Subject: RE: trademarked logos and GPL
From: "Lawrence E. Rosen" <>
Date: Wed, 24 Jan 2001 16:26:37 -0800

John, you asked:

>  > For example, it was
>  > because of mistakes made early in the game that the open source
>  > community lost all opportunity to obtain a trademark on "open
>  > source."
> Hmm, interesting.  I thought it was because of the descriptive
> nature of the proposed mark, which would make it unregisterable
> *a priori*.
> What mistakes were these?  Those who know history may not
> be condemned to repeat it.

The term "open source" might have been protected in the early days if it had
been consistently used as a trademark, and if everyone (including third
parties) who tried to use it in a non-trademark way had been told to stop
such uses.  Then, when Software in the Public Interest (SPI) made
application in February 1998 to the trademark office at the PTO to register
the "open source" mark as applied to "licenses," the person applying didn't
understand the distinction between a trademark and a certification mark, and
didn't understand the requirement that all trademarks (including
certification marks) must be applied to goods in interstate commerce.
Licenses aren't "goods," and so the trademark should have been applied to
software rather than to licenses.  The PTO mailed an office action in
mid-September 1998, refusing to register the mark without further
clarification, but nobody at SPI or OSI responded.  By the time all that had
been straightened out, the community was widely using the term "open source"
in a descriptive way rather than as a trademark.  Even companies like
Microsoft were publicly claiming that what they were doing was promoting
"open source."  The term, quite frankly, had lost precision.  I became
convinced that the community had forfeited all prospect of obtaining a
trademark on that term.

Open Source Initiative now uses the certification mark "OSI Certified" to
apply to the goods "open source software."  Application has been made to the
PTO to register that mark.  OSI will actively police that mark to ensure
that it is only applied to software that is distributed under OSI-approved
open source licenses.

I am not convinced that the term "open source" was descriptive when
initially created.  Bruce Peren's history of the events at the creation of
the open source concept (in "Open Sources: Voices from the Open Source
Revolution," ed. by Chris DiBona, et al., O'Reilly 1999, pp. 172-174) at
least leaves open the possibility that, had the community been more
sophisticated and diligent at the beginning about trademark issues, they
*might* have obtained a trademark.

>  > (Earlier this afternoon I
>  > was privately reminded -- by someone with perhaps an excess of
>  > protectionist tendencies -- of the California statute that provides
>  >  that "Any person . . . practicing law who is not an active member
>  > of the State Bar is guilty of a misdemeanor.")
> Surely saying that the law is such and such, as long as you don't
> masquerade as a lawyer, doesn't count as the practice of law!

Quite frankly, I am not as worried about random comments from members of the
community saying what the law is, as I am that OSI -- which sponsors the
list and some of whose board members actively participate in it -- might be
seen as encouraging the practice of law by non-lawyers.  As OSI's general
counsel, I believe I have a duty to protect OSI from such claims, spurious
though they may be.  So periodically I will probably remind participants on
license-discuss that they are free to say what they think the law is, but
they are encouraged to do it in a general fashion, and not in the form of
specific legal advice to specific companies.  And also, please remember, the
primary purpose of license-discuss is to comment on whether licenses satisfy
the OSD, not whether a specific license or license provision is appropriate
for a specific company.

/Larry Rosen
Executive Director, OSI