[Eg-oversight-board] Fwd: Evergreen trademark questions

[Galen Charlton]

Hi,

Responses from Tony Sebro regarding some questions posed by community
members about the trademark policy.

Regards,

Galen


---------- Forwarded message ----------
From: Tony Sebro <tony at sfconservancy.org>
Date: Wed, Oct 17, 2012 at 11:07 AM
Subject: Re: Evergreen trademark questions
To: Galen Charlton <gmc at esilibrary.com>
Cc: "Bradley M. Kuhn" <bkuhn at sfconservancy.org>


Hi, Galen.  See below.
On 10/17/2012 10:40 AM, Galen Charlton wrote:

Hi Tony,

We received the following questions from Evergreen community members
during the review period, for which I don't have an immediate answer.
Could you address them?

[1] What would be the preferred way of writing "Evergreen ILS" with a
trademark symbol?

Evergreen® ILS / Evergreen™ ILS

or

Evergreen ILS® / Evergreen ILS™

The ® symbol is only to be used with federally registered trademarks.
"Evergreen" has been registered; "Evergreen ILS" has not.  So, I'd
recommend "Evergreen®ILS," in general.

Is "ILS" is a widely-used acronym used to describe library systems?
If so, then there's not much sense in attempting to trademark
"Evergreen ILS"; it'd be like trademarking "Nike shoes" instead of
Nike® shoes.  On the other hand, if it's a unique moniker created by
the Evergreen community, then it's appropriate to use "Evergreen®
ILSTM" (although that's cumbersome), or even just "ILSTM" by itself.

[2] Does this policy need to address any future rebranding, like logo
updates? Or is that outside of the scope?

The policy can always be amended if and when Evergreen chooses to
rebrand.  I don't think the policy needs to explicitly state this; we
could just implement and publish a new policy when the time comes.  If
we get to this, I recommend that the new policy include a means of
phasing out (and, perhaps, eventually prohibiting) the use of the old
marks in some way.

[3] Also, this trademark policy is only valid in the USA, right?

The TM policy is valid across the globe, to the extent that it
describes ways that Conservancy/Evergreen is willing to allow the
marks to be used.  In that context, it's like any other community
policy, and can be enforced using traditional FOSS community means
(e.g., social pressure).  The real question is whether the trademark
policy is truly enforceable by law in foreign jurisdictions.  Answer:
not as much.   The "Evergreen" trademark is only registered in the US.
 But other jurisdictions allow for the creation of common-law
trademark rights without registration.  Our ability to enforce
unregistered marks in foreign countries will vary widely from country
to country.  I'd need to do more research to know exactly how hard we
could push (if at all), but in any event, an unregistered mark is
never going to be as strong and as enforceable as a registered mark.

Evergreen and Conservancy would also have to determine how much time,
funding, and resources we would want to devote to enforcing the policy
overseas.  Large, for-profit companies with far greater resources
struggle with trademark infringement in certain foreign countries.
It's by no means an easy thing to do.

To expand on that last question, one country in particular that comes
to mind is Canada.

If the EOB is interested in registering the Evergreen trademark in
Canada (or any other country), let me know and I'll put together an
estimate of the related legal costs and filing fees.  If we were to
register the mark in Canada, we would only need to amend the TM policy
to explicitly include the registered mark in the list of covered marks
at the beginning of the policy.

Best,
-Tony

-- 
Tony Sebro, General Counsel, Software Freedom Conservancy
+1-212-461-3245 x11
tony at sfconservancy.org
www.sfconservancy.org


-- 
Galen Charlton
Director of Implementation
Equinox Software, Inc. / The Open Source Experts
email:  gmc at esilibrary.com
direct: +1 770-709-5581
cell:   +1 404-984-4366
skype:  gmcharlt
web:    http://www.esilibrary.com/
Supporting Koha and Evergreen: http://koha-community.org &
http://evergreen-ils.org