[OSM-talk] Fwd: Re: Recent edits in the wiki / Trademark issue

[Christopher Woods (IWD)]

On 01/02/2013 16:52, Cartinus wrote:
> Huh?
>
> What's really touchy is the osmf being secretive about something.
>
> If you got a letter from some lawyer, then the only way you might get
> all the volunteers in this project to comply is telling them what is
> happening.
>
>
> -------- Original Message --------
> Subject: Re: [OSM-talk] Recent edits in the wiki / Trademark issue
> Date: Fri, 01 Feb 2013 17:43:42 +0100
> From: Simon Poole <simon at poole.ch>
> To: cartinus at xs4all.nl
>
>
> Cartinus
>
> The location of both servers and organisation is irrelevant (as you
> should know after something like 20 years of case law wrt providing
> services over the Internet), relevant is that it could be construed that
> the term was used by us (in a wide sense of the word) in the US and that
> the trademark holder objects to such usage. Richard Fairhurst has said
> the rest.
>
> Please do not post this answer to the list, the issue is extremely touchy.
>
> Simon
>
> Am 01.02.2013 17:16, schrieb Cartinus:
>> Plugging "google geocode trademark issue" and several variations of it
>> in three different search engines didn't give any meaningful results.
>>
>> So unless you can explain to us why a foundation in the UK with servers
>> in the UK should be bothered by a trademark conflict between two other
>> parties on the other side of the Atlantic I'm going to ignore the
>> request not to use the word geocode.
>>
>> On 02/01/2013 05:06 PM, Andreas Labres wrote:
>>> On 01.02.13 16:48, Jochen Topf wrote:
>>>> I don't think use of the English language is "merely incidental" to what we are
>>>> doing here. Can you explain why we suddenly can't use words from the English
>>>> language any more? ... And no, I don't think this is something for private emails.
>>> 100% agreed.
>>>
>>> Simon, please be more elaborative on what's going on here. Without knowing US
>>> trademark policies by heart, but "to geocode" is a generic term that cannot be
>>> used as a trademark. One can of course use this term with regard to, e.g., the
>>> process of transferring a postal address into geographic coordinates.

My opinion? All this is irrelevant and OSM is fine to continue using 
"geocode".

IANAL but I do work in a sector concerned with intellectual property and 
EU law; based on extensive prior art and extensive genericised usage of 
the word "geocode" any trademark of the word or phrase "geo code" or 
"geocode" is without merit and unenforceable. OSM's usage is itself a 
great example.

The USPTO has issued TMs and patents in the past that have been 
subsequently revoked or dismissed... And a US TM registration doesn't 
apply in Europe, OHIM has to issue a US TM reg. It's something we're 
actively involved with at work at the moment (contesting a registration 
and disputing a request for registration in other categories on a mark 
which we already have registered).

Checking the USPTO's TESS system just now, one registration is "GEOCODE 
GLOBAL" which is a service mark; one registration by Winfield Solutions 
is in the "published for opposition" stage so it's not been granted yet. 
It's for "Turf Seed" ("Plant growth micronutrients") so doesn't and 
cannot apply to any usage in a geospatial context.

GEOCODE GLOBAL's service mark's current registration is: Goods and 
Services    IC 042. US 100 101. G & S: brokerage services for use in 
generating geographic information displays, namely, brokerage in the 
field of geographical information related to maps and cartography. FIRST 
USE: 20020503. FIRST USE IN COMMERCE: 20020503

Its original registration G&S classification was  IC 009. US 021 023 026 
036 038. G & S: Computer software for computing and identifying an exact 
location and time by creating a numeric geospatial coordinate 
measurement representation used in the field of geospatial analysis. 
FIRST USE: 19990726. FIRST USE IN COMMERCE: 20000726

That they've not contested concurrent usage of the word "geocode" in 
other contexts for over a decade establishes precedent that any future 
attempts are likely unenforceable due to them not adequately protecting 
the registration. Even if they wanted to pick a fight, it would quite 
possibly be laughed out of court.

In any matter, the plaintiff would have to come to the UK and contest 
the matter in an English court though! Where we would very politely show 
them the door, after they'd paid costs of course. ;-)

tl;dr: OSMF is fine! Just carry on as before. Any letters from lawyers 
are just scaremongering, although I'd like to see them if any exist.