FoswikiTrademark

US Trademark Status

Foswiki trademark was awarded by US Patent and Trademark Office on Oct. 20, 2009.

Report on current status of trademark

Subsequent filing deadlines: (FAQ about trademark post-filing schedule)

• First filing of "Declaration of Use" between 5th and 6th year after registration date (Oct 2014 - Oct 2015) Submitted on Apr. 15, 2015 and accepted Apr. 20, 2015.
• Second filing of "Declaration of Use" and "Application for Renewal" between 9th and 10th years after registration date (Oct 2018 - Oct 2019)
• Successive filing of "Declaration of Use" and "Application for Renewal" between every 9th and 10th-year period calculated from registration date.

What can, and should we do with this Trademark?

• Can the trademark be transfered to a German registered non-profit association, or does it need to be held by a proxy? Yes, it can be transferred to the association.
• Do we care to maintain the trademark?
  • if so, what do we do to defend it? See subsequent filing deadlines listed above.
• When Sven was at OSDC2008, I was talking to Andrew Tridgell, and he suggested that perhaps the best thing to do is to register it, and then let it lapse - that way no-one can 'take it over'

Policy proposals

Abandon the trademark

• Cons
  • In the U.S., would allow someone else to establish usage for their products and services, and re-register it, rendering the initial registration moot.
• Questions
  • What are the international implications of abandoning a trademark?

Offer an perpetual, non-exclusive license to everyone

• Pros
  • Keeps another party from acquiring the trademark and then preventing others (including the Foswiki association) from using it.
  • Avoids costs of trademark enforcement.
• Cons
  • Trademark may be used by people in ways that can be confused with the Foswiki association and its activities.

Issue licenses to approved parties; enforcement on domain names not pursued

• Pros
  • Able to constrain who is able to use the trademark, in order to avoid confusion with the Foswiki association.
• Cons
  • Incurs costs and resources of having to enforce trademark (in North America, must actively defend trademark uses).
  • Allows Internet hosts to be established that may be confused with those used by the Foswiki association.
• Notes
  • As in the case with the Linux trademark, domain names that are used by the third party as a trademark remain within scope of trademark enforcement.
  • Foswiki association must agree upon rules and mechanism for approval.

Issue licences to approved parties; pursue enforcement on domain names

Same pros and cons as above, with the following modifications:

• Pros
  • Avoids presence of Internet hosts that can be confused with those uesd by the Foswiki association.
• Cons
  • Incurs more costs and resources to enforce trademark.
• Notes
  • See ICANN's uniform domain name dispute resolution policy for resolving disputes for non-country code top level domains. Sections 4(a) and (b) lay out grounds for a complainant to raise a dispute with the ownership of a domain:
    1. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
       1. your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
       2. you have no rights or legitimate interests in respect of the domain name; and
       3. your domain name has been registered and is being used in bad faith.
    2. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
       1. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
       2. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
       3. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
       4. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
  • D2001-0903 has set forth the following criteria to determine if a manufacturer’s trademark as a domain name by a dealer or reseller should be regarded as a "bona fide offering of goods or services":
    • the respondent must actually be offering the goods or services at issue
    • the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods)
    • the site itself must accurately disclose the respondent’s relationship with the trademark owner
    • the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

Discussion

As this project to a large part owes its existence to the private ownership of a trademarked name, it would be great to hear what people's opinions are on the usage of our project's name.

For example - is it ok with everyone that I (SvenDowideit) have registered http://foswikisupport.com and intend to run an Enterprise support business called FoswikiSupport from it?

-- SvenDowideit - 16 Dec 2009

Frankly, I think you are on thin ice there. The intent of your mark is "support for Foswiki", a nominative use of the mark. But I'm concerned that it sounds more like "support provided by Foswiki". There are other similar names, such as supportforfoswiki, which would be a lot less subject to confusion, and arguably more intention-revealing. However I acknowledge that experience with (tm)wiki has made me somewhat paranoid about use of marks. I'm not a trademark lawyer, and I'd rather not have to ask one as they cost a lot of money.

