Continuing to provide the 3.x and earlier versions of OpenOffice.org
software - which we still brand that on some documentation pages and on
those download pages - shows our continued use of the mark.
I'd prefer to discuss specific legal questions about exactly where we
should use the (R) symbol on the appropriate privately archived legal
mailing lists, to ensure we get counsel's advise as needed.
In the short term, I would not worry about this kind of question in
general: when we send users via a hyperlink to our openoffice.org
website(s), we're clearly offering them a chance to download the 3.x
versions of OpenOffice.org software - as well as providing all the other
cool stuff we do about Apache OpenOffice. So as long as we're not going
out of our way to imply that the registration only applies to the web
pages themselves, it should not be as important an issue as focusing on
effective ways to organize policing efforts against third parties
distributing similarly named software.
Note that the ASF holds the trademark on "OpenOffice.org" in several
other countries and classes of goods (including services, in some cases)
around the world as well.
- Shane
P.S. Apologies for the delay, I've had a death in the family last month.
On 2/1/2013 7:34 PM, Rob Weir wrote:
A question for you that has come up in the OpenOffice project.
The ASF owns the U.S. registration for "OpenOffice.org". Looking up
the registration on TESS, we see the word mark is claimed for:
"Services IC 009. US 021 023 026 036 038. G & S: Computer software
for use in database management, for use as a spreadsheet, for word
processing, that may be downloaded from a global computer network;
computer programs, namely, presentation graphics programs, that may be
downloaded from a global computer network; software for processing
images, graphics and text, that may be downloaded from a global
computer network; software for typesetting of equations and formulae,
that may be downloaded from a global computer network"
With our 3.4.0 release last May we are now calling new release "Apache
OpenOffice" and claiming that term as a (TM). But we still distribute
version 3.3.0 and earlier as OpenOffice.org (R). So arguably both
trademarks are still in use.
One further idea was to use the (R) when referring to the website
itself, .e.g, use anchor text of "OpenOffice.org (R)" on hyperlinks to
www.openoffice.org. The idea was that this would count as an
additional active use of the trademark. But since the registration
itself does not mention the use of the trademark on websites, one
concern was that we risked the trademark by not respecting its scope
ourselves.
Any advise on this would be much appreciated.
Regards,
-Rob
