Re: Urgent Trademark Legal Action: FW: Office Action Received for US Trademark Application for OPEN MOBILITY FOUNDATION

[Jamie Clark <jamie.clark@oasis-open.org>]

[Internal reply]

 Hi Mike. You have seen what Scott and I said to Kevin the TM lawyer, in a separate thread. What I can add to that is not very impressive, just this:

• Kevin is from the same law office used by LA City/Lacuna, pre-formation, to get TMs started. There's correspondence from back then, cutting off when Jascha took over. It seems clear that Jascha would have had additional communications giving direction to Kevin's firm, but I do not think we received copies of those (nor would we have needed to). Last I saw of that thread is appended below, dated July 2019.
• Based on our limited experience, it's fairly common to have USPTO examiner issues with "statement of use" evidence;Â and the fees most recently being quoted by that law office do not seem terribly out of line for simple applications.
  

Cordially, Jamie

direct nonpublic mobile +1.310.293.6739

James Bryce Clark, General Counsel, OASIS Open, setting the standard for open collaboration

From 2019:

---------- Forwarded message ---------
From: Adam Stephenson <adam@iptech.law>
Date: Fri, Jul 12, 2019 at 5:03 PM
Subject: RE: Possible TM transfer, no commitments ter
To: Jamie Clark <jamie.clark@oasis-open.org>, Todd Petersen <todd@ellis-and-associates.com>
Cc: OMF Exec Dir <exec_dir@openmobilityfoundation.org>, Scott McGrath <scott.mcgrath@oasis-open.org>, Victoria Dower <victoria@ellis-and-associates.com>

Jamie,

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After speaking with Todd, we have decided to expressly abandon the existing trademark application for OPEN MOBILITY FOUNDATION and the refile the application in the name of Open Mobility Foundation.

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Attached are the filing receipts for the express abandonment and for the filing of the new trademark application which took place this afternoon. To avoid the Trademark Office trying to argue there are joint applicants for the trademark, I filed using Open Mobility Foundationâs name as my understanding after reviewing OASISâs documents is that Open Mobility Foundation is a separate LLC from OASIS Open Development Foundation LLC itself (this lets me just list one owner, which is what we want in this situation).

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At this point, I recognize that my filing the new application in the name of Open Mobility Foundation has mean that I have, in this limited way, represented the company solely for the purposes of filing the new application. If you have other trademark counsel OASIS uses to handle trademark applications for companies associated with the foundation, I think it would be wise to have new counsel step in at this point and take over handling this case to minimize any connections with Movement Technologies.

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However, I am happy to keep assisting with this case if it is what Open Mobility Foundation and the parties wish me to, I would just need to get a formal engagement agreement executed with Open Mobility Foundation to formalize the relationship. In about 3-3.5 months the Trademark Office Examiner will begin the examination process for the new application so we have some time before there will be any activity with the application.

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Let me know your preference going forward. Thanks!

Â

Adam

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From: Jamie Clark <jamie.clark@oasis-open.org>
Sent: Friday, July 12, 2019 12:39 PM
To: Adam Stephenson <adam@iptech.law>; Todd Petersen <todd@ellis-and-associates.com>
Cc: OMF Exec Dir <exec_dir@openmobilityfoundation.org>; Scott McGrath <scott.mcgrath@oasis-open.org>; Victoria Dower <victoria@ellis-and-associates.com>
Subject: Re: Possible TM transfer, no commitments ter

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Thanks, figured that might be the case. Deferring to Todd's team on the transfer or re-file then. If it's re-file then should be in the name of ->

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Open Mobility Foundation, a series of OASIS Open Development Foundation LLC, a Delaware series limited liability company.