-- ConcernedCitizen - 16 Dec 2009

We need the trademark exactly for the reason Sven provided. In fact this is a very good example of how to protect the Foswiki trademark: by not allowing a corporate identity to take over the "Foswiki Support" market just by building up a brand that uses Foswiki in its name. Note also that Sven owns another domain that also sounds very similar to Foswiki - http://fosiki.com.

I'd strongly urge you, Sven, not to use foswikisupport.com for your business plans. It reuses the Foswiki brand and trademark by integrating it in your own brand.

Please be a bit more sensitive and responsible with regards to the Foswiki brand.

-- MichaelDaum - 16 Dec 2009

Actually I think "fosiki" predates "foswiki" and as such, Sven could reasonably protest about "foswiki" sounding too much like "fosiki". There has to be some flexibility and spirit of cooperation, here, or we will all end up shooting eachother.

-- CrawfordCurrie - 16 Dec 2009

I'll remove the off topic whinge about my fosiki brand tomorrow (yes, I registered both fosiki and foswiki as my brand in may-2008, so the entire thing predates this project) - and I very loudly declared this when we were choosing names.

I'd like non-inner circle responses to this please

but it reads to me like Michael may not have understood the implications of ConcernedCitizen's point : a nominative use of the mark

this is a key issue that needs to be formally decided. Basically, it comes down to a choice between:

1. we don't restrict anyone's use of the trademark (both Michael and Crawford argue against this, thou to different levels)
2. we do restrict everyone's use of the trademark, requiring that we, as a community write a set of rules that suit our raw nerves, and then pay significant amounts of money to lawyers to defend this trademark.

I'm obviously a little more on the fence with respect to the 2 choices - but I think its important for the community to realise, that you cannot expect everyone to play nicely - so you have to choose now to either be happy to see uses you don't like, or to put your money where your mouth is.

remember, this topic is for discussing and deciding the long term implementation of the Associations trademark policy - discussing my specific example should not overwhelm that long term view

• (added later) basically, imagine that an unknown financed startup has come to use telling us that they are starting a business called foswikisupport.com, and if you think its a bad idea, actually put forth a compelling argument, not an emotional response banking on my long term association with the project)

-- SvenDowideit - 16 Dec 2009

To the extent that the trademark registration will hopefully give foswiki some free points for protecting itself against somebody who would otherwise want to make the registration for themselves to wield it against the Foswiki community, I think it is a good idea.

Beyond that I don't expect a whole lot more. As for things using the word "foswiki" in their name, that doesn't bother me too much, although such things eg. foswikisupport.com make me a little anxious - my thoughts were: "is somebody unfairly exploiting the foswiki name/brand"? If it is clearly different looking and obviously not a thing that is part of "the" foswiki.org association, that's okay I guess...

Incidentally: Does a registration of a foswiki trademark mean that the FW thing is officially our logo?

-- PaulHarvey - 16 Dec 2009

If anyone else wants to build a business called "Foswiki Support" I would vote strongly against it, for the reasons stated above by Michael (sorry, Sven, nothing personal). I care less if anybody starts a business called "Wiki Experts" and advertise "We're experts in Foswiki".

But that's not really the core of the issue. The issue is what are we going to do if tomorrow a company called Foswiki.NET is founded and start selling "certified Foswiki packages"? We allow it? Endorse it? Sue it? Try to enforce the trademark/copyright/GPL licence?

-- RafaelAlvarez - 16 Dec 2009

mmm, Rafael, I think that your example is much more clear cut.

If a company started selling "certified Foswiki packages", they would be misusing the trademark specifically because they would be intentionally creating confusion in the marketplace over what the 'real foswiki' is.

and thus in that case, I think the Board would have no choice, and would have to defend the trademark to the limits of its abilities (as Lynnwood said on irc, we'd look for an experienced trademark legal firm willing to do it pro-bono - and its very likely that there would be no difficulties)

What I'm looking for in this discussion, is some for a sign that we're actually able to recognise the limits of the communities trademark, and for us to draw a line, beyond which we will start legal proceedings to defend the trademark.

