[steering-discuss] trademark use request

Hello,

I received a trademark use request from an extension vendor. For confidentiality reasons (the product has not yet been launched), I'll remove the name, but the request is as follows:

Front of the product box:
XYZ for OpenOffice and LibreOffice

Back of the product box:
LibreOffice is a registered trademark of The Document Foundation.

My thoughts:

- OpenOffice is written wrong (.org is missing, but that's not our concern)
- TDF doesn't legally exist, so I would simply remove the trademark holder entity from the text.

Otherwise, I am fine with the text, as it doesn't look like an official product, nor that we endorse it; IMHO, it is not even required to get our permission to use it from a legal point of view. However, IANAL.

Thoughts on that?

Florian

Hi :slight_smile:
+1
I like it. It gets the name "out there". Perhaps the back of the box could say

"LibreOffice is a registered trademark." as you suggested? or
"LibreOffice is owned by The Document Foundation and is a registered
trademark."?
I thought the Branding Guidelines would cover this sort of request?
Regards from
Tom :slight_smile:

Fine with me.

Best,

Charles.

Hello,

I received a trademark use request from an extension vendor. For
confidentiality reasons (the product has not yet been launched), I'll
remove the name, but the request is as follows:

Front of the product box:
XYZ for OpenOffice and LibreOffice

Back of the product box:
LibreOffice is a registered trademark of The Document Foundation.

My thoughts:

- OpenOffice is written wrong (.org is missing, but that's not our

concern)

- TDF doesn't legally exist, so I would simply remove the trademark
holder entity from the text.

Otherwise, I am fine with the text, as it doesn't look like an official
product, nor that we endorse it; IMHO, it is not even required to get
our permission to use it from a legal point of view. However, IANAL.

Thoughts on that?

Florian

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Skype: floeff | Twitter/Identi.ca: @floeff

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Hi Florian

I received a trademark use request from an extension vendor. For
confidentiality reasons (the product has not yet been launched), I'll
remove the name, but the request is as follows:

Back of the product box:
LibreOffice is a registered trademark of The Document Foundation.

Assuming that the TM _is_ actually registered in the name of TDF, then
yes, this is OK.

Alex

Hi,

Assuming that the TM_is_ actually registered in the name of TDF, then
yes, this is OK.

legally, the German association "Freies Office Deutschland e.V." is the current trademark holder, as TDF doesn't exist as legal entity yet.

Florian

Hi Florian,

legally, the German association "Freies Office Deutschland e.V." is the
current trademark holder, as TDF doesn't exist as legal entity yet.

Ideally then, reference should be made to the FOD Verein and not to TDF.
Not mentioning the name of the rights holder at all opens the person who
publicises such a mark on their product to allegations of fraud,
trademark infringement, and false assertion of rights (jurisdiction
dependent as always of course), including via third parties (i.e. it
doesn't require TDF to take positive action). Trademark law can be a
real pain at times :-)). In general, this is relatively low risk stuff.

Alex

Hi :slight_smile:
Thanks Alex. It's always good to hear the legal fact rather than the rest of us
just guessing at what seems reasonable. Presumably the org has to be spelled
out in full? Can it say "on behalf of TDF"? Something like

"The LibreOffice trademark is registered to Freies Office Deutschland Verein on
behalf of The Document Foundation." ?

For some reason your post arrived in my inbox a long long time after it normally
'should' have done. I think it's my @#a! email client as it has happened to a
few other posts too but i am still not happy with the idea of changing it.

Apols and regards from
Tom :slight_smile:

Hi Alex,

Ideally then, reference should be made to the FOD Verein and not to TDF.
Not mentioning the name of the rights holder at all opens the person who
publicises such a mark on their product to allegations of fraud,
trademark infringement, and false assertion of rights (jurisdiction
dependent as always of course), including via third parties (i.e. it
doesn't require TDF to take positive action). Trademark law can be a
real pain at times :-)). In general, this is relatively low risk stuff.

hmmm... do I get it right that not mentioning any trademark protection is better than mentioning that a mark is protected, but not naming the registrant?

Florian

Hi Florian,

hmmm... do I get it right that not mentioning any trademark protection
is better than mentioning that a mark is protected, but not naming the
registrant?

The easiest way around such a situation in the present state of...flux,
would be to indicate that :

"LibreOffice is a registered trademark of its corresponding registered
owner or is in actual use as a trademark in one or more countries."

