If I understand right (though that's not certain here), their TM problems named here are not something like a competing 'tree' logo user, but rather,
- a federal CA TM examiner with a technical bitch about the scope, and
- some delays in transferring from Fedora Commons.ÂÂ
If I have that right then our job is simply oversight to make sure
- they are handling things OK and not facing fatal flaws,
- they (and thus OODF) are not facing litigation, and
- whatever needs to be legally transferred to the new foundation is being handled.
So no, not a takeover.ÂSeems to me I should have a brief phone chat with Heather. Is that feasible and are we pestering her a lot?James Bryce Clark, General Counsel, OASIS Open, setting the standard for open collaborationOn Thu, Apr 8, 2021 at 8:09 AM Scott McGrath <scott.mcgrath@oasis-open.org> wrote:Do we want to getÂinvolved in this process and/or push the work to our trademark team? I'm inclined to think that's not mandatory, but what do you think?---------- Forwarded message ---------
From: Heather Greer Klein <heather@samvera.org>
Date: Thu, Apr 8, 2021 at 10:01 AM
Subject: Fwd: LYRASIS - Trademark Applications for SAMVERA and SAMVERA and Tree Logo in Canada.
To: Scott McGrath <scott.mcgrath@oasis-open.org>Hi Scott,I wanted to share this update on our (very long) journey to our trademark in Canada. The attorneyÂwe have been working with via LYRASIS is recommending we amendÂour description, and the $700 cost isn't outrageous. But I know the Samvera Board will want me to run this by OASIS first. Do you recommend that we go ahead and continueÂworking with this attorney, or is this something else we should do as a FaaS project? The deadline is in August so it isn't a rush to decide.Thanks!Heather-----Heather Greer Klein (she/her/hers)Samvera Community ManagerWorking from Durham, NC (US Eastern Time Zone)---------- Forwarded message ---------
From: Erin Tripp <erin.tripp@lyrasis.org>
Date: Wed, Apr 7, 2021 at 6:11 PM
Subject: Fwd: LYRASIS - Trademark Applications for SAMVERA and SAMVERA and Tree Logo in Canada.
To: Heather Greer Klein <heather@samvera.org>, Metz, Rosalyn <rosalyn.metz@emory.edu>
Cc: Vern Ritter <Vern.Ritter@lyrasis.org>, Laurie Arp <laurie.arp@lyrasis.org>
Hi Heather and Rosie,Â
I received this from our trademark attorney today. The Canadian word and logo marks needs our attention. Please read the message below and let me know how you'd like me to respond. I'm happy to proceed either way. If we do amend the application the cost would be booked to Samvera.ÂÂ
I know it's been a while. I hope you two are doing okay.Â
ErinÂ
From: Michael J. Schwab <mschwab@moritthock.com>
Sent: Wednesday, April 7, 2021 7:03:17 PM
To: Erin Tripp <erin.tripp@lyrasis.org>
Cc: Vern Ritter <Vern.Ritter@Lyrasis.org>; Rachel A. Fernbach <rfernbach@moritthock.com>
Subject: LYRASIS - Trademark Applications for SAMVERA and SAMVERA and Tree Logo in Canada.ÂRe:ÂÂÂÂÂÂÂÂ Lyrasis
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ Trademark App. Nos. 1948635 and 1915776 for
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ SAMVERA and SAMVERA and Tree Logo in Class 9
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ in Canada
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ Our Ref.:Â N-1718-001
Â
Dear Erin,
Â
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ I hope you are well.
Â
 Official actions issued against these applications. The deadline to file a response is August 17, 2021 (this cannot be extended).
Â
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ These applications cover the following goods:
Â
âDownloadable open source repository software, namely, computer software for storing, hosting, indexing, cataloging, searching, managing, controlling access to, retrieving, and distributing digital content.âÂ
Â
 The trademark examiner claims the description cannot be accepted because it does not define the âarea of useâ of the software. We disagree. Repository softwareâ clearly defines the purpose and function of the software. Moreover, the description has been accepted in other countries (e.g. the United States and European Union) without objection. We, therefore, suggest, asking the Examiner to accept the goods as filed. An alternative is to amend the goods. We believe the following will likely be accepted by the Examiner:
Â
âDownloadable open source repository software for digital archiving, namely, computer software for storing, hosting, indexing, cataloging, searching, managing, controlling access to, retrieving, and distributing digital content.âÂ
Â
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ The cost to file arguments or amend the goods is about $700.
