lots of great materials can also be found at:
http://www.uspto.gov/main/trademarks.htm 

Best regards,
Jennifer




-----Original Message-----
From: Frank Warmerdam [mailto:fwarmerdam at gmail.com] On Behalf Of Frank
Warmerdam (External)
Sent: Wednesday, July 26, 2006 4:05 PM
To: Jennifer Daehler
Cc: Allan Doyle; Michael P. Gerlek; board at board.osgeo.org;
rich at richsteele.org
Subject: Re: [OSGeo-Board] FW: shirt logos

Jennifer Daehler wrote:
> The organization should also be "policing" how others use its
> trademarks.  Policing can be forceful or gentle.  

Jennifer,

I'm quite interested how to do policing gently.

> This organization seems to care greatly about participating in
> tradeshows, writing articles and interacting with other groups in this
> space -- why bother if you aren't recognized for who you are?  And why
> would other groups want your participation and contributions if they
> don't come to recognize the integrity/value/quality etc. of what you
> have to offer?

Well, I don't think we are in any immediate danger of imitators calling
themselves OSGeo.  Nevertheless, I'm in favor of taking prudent steps to
protect ourselves.

> I had prepared some suggested trademark guidelines for the
organization
> some time back.  I am attaching these guidelines here -- they are in
> draft form. 

I have read them over (now), and I have a few questions.  They include:

"""
Please Do Not:
You may not use our trademarks:
  o In, as, or as part of your own trademarks
  o To identify products or services that are not ours
  o In a manner likely to cause confusion
  o In a manner that implies inaccurately that we sponsor or endorse, or
    are otherwise connected with, your own activities, products, and
    services
"""

OK, these seem sensible.

"""
We also ask the following:
  o Please keep our trademarks distinct from other text, images, or
material
  o Please do not alter, edit, modify, or combine our trademarks
"""

I'm not clear how we can ask people to keep OSGeo distinct from other
text.  What does that mean?  Can folks not use OSGeo in a sentence?

"""
Also, our trademarks are adjectives (brand names) modifying nouns
(the generic service or product type). As a result:
  o Please do not use our trademarks as nouns or verbs
  o Please do not pluralize our trademarks
  o Please do not hyphenate our trademarks
  o Please do not render our trademarks possessive through use of an
apostrophe
"""

These I found very confusing.  I use OSGeo as a noun all the time.
Essentially I use it as a proper name for the organization and to
the best of my recollection proper names are nouns.   I was going to
give some examples of possessive use of OSGeo too, but on reflection
I can see that those can be mostly turned into adjective use.
For instance referring to "the OSGeo booth" as opposed to "OSGeo's
booth".
I'm still not sure why the above set of rules is important.

The rules on how to use OSGeo include this statement:

"""
In contrast, you do not need to use a trademark notice if you are making

reference to the Open Source Geospatial Foundation or OSGeo as the name
of our 
entity (rather than to denote our services or products) because this is
not 
considered a "trademark use."
"""

I personally don't understand the distinction.  One thing I
don't want to have to do is add (tm) every time I use OSGeo
in email, presentations, web sites, wiki pages or IRC.  I'm
afraid I just don't counts as using OSGeo as the name of the
entity as opposed to denoting services or products.   Clarification
would be appreciated.

At this point, I would like to offer a small personal anecdote.

Once upon a time I had some discussions with a company called
Mapping Science that wanted to promulgate a standard mechanism
for incorporating georeferencing information in JPEG2000 files.
I was interested in cooperation to ensure that only one "standard"
came into common use.  While I was able to convince Mapping Science
to release the specification under reasonable terms, they chose
to trademark the name (GeoJP2(tm)).

On the face of it, this didn't necessarily seem terrible. But in
the following months I found myself in a state of constant confusion
as to when I needed to append (tm) after using the phrase GeoJP2 (tm),
and whether I was supposed to put some little blurb (as you have
suggested in your guidelines) at the bottom of every email.  I got
into the habit of referring to the "format" as GeoTIFF-in-JPEG2000
much of the time just to avoid the legal hassles with full compliance.

So the reason I mention this, is that the act of trademarking
something seemed to suddenly inject a great deal of "legalism",
uncertainty and negative karma around the whole effort.  It was
a definite drag on adoption and buzz.

A second anecdote - though not really a personal one.  As has been
mentioned, Linux is a trademark owned by Linus and operated by Linux
International (I could be wrong on the details).  This was originally
done to protect Linux from improper use, and especially to ensure that
no one could claim control of it against the "real" Linux.  However,
it seems that to retain it, Linux International was required to enforce
it, which apparently included protecting it and in many circumstances
requiring someone to sign something to use the trademark.

This became an issue because Linux International suggested that the
Debian project ought to be licensing it for use in Debian Linux.  SPI
(Software in the Public Interest - the foundation umbrella for Debian
Linux, and which I am a member) debated this at some length.  I'm not
clear on the final outcome - I think SPI and Debian just ignored the
request.  But it caused a huge amount of rancour and negativity.

I raise these anecdotes as cautionary tales about the danger that can
come from enforcement, even in quite well intentioned situations.
Second, to emphasize that we need to come up with usage terms that will
not seem onerous or offensive to normal folks (assuming we want to
consider them trademarked).

Allan seems to raise some reasonable points about projects and
organizations
that don't seem to pursue trademark protection.  I'm still quite
confused
about what protection we need or what is accomplished by trademarking.

Best regards,
-- 
---------------------------------------+--------------------------------
------
I set the clouds in motion - turn up   | Frank Warmerdam,
warmerdam at pobox.com
light and sound - activate the windows | http://pobox.com/~warmerdam
and watch the world go round - Rush    | President OSGF,
http://osgeo.org