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Date:      Fri, 7 Apr 2000 14:44:25 -0400
From:      Bob Johnson <bobj@atlantic.net>
To:        dhesi@rahul.net
Cc:        questions@freebsd.org
Subject:   Re: "FreeBSD" as trademark
Message-ID:  <00040715534600.08132@scanner.engnet.ufl.edu>

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> Date: Fri,  7 Apr 2000 02:22:02 -0700 (PDT)
> From: dhesi@rahul.net (Rahul Dhesi)
> Subject: Re: "FreeBSD" as trademark
>
> "FreeBSD" is a composite term made up of two words: "Free" and "BSD".
> The word "Free" is not trade-mark-able when used with its normal meaning
> of "free of cost".  The word BSD *might* be trade-mark-able if the
> University of California decided to make it so; but they didn't.  I
> doubt that anybody else could claim trade mark rights over the word
> "BSD", when used to refer to "BSD".  A valid trade mark gives the
> claimant a monopoly over the trade mark, and I doubt that anybody except
> the University of California could exercise such a monopoly over 'BSD'.
> 
> The composite term "FreeBSD" would be a very, very weak trade mark, if
> it could be one at all.  It would probably be no stronger a trade mark
> than any of these other composite words:
>
>  FreeMarket
>  FreeLunch
>  FreeSoftware
>  FreeSample
>

I'm not a lawyer, and I haven't even played one on TV, but...

I think you completely misunderstand trademark law.  Context is of utmost
importance in determining  the validity of a trademark.  For instance, the
word "Apple" is a  trademark of Apple Computer Corporation when 
used in the context  of computers
(http://www.apple.com/legal/default.html#tm).  The same  word, "Apple", 
used in the context of music, is a trademark of Apple Records, 
which markets The Beetles' songs. Apple Computer's forays into 
the music world (marketing the iMac) have  cost them -- they lost a
trademark infringement suit lodged by Apple Records (see
http://www.nametrade.com/namecost.html).

If you visit Apple Computer's web site, you might also notice that 
Apple has trademarked composite words such as "AppleLAN", and 
even "AirPort", that, under your theory, should be invalid as 
trademarks.  Yet somehow, I don't notice anyone challenging these 
trademarks.

In truth, it doesn't really matter whether a trademarked term is a 
composite of well-known words.  Although making up a new word 
(e.g. Pentium) gives better protection, it can still be lost (which 
Thermos corporation discovered the hard way).

> Now as to whether a trade mark is *claimed* over 'FreeBSD', that's a
> different question.  I believe there is such a claim.  But a claim alone
> does not make a trade mark legally valid.
>
> The closest one could come to a valid claim would be to claim a trade
> mark over the distinct upper and lowercase in 'FreeBSD'.  But it's my
> understanding that US trade mark law does not allow a trade mark to be
> claimed solely based on the way upper and lowercase are used.

You are partially right.  The combination of upper and lower case 
alone might not be sufficient to distinguish a trademark.  But that, 
combined with a specific context (computer operating systems), 
should be quite sufficient to distinguish FreeBSD as a trademark, 
particularly since almost everyone in the world who has ever 
seen or heard the term knows it refers to a specific product, 
rather than a generic category of products.

A trademark can even be based on the specific font used to print 
a word.  The letters "IBM", when printed in the distinctive lined 
font used by IBM, is their trademark, and context is probably 
not significant in determining it's enforceability.  For example, 
I could start a business called "International Bug Managers",  
and make my living in pest control.  I might very well get away with 
using the initials "IBM" on a business card or something, but I'm  quite
certain that if I printed them in IBM's special font, I'd  have no hope at
all of prevailing in court.

>
> A more distinctive name like 'Walnut Creek FreBSD' would probably make a
> good trade mark, as would a more abbreviated version like 'WC-FreeBSD'.
>
> But prefixing 'Free' to a word is a poor way of generating a legally
> valid trade mark, especially when the resulting phrase is used with the
> same meaning as the original word without the 'Free' prefix.
> - -- 
> Rahul Dhesi <dhesi@email.rahul.net> (spam-filtered with RSS and ORBS)

The only significant issue is whether FreeBSD, Inc. has been sufficiently 
aggressive in defending the trademark.  The fastest way to lose a trademark 
is to let others use it without permission.  Once that becomes established 
as "normal", you've lost the right to require them to get permission, i.e., 
you've lost the trademark.

-- Bob Johnson
     bobj@atlantic.net



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