[4432] in cryptography@c2.net mail archive
Trademark issues
daemon@ATHENA.MIT.EDU (Greg Broiles)
Fri Apr 2 01:45:29 1999
Date: Thu, 01 Apr 1999 20:34:46 -0800
To: cypherpunks@cyberpass.net, cryptography@c2.net
From: Greg Broiles <gbroiles@netbox.com>
Apropos the discussions about the appropriateness of RSADSI and their
attempt to gain trademark status for the acronym "RSA" applied to a
particular public key system -
A popular misconception about trademark rights is the assumption that
they're created by the filing of a trademark application. That's not
correct. Trademarks are created and maintained when someone (who can be a
person or other form of legal person, like a partnership or a corporation)
uses a mark in connection with commerce in goods or services to identify
the unique source of those goods or services. It is the use in commerce -
not the registration - which creates the trademark rights. Registration
grants a trademark holder extra rights and privileges - and puts other
parties on notice that a trademark is claimed, so they can't later say they
didn't know - but registration alone does not create trademark rights.
An application for registration of a trademark does not guarantee that a
mark will be registered. (more on this below).
A successful trademark registration does not allow a trademark holder to
prevent others from using the trademark at all - it allows the holder to
prevent others from using the mark in commerce, in connection with the sale
of goods or services, in a manner likely to cause consumer confusion. It is
simply not the case that, if the Foo Corp registers the term "Blah" as a
trademark related to the sale of computer software, that the Foo Corp has
the right to prevent others from discussing Blah.
The life cycle of a trademark application is approximately this: an
application is filed with the Patent & Trademark Office. Within two months,
the application will be assigned a number, and the fact of the application
(and the mark applied for) will become public record. The application will
be assigned to a staff attorney in the PTO, who is responsible for figuring
out whether or not the mark is an appropriate choice - making sure it's not
generic, that it's not obscene, and that it's not identical or confusingly
similar to other marks. Members of the public may submit a "protest" to the
PTO if they learn of a mark in the approval process which they believe
should not issue; with their protest, they can submit documentary evidence
(such as publications, or personal declarations/affidavits) detailing why
the mark should not be issued. There's no fee for filing a protest. If the
staff attorney believes that the application is a good one, the mark will
be "published for opposition" in the PTO Gazette. Holders of other marks
(or their alert attorneys) can monitor the PTO Gazette, watching for marks
which may be confusingiy similar to their own. A person who believes their
rights or interests will be damaged by the issue of a mark which has been
published for opposition may file an Opposition, together with a $200
filing fee, and the PTO will hold an administrative hearing to decide
whether or not the trademark should be issued/registered. A holder of a
trademark whose use was senior to that of the pending mark may file what's
called an interference, which alleges that they are the party which should
be issued the mark instead. After any pending oppositions and interferences
have been resolved, the PTO will either register, or deny registration, to
the mark.
In the particular case regarding "RSA" the algorithm and "RSADSI" the
business, I don't think it's plausible for RSADSI to claim that "RSA" is
presently their trademark, because it certainly does not uniquely identify
the source of particular goods and services - people all over the world
have been using the term "RSA" to discuss code written by many people on
many platforms, which implements the "RSA" algorithm. The only way the
letters "RSA" can come to uniquely identify RSADSI as the source of goods
or services is if they manage to convince the rest of the world (or the
rest of one jurisdiction) to abandon its current usage, and to continue to
refrain from using what's been the traditional and well-known term, long
enough that it becomes a unique identifier of a source of goods and services.
They have not, as far as I know, presented anyone with a good reason to
abandon their current vocabulary and usage - they've asked that people
voluntarily abandon something of value, without apparently being willing to
admit that they're asking the rest of the world for a big favor.
If the rest of the world is in the mood to do big favors, y'all are welcome
to buy me a Mercedes, too. Just let me know where I can pick up the keys.
Please feel free to argue amongst yourselves about whether you want to buy
me a blue one or a red one, or what the vanity license plate should say -
but please don't stop to think about whether or not you've got any reason
to be buying me a car. That'd ruin everything.
If RSA wants the crypto community to modify our vocabularies and our books
and our writings so that they can reserve for themselves a valuable IP
right, perhaps they ought to offer us something in return .. like, say, a
clear statement that they've abandoned any trade secret rights in the RC4
algorithm, that they'll abandon their registered trademark in the term RC4,
and that they'll grant a nonexclusive royalty-free irrevocable license to
use the RSA public key cryptosystem (US Patent 4,405,829, if memory serves)
to anyone making a noncommercial code release under a BSD/GPL/NPL or "Open
Source"(tm) compatible license. They can continue to make money from
publishers who make money, but people who want to work on SSL-compatible
free software, or other important crypto apps, can do so, immediately, with
no IP concerns from RSA. Sound like a fair trade?
--
Greg Broiles
gbroiles@netbox.com
PGP: 0x26E4488C
