Subject: RE: For approval: ENCUL
From: "Lawrence E. Rosen" <>
Date: Fri, 23 May 2003 14:29:54 -0700

 Fri, 23 May 2003 14:29:54 -0700
Interesting point, Mark, but I don't think your references to trademark
distinctiveness apply even if we could prove it factually.

The mark "Open Source" was intended not as a trademark but as a
certification mark, meaning it was to be applied to third parties' goods
under the authority and control of OSI.  But as everyone keeps pointing
out, the mark "open source" has been applied by lots of companies to
lots of goods without any blessing by OSI.  How do we (or anyone else)
now claim ownership of such a certification mark?

We simply don't have that problem with the certification mark "OSI
Certified" as applied to open source software.  OSI owns it, we have
owned it since the beginning, and we have no intention of relinquishing

If any attorneys on this list have any suggestions to get around this
problem, I'm all ears.

/Larry Rosen
General counsel, Open Source Initiative
Rosenlaw & Einschlag, a technology law firm
3001 King Ranch Road
Ukiah, CA 95482
707-485-1242 * fax: 707-485-1243

> -----Original Message-----
> From: Mark Shewmaker [] 
> Sent: Friday, May 23, 2003 11:46 AM
> To: John Cowan
> Cc:
> Subject: Re: For approval: ENCUL
> 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    
>     | 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 
>     | 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
> 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
> (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-ex
> :-(
> --
> license-discuss archive is at

license-discuss archive is at