Thus far all I can see is an emotional response to something that i beleive we (as a community) cannot actually restrict - essentially, it seems easier to bash Sven for touching a raw nerve, than to work out how we'll deal with the issue longer term.

-- SvenDowideit - 16 Dec 2009

In North America, as far as I know, it's an all or nothing proposition: either an organization defends its use of the trademark against all comers or else it becomes vulnerable to trademark abandonment. Thus if the community wants to restrict usage to any entity, be it a single person consultancy or a company, it will have to be ready to pursue all possible trademark infringement cases, granting licenses to those who are approved.

(Caveat: I am not a lawyer and this is not professional advice.) With respect to nominative use, although you can fairly use a trademark to describe your business, I don't believe this would entitle you to incorporate that trademark into an identifying mark of your own for your services. Whether or not this would extend to a domain name, I'm not sure.

(Regarding GPL: as the whole point is that it gives others the right to distribute, it can't be used to stop a company from releasing a certified version of Foswiki, and this is why numerous open source organizations employ trademarks to keep the release of official versions in the hands of the organization.)

(Regarding the question of an official logo, the Foswiki organization can choose to register as many trademarks as it likes/is willing to pay for.)

-- IsaacLin - 17 Dec 2009

Let's sum up

1. Lynnwood already acquired the trademark for Foswiki in North America on behalf of the community in the best purpose to hand it over to the community
2. The Foswiki Association e.V. will take over ownership and take care of it. That's one of the main purposes of this organization.
3. Nobody is allowed to create a business using Foswiki in its name. This most probably extends to the domain name of a firm as it is part of its brand (needs clarification).
4. Acquiring the trademark in North America was needed. Thanks to Lynnwood to act on it so rapidly even though the legal entity to take it over didn't exist at that point in time. I fully support his actions and am happy to see that we have a protected trademark in place without delaying its registration further more.
5. The trademark serves as a protection against trademark infringement. Nothing more. As such its purpose is already fulfilled serving as a deterrent. History has shown that years of voluntary work was taken over by private trademark holders. We won't allow this to happen again with Foswiki.
6. In the rare case that the Foswiki Association detects a trademark infringement it will try to resolve the conflict using non-official steps first but will also escalate the case and contact lawyers as needed.
7. As a test case we will have to discuss how to proceed with foswikisupport.com registered by one of the community members.

-- MichaelDaum - 17 Dec 2009

close, but not quite right:

steps and processes

1. Lynnwood already acquired the trademark for Foswiki in North America on behalf of the community in the best purpose to hand it over to the community
2. The Foswiki Association e.V. will take over ownership and take care of it. That's one of the main purposes of this organization.
3. we need to understand what aspects of the use of the trademarks that we are able to govern
4. we need to discuss and decide what rules we, the community want to apply to the use of the trademarks that we are able to govern

somewhat side truths - not steps/processes

1. Acquiring the trademark in North America was needed. Thanks to Lynnwood to act on it so rapidly even though the legal entity to take it over didn't exist at that point in time. I fully support his actions and am happy to see that we have a protected trademark in place without delaying its registration further more.
2. The trademark serves as a protection against trademark infringement. Nothing more. As such its purpose is already fulfilled serving as a deterrent. History has shown that years of voluntary work was taken over by private trademark holders. We won't allow this to happen again with Foswiki.

desired/proposed rules & policy as written by MichaelDaum:

1. Nobody is allowed to create a business using Foswiki in its name. This most probably extends to the domain name of a firm as it is part of its brand (needs clarification).
2. In the rare case that the Foswiki Association detects a trademark infringement it will try to resolve the conflict using non-official steps first but will also escalate the case and contact lawyers as needed.
3. As a test case we will have to discuss how to proceed with foswikisupport.com registered by one of the community members.

comments by SvenDowideit:

I created this topic specifically because I strongly had the feeling that many people assume that registering a trademark means there is no related context in which that trademark can be used without permission. Michael's and other people's reaction on irc seem to support this opinion. From my recollection, trademark ownership only serves to protect the holders from others causing confusion in the marketplace in the limited scope of that trademark.