In this way, you avoid having to worry about whether or not you have
designated the rightful owner, but by the same token have recognised
that the trademark rights exist. That's not to say that such an all
inclusive reference might not bump against on some local legislative or
regulatory requirement somewhere in the world, but it is a fairly
comprehensive start :slight_smile:

Alex

+1. That's the way I've always handled this sort of situation at IBM and Sun.

S.

Hi :slight_smile:
+1
It's great to hear from people that have a strong background in an appropriate
area. Thanks Alex :slight_smile:
Regards from
Tom :slight_smile:

Hi Alex,

The easiest way around such a situation in the present state of...flux,
would be to indicate that :

"LibreOffice is a registered trademark of its corresponding registered
owner or is in actual use as a trademark in one or more countries."

thanks a lot for the feedback! I've tried to merge that sentence into what we currently have on the bottom of all websites.

How does

"LibreOffice" and "The Document Foundation" are registered trademarks of their corresponding registered owners or are in actual use as trademarks in one or more countries. Their respective logos and icons are subject to international copyright laws. The use of these therefore are subject to our trademark policy."

sound? Shall we use this?

Thanks again,
Florian

Hi Florian,

"LibreOffice" and "The Document Foundation" are registered trademarks of
their corresponding registered owners or are in actual use as trademarks
in one or more countries. Their respective logos and icons are subject
to international copyright laws. The use of these therefore are subject
to our trademark policy."

I would only change the last sentence to :
"The use of these intellectual property rights as a whole is laid out in
our trademark policy."

Not having looked at the trademark policy in a while or followed the
discussions, I assume that the logos as graphical elements protectable
by copyright are also covered therein ?

Alex

Hi Florian,

"LibreOffice" and "The Document Foundation" are registered trademarks of
their corresponding registered owners or are in actual use as trademarks
in one or more countries. Their respective logos and icons are subject
to international copyright laws. The use of these therefore are subject
to our trademark policy."

I would only change the last sentence to :
"The use of these intellectual property rights as a whole is laid out in
our trademark policy."

As a matter of general style I believe TDF should not use the controversial expression "intellectual property" anywhere. I suggest the following phrase:

"LibreOffice" and "The Document Foundation" are registered trademarks of
their corresponding registered owners or are in actual use as trademarks
in one or more countries. Their respective logos and icons are also subject
to international copyright laws. Uses are explained our trademark policy."

Cheers,

S.

Hi Simon,

As a matter of general style I believe TDF should not use the controversial expression "intellectual property" anywhere. I suggest the following phrase:

> "LibreOffice" and "The Document Foundation" are registered trademarks of
> their corresponding registered owners or are in actual use as trademarks
> in one or more countries. Their respective logos and icons are also subject
> to international copyright laws. Uses are explained our trademark policy."

IP might indeed be a tough term, I agree.

However, I feel that "Uses are explained..." isn't strong enough. Wouldn't my original proposal ("...subject to our...") be better and more binding?

Florian

I'm not sure about "binding" as I think "explained" is actually an assertive word, but sure, that's fine too. I was just trying to be concise!

S.

Hi,

I'm not sure about "binding" as I think "explained" is actually an assertive word, but sure, that's fine too. I was just trying to be concise!

I'm not a native speaker, so you have much more insight into the English language than I do. :wink:

So, the current proposal would be:

"LibreOffice" and "The Document Foundation" are registered trademarks of their corresponding registered owners or are in actual use as trademarks in one or more countries. Their respective logos and icons are also subject to international copyright laws. Uses are explained our trademark policy.

Alex, how does that sound from a legal point of view? Is it strong enough?

Thanks,
Florian

Hi Florian,

Alex, how does that sound from a legal point of view? Is it strong enough?

"Usage is explained in our trademark policy."

Alex

Second thoughts,

subject to international copyright laws. Uses are explained our
trademark policy.

better still :

"Use thereof is explained in our trademark policy."

Alex

Second thoughts,

subject to international copyright laws. Uses are explained our
trademark policy.

better still :

"Use thereof is explained in our trademark policy."

I agree that's more precise English. I am a little concerned it's uncommon usage that those with English as a second language might consider difficult, and thus I prefer your earlier suggestion:

"Usage is explained in our trademark policy."

No big issue though, just a preference. I'd welcome your comment.

S.