Â
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ We look forward to hearing from you.
Â
Regards,
Â
Â
To view our COVID-19 Resource Page, click here.
Michael J. Schwab
CounselTel: 212.239.2000 | Email: mschwab@moritthock.com
Web: www.moritthock.com
1407 Broadway
New York, NY 10018400 Garden City Plaza
Garden City, NY 11530Â
Â
Â
From: Erin Tripp [mailto:erin.tripp@lyrasis.org]
Sent: Monday, November 16, 2020 9:54 AM
To: Michael J. Schwab
Cc: Vern Ritter; Rachel A. Fernbach
Subject: Re: LYRASIS - Samvera trademarks in Canada and EuropeÂ
Hello Michael,Â
Â
Friday, Nov 20 between 10 am and 1 pm ET is open on my calendar. Let me know if there's a time in there that works for you.Â
Â
Best, ~ ErinÂ
From: Michael J. Schwab <mschwab@moritthock.com>
Sent: November 11, 2020 7:51 PM
To: Erin Tripp <erin.tripp@lyrasis.org>
Cc: Vern Ritter <Vern.Ritter@Lyrasis.org>; Rachel A. Fernbach <rfernbach@moritthock.com>
Subject: RE: LYRASIS - Samvera trademarks in Canada and EuropeÂ
Erin,
Â
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ Are available Friday (11/13) for a call regarding the registrations owned by the Dspace Foundation? ÂÂAny time except between 12:00 pm and 1:00 pm works for me.
Â
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ Thank you.
Â
Regards,
Â
Â
To view our COVID-19 Resource Page, click here.
Michael J. Schwab
CounselTel: 212.239.2000 | Email: mschwab@moritthock.com
Web: www.moritthock.com
Â
1407 Broadway
New York, NY 10018400 Garden City Plaza
Garden City, NY 11530Â
Â
From: Erin Tripp [mailto:erin.tripp@lyrasis.org]
Sent: Monday, October 26, 2020 6:24 AM
To: Michael J. Schwab
Cc: Vern Ritter; Rachel A. Fernbach
Subject: Re: LYRASIS - Samvera trademarks in Canada and EuropeÂ
Sorry, Michael. I think you're saying you reviewed the documents I sent on Sept 8 and they are not sufficient. I will keep digging.Â
Erin
Â
From: Erin Tripp <erin.tripp@lyrasis.org>
Sent: Monday, October 26, 2020 7:13:26 AM
To: Michael J. Schwab <mschwab@moritthock.com>
Cc: Vern Ritter <Vern.Ritter@Lyrasis.org>; Rachel A. Fernbach <rfernbach@moritthock.com>
Subject: Re: LYRASIS - Samvera trademarks in Canada and EuropeÂ
Hi Michael, I sent you some documents a while ago. I will find that email and resend.
Erin
Â
From: Michael J. Schwab <mschwab@moritthock.com>
Sent: Saturday, October 24, 2020 3:40:52 PM
To: Erin Tripp <erin.tripp@lyrasis.org>
Cc: Vern Ritter <Vern.Ritter@Lyrasis.org>; Rachel A. Fernbach <rfernbach@moritthock.com>
Subject: FW: LYRASIS - Samvera trademarks in Canada and EuropeÂ
Erin,
Â
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ I hope you are well.
Â
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ I refer to our prior correspondence in this matter (see below).
Â
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ Have you had any luck with the former CEO of the DSpace Foundation regarding documents related to the assignment of the marks from the DSpace Foundation to Fedora Common?
Â
Regards,
Â
Â
To view our COVID-19 Resource Page, click here.