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Todd and I can talk about how and when to do so, if needed. Maybe in such cases one has the withdrawal and a second use application pretty much sequentially? cordially Jamie

James Bryce Clark, General Counsel, OASISÂ

Advancing open data, code and standards for the global information society https://www.oasis-open.org/staffÂ

OpenMobilityFoundation.org (new), an OASIS-hosted open source program
EU 2019 Rolling Plan for ICT Standards: https://j.mp/EUstds2019

Borderless Cybersec Oct 2019:Â DC 2018, Prague 2017,ÂNYC 2017,ÂTokyo 2016,ÂBrussels 2016,ÂWorld Bank 2015

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On Fri, Jul 12, 2019 at 12:05 PM Adam Stephenson <adam@iptech.law> wrote:

Jamie,

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There was a pre-screening search done prior to filing. Given about 6 weeks have passed since filing, I think the odds of intervening filing being fairly low at this point.

Â

Adam

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From: OMF Exec Dir <exec_dir@openmobilityfoundation.org>
Sent: Thursday, July 11, 2019 5:50 PM
To: Adam Stephenson <adam@iptech.law>
Cc: Todd Petersen <todd@ellis-and-associates.com>; Scott McGrath <scott.mcgrath@oasis-open.org>; Jamie OASIS <jamie.clark@oasis-open.org>; Victoria Dower <victoria@ellis-and-associates.com>
Subject: Re: Possible TM transfer, no commitments ter

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  Thanks Adam, nice to meet you.

  Sorry, I had no data on the intent to use status.

  Your re-do-it choice seems appropriate ... if there are no intervening uses which would prevail over the resulting later timestamp. ÂDo we have any idea if there are, or if anyone ever conducted a uses search?

regards Jamie

Â

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On Thu, Jul 11, 2019, at 14:32, Adam Stephenson wrote:

Todd,

With respect to assigning the trademarks for OPEN MOBILITY FOUNDATION, as I mentioned on the phone, this application was filed as an intent-to-use trademark application. Per the Trademark Office guidelines, we cannot assign the existing trademark application to another company until we file a statement of use of the mark for the services (i.e., that the services are being provided under the mark). This is a peculiarity of intent-to-use trademark applications. If we assign it incorrectly, we wind up legally voiding the trademark application and any registration.

If services are currently being provided by Movement under the OPEN MOBILITY FOUNDATION, then we can assign the trademark if Open Mobility Foundation is indeed the successor to the ongoing business activity. The key is the business activity needs to be going on before the assignment takes placeâi.e., before today.

The other option we have that may be more expeditious, though more expensive, than a transfer is simply to file to expressly abandon the existing OPEN MOBILITY FOUNDATION trademark application and refile for a new application for OPEN MOBILITY FOUNDATION in the name of the foundation. Since the existing application was filed at the end of May, we would only lose a month and a half or so of pendency by doing this and could file an intent-to-use application without having to deal with the overhead of the assignment.

These are the options I see based on our conversation earlier today. I would lean toward simply refiling the trademark in some respects as it would remove Movement entirely from the chain of title and send the message that Movement has officially shut down all its activities in lieu of the new foundation starting up.

Let me know whether there is ongoing activity we can rely on or whether refiling would be the direction folks would like to go.

Adam

From: Todd Petersen

Hi Adam,

Please see the attached and start preparing the transfer. Â Per Jamieâs email below, Oasis needs to approve before you pull the trigger.

Todd

ÂBegin forwarded message:

From: Jamie Clark <jamie.clark@oasis-open.org>

Subject: Possible TM transfer, no commitments ter

Date: July 11, 2019 at 12:34:08 PM MST

To: Todd Petersen <todd.petersen@lacuna.ai>

Cc: Scott McGrath <scott.mcgrath@oasis-open.org>, Chet Ensign <chet.ensign@oasis-open.org>

Todd, we have not yet reviewed or approved this issue, but here FYI is a first shot at a form that might document the transfer of the trademark(s?) in "OMF" or any logos to the Foundation c/o the Host LLC.