That means that its actually going to be difficult to restrict the creation of businesses or domains etc so long as they are not causing this confusion. (Ie, thinkpads.com does not claim to create thinkpads, nor to provide better thinkpads, twiki.com does not claim to provide a wiki, or wiki services, and so on).

yes, foswikisupport.com is intended as a trivially solveable test case (because my skin in that game is only the $9.95 it cost to register it), but if you use that to avoid creating a policy that the board can act on, and one that understands the limitations of trademark law, you're not helping this project.

Michael is suggesting that we can restrict the use of foswiki in any domain or business - I'm pretty sure that we can't - I think we can't restrict foswikicustomiseationservices.com or foswikiplumbing.com, and personally feel we shouldn't want to be sending out unofficial cease&desists unless there is a credible and good reason to do so. I also wonder if we have the right to restrict the registration of a domain - I think we only have a right if that domain is used in a way that contravenes our trademark.

To re-re-re-iterate. The point of this topic is to start people thinking about the 2 red points , and then to write that up. I gave 2 options at the top wrt policy style - one that I think we can't do, and the other that it looks like the community isn't open to (but was given to me by someone ( tridge) whom I consider brighter and more learned than I am. So its up to you to start writing actionable policy ideas that we can vote on too.

-- SvenDowideit - 17 Dec 2009

as a possibly functional example that may suit most people - http://www.drupal.com/trademark , and another simpler one at http://www.debian.org/trademark

(and if that style of policy were adopted, I'd point foswikisupport.com to http://foswiki.org/Support and be happy)

however, as http://drupaltrademarkpolicysucks.com/?q=node/1 asserts, I don't actually beleive that its a legally valid policy - thankfully i'm not a lawyer, and Dries did consult with quite a few..

The Software Freedom Law Center have an irc channel on freenode.. #sflc

-- SvenDowideit - 17 Dec 2009

This starts getting too clouded. Let's just finish the trademark task by passing it over to the Association and move on. I don't see much value in further discussing trademarks here.

-- MichaelDaum - 17 Dec 2009

huh? this task/topic is about the step after passing the tm to the association - the entire point is to work out what we do with it, and how we as an association want to portray ourselves.

but then, if no-one actually cares enough to suggest or decide anything, I guess we'll end up with a dead trademark pretty quickly

"Owning" a Trademark - The SugarCRM et al License Debate

-- SvenDowideit - 17 Dec 2009

I have a suggestion: can we separate the discussion about domain names from the rest of the trademark issues? In regular advertising copy, it's relatively simpler to judge fair use, since there is surrounding context that clarifies the use. Where a person or organization is attempting to incorporate the Foswiki trademark into its own identifying phrase or symbol, and its services or products may be confused with those offered by the Foswiki organization, then I believe there is sufficient precedent to require licensing (assuming of course that the Foswiki association chooses to enforce its trademark).

Regarding domain names: at least for the non-country specific domains (and for some of the country-specific ones), note that registrars have agreed to ICANN's uniform domain name dispute resolution policy, where the dispute is ruled upon by an administrative panel of one to three people. Though arbitrators make their living from their reputations of fair-mindedness, I think it is inevitable that there may be some inconsistency in rulings while people come to terms with what they believe is fair. Since this is a matter of contract law, the panel's ruling is final, and so precedent may not weigh as heavily upon the members as it might for a formal legal proceeding. Thus trying to figure out what the panel of the day would determine to be fair use may well be a moving target, and difficult to determine ahead of time.

