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Posted to legal-discuss@apache.org by "Daryl C. W. O'Shea" <sp...@dostech.ca> on 2008/09/03 03:00:04 UTC
Registering the SpamAssassin trademark
Howdy,
One of our better known SpamAssassin users have been prodding us to have
the SpamAssassin trademark registered now that Hormel has lost,
apparently hundreds of, cases objecting trademarks containing "spam".
Apparently (I don't recall at the moment) the ASF tried once before to
have the mark registered and now that there's been a bunch of "spam"
trademarks registered we should have no problem getting the mark registered.
My questions... is this something the ASF would like to have happen and
how can we go about making it happen?
Thanks,
Daryl
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Re: Registering the SpamAssassin trademark
Posted by Craig L Russell <Cr...@Sun.COM>.
On Oct 18, 2008, at 4:12 PM, Lawrence Rosen wrote:
> Daryl,
>
> If we file new applications, it will cost about $600 in PTO fees. If I
> merely amend the current ones, I'm not sure, but less. As I recall,
> the
> board has already approved this expenditure.
>
> I haven't yet charged Apache for any of my time helping here. I only
> ask
> that you take a collection to bail me out of the poorhouse when I
> get sent
> there for failure to pay my mortgage.
How many houses would that be? If fewer than 8, +1. ;-)
Craig
>
>
> The thing I'm waiting on is a copy of (Robyn's?) files so I can tell
> what
> happened in the past. Then I'll pursue the PTO amendments.
>
> /Larry
>
>
>
>> -----Original Message-----
>> From: Daryl C. W. O'Shea [mailto:spamassassin@dostech.ca]
>> Sent: Saturday, October 18, 2008 1:58 PM
>> To: legal-discuss@apache.org
>> Subject: Re: Registering the SpamAssassin trademark
>>
>> Larry,
>>
>> On 03/09/2008 4:48 PM, Lawrence Rosen wrote:
>>> Sam Ruby wrote:
>>>> Looks that way:
>>>>
>>>> http://assignments.uspto.gov/assignments/q?db=tm&sno=78148991
>>>> http://assignments.uspto.gov/assignments/q?db=tm&sno=78213077
>>>
>>> It appears that these were filed as "Intent to Use" rather than
>>> "Actual
>>> Use". Notice of Allowance was mailed, presumably to Robyn, earlier
>>> this
>>> year. She/we will need to follow up with appropriate statements of
>>> use
>> to
>>> finalize those registrations.
>>>
>>> http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78148991
>>> http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78213077
>>>
>>> This is turning out to be even cheaper than I first estimated. :-)
>>
>> Would you have an idea of the total cost that might be involved,
>> including any future responses to the USPTO? If not, could someone
>> put
>> me in touch with Robyn so that I can obtain an estimate from her?
>> I'd
>> like to have an idea of the total costs involved before asking the
>> board
>> for funding approval.
>>
>> Thanks,
>>
>> Daryl
>>
>>
>> ---------------------------------------------------------------------
>> DISCLAIMER: Discussions on this list are informational and
>> educational
>> only. Statements made on this list are not privileged, do not
>> constitute legal advice, and do not necessarily reflect the opinions
>> and policies of the ASF. See <http://www.apache.org/licenses/> for
>> official ASF policies and documents.
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>
>
> ---------------------------------------------------------------------
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> only. Statements made on this list are not privileged, do not
> constitute legal advice, and do not necessarily reflect the opinions
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>
Craig L Russell
Architect, Sun Java Enterprise System http://db.apache.org/jdo
408 276-5638 mailto:Craig.Russell@sun.com
P.S. A good JDO? O, Gasp!
Re: Registering the SpamAssassin trademark
Posted by "Daryl C. W. O'Shea" <sp...@dostech.ca>.
On 18/10/2008 7:12 PM, Lawrence Rosen wrote:
> Daryl,
>
> If we file new applications, it will cost about $600 in PTO fees. If I
> merely amend the current ones, I'm not sure, but less. As I recall, the
> board has already approved this expenditure.
I got busy and dropped the ball on this. I will send an email to the
board about this right now.
> I haven't yet charged Apache for any of my time helping here. I only ask
> that you take a collection to bail me out of the poorhouse when I get sent
> there for failure to pay my mortgage.
Thanks Larry, it's very much appreciated. I think I may start a
collection for the both of us! Actually, I wasn't sure if there would
be any further USPTO costs involved after the initial application.
> The thing I'm waiting on is a copy of (Robyn's?) files so I can tell what
> happened in the past. Then I'll pursue the PTO amendments.
Great, thanks again.
Daryl
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RE: Registering the SpamAssassin trademark
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
Daryl,
If we file new applications, it will cost about $600 in PTO fees. If I
merely amend the current ones, I'm not sure, but less. As I recall, the
board has already approved this expenditure.