We'll need to confer on the OASIS side a bit, and may have edits, but if you want to get a lawyer started looking at something, this might do.

regards Jamie

Â

James Bryce Clark, General Counsel, OASISÂ

Advancing open data, code and standards for the global information society https://www.oasis-open.org/staffÂ

OpenMobilityFoundation.org (new), an OASIS-hosted open source program
EU 2019 Rolling Plan for ICT Standards: https://j.mp/EUstds2019

Borderless Cybersec Oct 2019:Â DC 2018, Prague 2017,ÂNYC 2017,ÂTokyo 2016,ÂBrussels 2016,ÂWorld Bank 2015

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On Wed, Apr 28, 2021 at 7:52 PM Scott McGrath <scott.mcgrath@oasis-open.org> wrote:

Hi Michael ,

I'm forwarding your inquiry to Jamie, our general counsel. ÂHe may have some insight on this.Â

Scott...

On Wed, Apr 28, 2021, 8:31 PM Michael Schnuerle <michael@openmobilityfoundation.org> wrote:

Hello Scott and Cathie,

With Jascha out, I wanted to ask for your help on this urgent matter below with the OMF trademark in the USA.Â

I was previously not aware of this but I know the importance of trademarks as I own a few, but wanted to check with you to see 1) is this legit and do we have a working relationship with Kevin Hawkes, and 2) how can we proceed with payment if I tell him to move forward with the response?

Thanks,

Michael Schnuerle

Director of Open Source Operations

@MichaelMobilityÂÂÂ@OpenMobilityFnd

---------- Forwarded message ---------
From: Kevin Hawkes <Kevin@iptech.law>
Date: Wed, Apr 28, 2021 at 6:52 PM
Subject: Urgent Trademark Legal Action: FW: Office Action Received for US Trademark Application for OPEN MOBILITY FOUNDATION
To: omf-staff@openmobilityfoundation.org <omf-staff@openmobilityfoundation.org>
Cc: Jascha Franklin-Hodge <jascha@openmobilityfoundation.org>

Hello,

Â

I am the trademark attorney for Open Mobility Foundation. I just sent a reminder to Jascha concerning the below e-mail and received the notification that he was away on parental leave. This is regarding the trademark for OPEN MOBILITY FOUNDATION. We have received a rejection from the trademark office and we need to respond no later than 5/3/2021. If we donât respond the trademark application will go abandoned. Â

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I recommend that we respond to the Office Action. Please let me know as soon as possible (preferably by tomorrow) if I have approval to proceed. The cost to respond to the Office Action will be $550.

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Please let me know if you have any questions, I am happy to help.

Â

Thanks!

Kevin

Kevin Hawkes

Registered Patent Attorney

Adam R. Stephenson, LTD

www.iptech.law

(480) 264-6075 office

(480) 718-8336 fax

kevin@iptech.law

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From: Kevin Hawkes
Sent: Thursday, April 15, 2021 8:24 AM
To: 'Jascha Franklin-Hodge' <jascha@openmobilityfoundation.org>
Subject: Office Action Received for US Trademark Application for OPEN MOBILITY FOUNDATION

Â

Jascha,

Â

Hope you are doing well. We have received another Office Action for the US trademark application for OPEN MOBILITY FOUNDATION (see attached OA3 abbreviated). I have also provided an analysis of the Office Action and a recommendation on how to proceed (see attached TMOAR3Ltr).

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As explained in the analysis, please note that while the mark keeps getting rejected in the US, it is now registered in China, Brazil, Europe, and Russia. The mark is still pending in Canada, Australia, Japan, and Mexico. This is a positive result as the mark appears to be registering in foreign countries without any incident despite the issues we are facing with the US trademark office.

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I am also attaching an invoice ($275) for my review of the Office Action and preparation of the recommendation.

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We need to respond to the current Office Action no later than May 2^nd. Accordingly, please let me know by at least April 26^th if I am okay to proceed as recommended. Please reach out with any questions you may have.

Â

Thanks!

Kevin

Kevin Hawkes

Registered Patent Attorney

Adam R. Stephenson, LTD

www.iptech.law

(480) 264-6075 office

(480) 718-8336 fax

kevin@iptech.law

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