Re: Using trademarks in open source project names

["Meeker, Heather J." <hmeeker@omm.com>]

It is risky not to get the trademark rights.  Unfortunately, I have had to represent quite a few clients on both sides of this issue.

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From: op-advisory-council@lists.oasis-open.org <op-advisory-council@lists.oasis-open.org> on behalf of Christopher B Ferris <chrisfer@us.ibm.com>
Sent: Tuesday, May 4, 2021 8:06:00 AM
To: abrock@openinventionnetwork.com
Cc: carol.geyer@oasis-open.org; op-advisory-council@lists.oasis-open.org
Subject: RE: Using trademarks in open source project names

 

[EXTERNAL MESSAGE]

My experience has been that NOT having such trademarks transferred <to OASIS> up front is a recipe for giving Guy a massive headache down the road if the owner decides to play games that affect adopters use of that trademark.

 

Cheers,

Christopher Ferris IBM Fellow, CTO Open Technology
twitter: @christo4ferris | phone: +1 508 667 0402 | blog: https://developer.ibm.com/profiles/chrisfer/

IBM Open Source white paper: https://developer.ibm.com/articles/cl-open-architecture-update/
 

 

 

----- Original message -----
From: Amanda Brock <abrock@openinventionnetwork.com>
Sent by: <op-advisory-council@lists.oasis-open.org>
To: Carol Geyer <carol.geyer@oasis-open.org>
Cc: op-advisory-council@lists.oasis-open.org
Subject: [EXTERNAL] Re: Using trademarks in open source project names
Date: Tue, May 4, 2021 10:45 AM
 
Panela Chestek is the leading authority on this! Do you want an intro? Cheers Amanda Amanda Brock European Representative Open Invention Network +44 (0)7718516954 On 4 May 2021, at 15:39, Carol Geyer <carol.geyer@oasis-open.org> wrote: ZjQcmQRYFpfptBannerStart

This Message Is From an External Sender

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Panela Chestek is the leading authority on this!

Do you want an intro?

Cheers 

Amanda 
 

Amanda Brock

European Representative

Open Invention Network

+44 (0)7718516954

 

On 4 May 2021, at 15:39, Carol Geyer <carol.geyer@oasis-open.org> wrote:
 

ï

Does anyone have insights into the issue of trademark ownership for names used in open source projects? OASIS policy has long been to avoid using trademarks owned by others, just so that we can ensure our project names are safe for the community to use. 

 

Currently, we have a few projects in our OP pipeline where the proposers want to use names they have trademarked. In some cases, the proposers are non-commercial entities but in others, they are for-profits. Is it enough to require them to give OASIS (and the community) perpetual usage rights for the marks, or should we require them to transfer all rights to us? Certainly, the latter would be safer, but we want to respect the sensibilities and expectations of the open source community as well.

 

What do other foundations do?

 

--

Carol Geyer

Chief Development Officer

OASIS Open

	+1 941-284-0403
	carol.geyer@oasis-open.org
	www.oasis-open.org