Michael J. Schwab
CounselTel: 212.239.2000 | Email: mschwab@moritthock.com
Web: www.moritthock.com
Â
1407 Broadway
New York, NY 10018400 Garden City Plaza
Garden City, NY 11530Â
Â
Â
From: Michael J. Schwab
Sent: Tuesday, September 08, 2020 8:20 AM
To: 'Erin Tripp'
Cc: 'Vern Ritter'; 'Laurie Arp'; Rachel A. Fernbach
Subject: RE: LYRASIS - Samvera trademarks in Canada and EuropeÂ
Erin,
Â
1. We are pleased to report that the application to record the assignment of the registrations for SAMVERA and SAMVERA Logo from Fedora Commons to LYRASIS on the International Register was accepted and the assignment recorded. An updated report on the status of the marks that were owned by Fedora Commons is attached.
Â
2. We were unable to find documents on the public records sufficient to record the assignments of the registrations owned by DSpace Foundation. It would be helpful if can reach out to the former CEO of the DSpace Foundation to see if she has or knows where the documents related to the assignment of the marks from the DSpace Foundation to Fedora Commons can be found. The attorneys who represented DSpace Foundation and Fedora Commons may have copies of the documents in their files.
Â
Thank you.
Â
Regards,
Â
Â
To view our COVID-19 Resource Page, click here.
Michael J. Schwab
CounselTel: 212.239.2000 | Email: mschwab@moritthock.com
Web: www.moritthock.com
Â
1407 Broadway
New York, NY 10018400 Garden City Plaza
Garden City, NY 11530Â
Â
Â
From: Michael J. Schwab
Sent: Thursday, August 27, 2020 6:58 PM
To: 'Erin Tripp'
Cc: Vern Ritter; Laurie Arp; Rachel A. Fernbach
Subject: RE: LYRASIS - Samvera trademarks in Canada and EuropeÂ
Erin,
Â
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ I am reviewing the DSpace Foundation assignment issue and will advise.
Â
Regards,
Â
Â
To view our COVID-19 Resource Page, click here.
Michael J. Schwab
CounselTel: 212.239.2000 | Email: mschwab@moritthock.com
Web: www.moritthock.com
Â
1407 Broadway
New York, NY 10018400 Garden City Plaza
Garden City, NY 11530Â
Â
Â
From: Erin Tripp [mailto:erin.tripp@lyrasis.org]
Sent: Thursday, August 27, 2020 8:01 AM
To: Michael J. Schwab
Cc: Vern Ritter; Laurie Arp; Rachel A. Fernbach
Subject: Re: LYRASIS - Samvera trademarks in Canada and EuropeÂ
Hi Michael,Â
Â
What a wonderful update. Thank you. I'm relieved you received the WIPO notice. I was worried about that one.Â
Â
I don't have documentationÂshowing that the assets of the DSpace Foundation, including the trademark DSPACE, were transferred to Fedora Commons. Are there official state records of the dissolution of the DSpace Foundation and distribution of assets similar to what we filed last year? Would it be time consuming to search? I know the former CEO of the DSpace Foundation and can contact her privately but I don't know that she would have this documentation.Â
Â
Thanks again for your promptÂresponse. I reallyÂappreciate it. ~ ErinÂ
Â
--
Â
Erin Tripp
Director, Research & Innovation Division
800.999.8558 ext. 4906
she /Â her /Â hers
From: Michael J. Schwab <mschwab@moritthock.com>
Sent: August 26, 2020 7:28 PM
To: Erin Tripp <erin.tripp@lyrasis.org>
Cc: Vern Ritter <Vern.Ritter@Lyrasis.org>; Laurie Arp <laurie.arp@lyrasis.org>; Rachel A. Fernbach <rfernbach@moritthock.com>
Subject: RE: LYRASIS - Samvera trademarks in Canada and EuropeÂ
Erin,
Â
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ Welcome back!Â
Â
 Two reports are attached. One shows the status of the marks that were owned by Fedora Commons, Inc. The other is for the marks that were owned by the DSpace Foundation.