(Some more info on how the the WIPO Arbitration and Mediation Center administers the dispute resolution process.)

-- IsaacLin - 17 Dec 2009

Sven and Michael, you are both coming across unnecessarily aggressive here. This is an issue that has to be thought over, not fought over. We do have to establish a policy for how we handle the trademark; with this projects' history, we cannot rely on good behaviour.

Isaac, thank you. Your wording "Where a person or organization is attempting to incorporate the Foswiki trademark into its own identifying phrase or symbol, and its services or products may be confused with those offered by the Foswiki organization" summarises the problem nicely. The link to the Drupal project provided by Sven is an interesting one, and led me to http://www.linuxmark.org/faq.php. We could do worse than copy their approach.

-- CrawfordCurrie - 17 Dec 2009

Here are some cases I found on the WIPO site where nominative fair use was raised as a defense. The rulings are written in terms of the following three elements listed in the dispute resolution policy:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

• D2009-0184: legodb.com, legodb.net, legodb.org, legotemple.com, legotemple.net, legotemple.org
  • decision: transfer to complainant
  • all three elements of the complaint were ruled to have been met
  • though no specific reference to nominative fair use appeared in the findings, the panel judged that "there is a considerable possibility that the public will perceive Respondent’s domain names either as domain names owned by Complainant or that there is some kind of commercial relation with Complainant."
• D2000-0624 was referred to, saying that "once Complainant has asserted that Respondent has no rights or legitimate interest, the burden of proof shifts to Respondent. Respondent must then make more than an assertion that it has rights or legitimate interests and must provide factual evidence in support of its claim."
• D2008-0936: ittbarton.com, itt-barton.com, and others
  • decision: complaint denied
  • only the first element of the complaint was ruled to have been met
  • referred to D2001-0903 for the following criteria to determine if a manufacturer’s trademark as a domain name by a dealer or reseller should be regarded as a "bona fide offering of goods or services":
    • the respondent must actually be offering the goods or services at issue
    • the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods)
    • the site itself must accurately disclose the respondent’s relationship with the trademark owner
    • the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
• D2004-0481: porsche-buy.com and porschebuy.com
  • decision: complaint denied
  • reference made to D2001-0903; second element was ruled to not have been met * D2002-0946: discount-marlboro-cigarettes.com
  • decision: transfer to complainant
  • all three elements of the complaint were ruled to have been met
  • products of competitors were being sold
  • "presentation of Respondent’s website is likely to mislead Internauts into believing the site is operated or endorsed by or affiliated with Complainant. In particular, the dominant position of the "red roof" logo and the presentation of the trademark and copyright information, without any statement as to the true ownership of the site or any disclaimer of association with Complainant, create a strong impression that the site is an official site of Complainant. It is unnecessary to decide whether any disclaimer could be effective."
  • reference made to D2000-0847: use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services:
• D2000-0847: madonna.com
  • decision: transfer to complainant
  • all three elements of the complaint were ruled to have been met
  • adult entertainment site; in ruling on second element, stated that "name was selected and used by Respondent with the intent to attract for commercial gain Internet users to Respondent’s web site by trading on the fame of Complainant’s mark. We see no other plausible explanation for Respondent’s conduct and conclude that use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services."
  • in ruling on third element, stated that "the evidence shows a deliberate attempt by Respondent to trade on Complainant’s fame for commercial purposes."
• D2009-1182: (domain name about news event)
  • decision: complaint denied
  • first element was ruled to have been met; second element was not (no ruling made on third)
• D2006-1003: pepperdineuniversitywaves.com and pepperdineuniversitywaves.net
  • decision: transfer to complainant
  • all three elements of the complaint were ruled to have been met
  • nominative fair use defense was rejected
• D2003-0399: lipitorinfo.com
  • decision: complaint denied
  • first element was ruled to have been met; second element was not (no ruling made on third)
  • contrary to D2009-0184 and D2000-0624, the ruling states "In the proceeding, the Complainant bears the burden of proof in establishing the absence of rights or legitimate interests." However, note section 4 (c) of the policy outlines how a respondent can demonstrate it meets the second element, and as such it seems reasonable that the burden of proof be placed on the respondent.
• D2005-1329: (drug name + stories.com)
  • decision: transfer to complainant
  • all three elements were ruled to have been met
  • regarding second element: "The bona fide offering and fair use provisions of Policy 4(c) are both unavailable because Respondent has linked to domain names that it controls where it describes competitive products as the equal of Complainant’s products. Respondent may have the right to do so under a neutral domain name, but not under a domain name that is confusingly similar to Complainant’s trademark."
• D2003-0341: holidayinnsuwanee.com and holidayinnsweetwater.com
  • decision: transfer to complainant
  • all three elements were ruled to have been met
  • nominative fair use was rejected:

    However, Respondent’s use of the mark in the disputed domain names suggests to Internet users that Complainant sponsors or endorses Respondent’s hotel reservation services. The famous mark "HOLIDAY INN" appears as the initial and principal visual identifier in the disputed domain names, and the geographic identifiers added to the mark do nothing to dispel the suggestion the principal identification conveys regarding sponsorship or endorsement. A logical conclusion on viewing the disputed domain names is that Complainant itself (or through its authorized representative(s)) is offering room reservations at the locations indicated by the disputed domain names. Respondent has deliberately created the impression that hotel reservation services are being offered by Complainant, for example, by including a toll-free reservation number said to offer "Holiday Inn Reservations Worldwide" and by including information regarding Complainant’s corporate headquarters. There is no disclaimer on Respondent’s website to indicate the absence of a connection between Complainant and Respondent. Respondent can readily offer to resell "HOLIDAY INN" hotel rooms on the Internet without using Complainant’s mark in domain names, and without thereby enhancing the impression that its reservation services are sponsored or endorsed by Complainant.

-- IsaacLin - 17 Dec 2009

I think we have the protection we need by being an officially registered association Foswiki e.V in Germany, having domain names foswiki.org, foswiki.net and foswiki.net, and running an active site and issueing official releases called Foswiki.

We are not a commercial company.

We do not have funds to acts like a multinational company.

All this amateur lawyer talk bores me to death!

-- KennethLavrsen - 18 Jan 2010

Sven pointed out the Debian trademark policy is short and to the point. Here it is, reworded for Foswiki:

We allow all businesses to make reasonable use of the Foswiki trademark. For example, if you make a CD of our Foswiki distribution, you can call that product Foswiki. If you want to use the name in some other way, you should ask us (the Foswiki Association board) first. To be fair to all businesses, we insist that no business use the name Foswiki in the name of the business, or a domain name of the business.

The corresponding logo terms would be:

Copyright (c) 2010 Software in the Public Interest This logo or a modified version may be used by anyone to refer to the Foswiki project, but does not indicate endorsement by the project.

Note: we would appreciate that you make the image a link to http://foswiki.org/ if you use it on a web page.

These terms seem to have worked quite well for Debian.

-- CrawfordCurrie - 18 Jan 2010

And those two paragraph basically sums up all we need.

Just to be clear in one point: Foswiki.NET could not exist, but We-Build-Great-Wikis.NET could, and they can make a business selling "Certified and fully tested Foswiki packages" but not "THE Certified Foswiki package" or "Official Foswiki Packages".

-- RafaelAlvarez - 19 Jan 2010

It is important to note that one reason that this policy works, is because Debian has delegated the responsibility for chasing trademark infringement to SPI - in my opinion, we should do the same (presumably there is an EU equivalent organisation which we can talk to).

-- SvenDowideit - 21 Jan 2010

There's nothing I can see in the SPI charter that would prevent it working with an EU-based association. It would be worthwhile contacting the SPI to find out whether this is the case.

-- CrawfordCurrie - 21 Jan 2010

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