Â
1.ÂÂÂÂÂÂ SAMVERA and SAMVERA and Tree Logo
Â
a.ÂÂÂÂÂÂ Registrations:Â United States and the European Union (through the International Register). Â
Â
b.ÂÂÂÂÂ Applications: Canada
Â
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ i.ÂÂÂÂÂ The applications are waiting to be examined.
Â
 ii. Examination turnaround in Canada is usually about 18 â 20 months. There have been further delays because of COVID 19. We hope to receive information on the results of the examination in the next few months.
Â
2.ÂÂÂÂÂÂ Assignments
a.ÂÂÂÂÂÂ Applications to record the assignment of the marks owned by Fedora Commons have been filed.
Â
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ i.ÂÂÂÂÂ The assignment has been recorded in Canada and the United States.
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ ii.ÂÂÂÂÂ The application to record the assignment on the International Register (this includes the European Union) is pending.Â
Â
(We received and responded to the correspondence from WIPO that was sent to Clocktower. We have been following up with WIPO on the status of the recordation of the assignment and will keep you advised of developments.)
Â
b.ÂÂÂÂÂ Applications to record the assignment of the registrations owned by the DSpace Foundation have not yet been filed.ÂÂÂ
Â
 i. Dspace Foundation owns a registration for DSPACE in Class 41 in the United States and on the International Register (this covers China, the European Union and Japan). These registrations were filed by the Massachusetts Institute of Technology (âMITâ) in 2006 and assigned to the Dspace Foundation in 2007.
Â
ÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂÂ ii.ÂÂÂÂÂ We understand that the DSpace Foundation was dissolved in 2010.
Â
 iii. The records of the United States Patent and Trademark Office (âUSPTOâ) and the International Registrar were never updated to reflect that the ownership of the mark was assigned from the DSpace Foundation to Fedora Commons. Dspace Foundation is still named as the owner of the marks on records of the USPTO and International Registrar. We cannot update the records for these registrations to show LYRASIS as the owner without first recording the change in ownership from Dspace Foundation to Fedora Commons. Do you have any evidence (e.g. Certificate of Merger, Assignment, etc.) showing that the assets of the DSpace Foundation, including the trademark DSPACE, were transferred to Fedora Commons?Â
Â
We look forward to hearing from you.
Â
Regards,
Â
Â
To view our COVID-19 Resource Page, click here.
Michael J. Schwab
CounselTel: 212.239.2000 | Email: mschwab@moritthock.com
Web: www.moritthock.com
Â
1407 Broadway
New York, NY 10018400 Garden City Plaza
Garden City, NY 11530Â
Â
Â
Â
From: Erin Tripp [mailto:erin.tripp@lyrasis.org]
Sent: Wednesday, August 26, 2020 7:57 AM
To: Michael J. Schwab
Cc: Vern Ritter; Laurie Arp
Subject: LYRASIS - Samvera trademarks in Canada and EuropeÂ
Hello Michael,Â
Â
I hope you are well. I'm back from maternity leave and would like to follow up on a few trademarks related to the distribution of assets from Fedora Commons, Inc to LYRASIS in the last year.Â
Â
One of our stakeholder groups is looking for an update on three pending applications. They are for Samvera logo trademarks in Canada and Europe. See the attached spreadsheet for details (the highlighted lines).Â
Â
Can you tell me the status of these applications? Are they now under LYRASIS? Are there any barriers to them moving forward?Â
Â
While I was on leave, our former trademark attorney (clocktower law) forwarded me the attached letter from WIPO. Did you also get a copy? Can you look into this for me, please? Is it holding up with the European Samvera application?
Â
Thanks in advance for your help with these questions. I cc'd my colleagues Vern Ritter and Laurie Arp on this message. Please reply all.Â
Â
Warmest regards, ~ Erin TrippÂ
--
Â
Erin Tripp
Director, Research & Innovation Division
800.999.8558 ext. 4906
she /Â her /Â hers
--
ScottÂMcGrath
Chief Operating Officer
OASIS Open
  Â
+1 781-569-5115 Desk
+1 781-929-7308 Mobile
scott.mcgrath@oasis-open.org
www.oasis-open.org