I haven't yet charged Apache for any of my time helping here. I only ask
that you take a collection to bail me out of the poorhouse when I get sent
there for failure to pay my mortgage.
The thing I'm waiting on is a copy of (Robyn's?) files so I can tell what
happened in the past. Then I'll pursue the PTO amendments.
/Larry
> -----Original Message-----
> From: Daryl C. W. O'Shea [mailto:spamassassin@dostech.ca]
> Sent: Saturday, October 18, 2008 1:58 PM
> To: legal-discuss@apache.org
> Subject: Re: Registering the SpamAssassin trademark
>
> Larry,
>
> On 03/09/2008 4:48 PM, Lawrence Rosen wrote:
> > Sam Ruby wrote:
> >> Looks that way:
> >>
> >> http://assignments.uspto.gov/assignments/q?db=tm&sno=78148991
> >> http://assignments.uspto.gov/assignments/q?db=tm&sno=78213077
> >
> > It appears that these were filed as "Intent to Use" rather than "Actual
> > Use". Notice of Allowance was mailed, presumably to Robyn, earlier this
> > year. She/we will need to follow up with appropriate statements of use
> to
> > finalize those registrations.
> >
> > http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78148991
> > http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78213077
> >
> > This is turning out to be even cheaper than I first estimated. :-)
>
> Would you have an idea of the total cost that might be involved,
> including any future responses to the USPTO? If not, could someone put
> me in touch with Robyn so that I can obtain an estimate from her? I'd
> like to have an idea of the total costs involved before asking the board
> for funding approval.
>
> Thanks,
>
> Daryl
>
>
> ---------------------------------------------------------------------
> DISCLAIMER: Discussions on this list are informational and educational
> only. Statements made on this list are not privileged, do not
> constitute legal advice, and do not necessarily reflect the opinions
> and policies of the ASF. See <http://www.apache.org/licenses/> for
> official ASF policies and documents.
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Re: Registering the SpamAssassin trademark
Posted by "Daryl C. W. O'Shea" <sp...@dostech.ca>.
Larry,
On 03/09/2008 4:48 PM, Lawrence Rosen wrote:
> Sam Ruby wrote:
>> Looks that way:
>>
>> http://assignments.uspto.gov/assignments/q?db=tm&sno=78148991
>> http://assignments.uspto.gov/assignments/q?db=tm&sno=78213077
>
> It appears that these were filed as "Intent to Use" rather than "Actual
> Use". Notice of Allowance was mailed, presumably to Robyn, earlier this
> year. She/we will need to follow up with appropriate statements of use to
> finalize those registrations.
>
> http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78148991
> http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78213077
>
> This is turning out to be even cheaper than I first estimated. :-)
Would you have an idea of the total cost that might be involved,
including any future responses to the USPTO? If not, could someone put
me in touch with Robyn so that I can obtain an estimate from her? I'd
like to have an idea of the total costs involved before asking the board
for funding approval.
Thanks,
Daryl
---------------------------------------------------------------------
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only. Statements made on this list are not privileged, do not
constitute legal advice, and do not necessarily reflect the opinions
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Re: Registering the SpamAssassin trademark
Posted by "Daryl C. W. O'Shea" <sp...@dostech.ca>.
On 03/09/2008 4:48 PM, Lawrence Rosen wrote:
> Sam Ruby wrote:
>> Looks that way:
>>
>> http://assignments.uspto.gov/assignments/q?db=tm&sno=78148991
>> http://assignments.uspto.gov/assignments/q?db=tm&sno=78213077
>
> It appears that these were filed as "Intent to Use" rather than "Actual
> Use". Notice of Allowance was mailed, presumably to Robyn, earlier this
> year. She/we will need to follow up with appropriate statements of use to
> finalize those registrations.
>
> http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78148991
> http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78213077
Oddly, to me, the second of the second set of links lists Network
Associates as the owner/applicant of the "Powered by SpamAssassin" mark
whereas the first set of links indicates that interest in the mark was
in fact transfered to the ASF.
Daryl
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RE: Registering the SpamAssassin trademark
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
Sam Ruby wrote:
> Looks that way:
>
> http://assignments.uspto.gov/assignments/q?db=tm&sno=78148991
> http://assignments.uspto.gov/assignments/q?db=tm&sno=78213077
It appears that these were filed as "Intent to Use" rather than "Actual
Use". Notice of Allowance was mailed, presumably to Robyn, earlier this
year. She/we will need to follow up with appropriate statements of use to
finalize those registrations.
http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78148991
http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78213077
This is turning out to be even cheaper than I first estimated. :-)
/Larry
> -----Original Message-----
> From: sa3ruby@gmail.com [mailto:sa3ruby@gmail.com] On Behalf Of Sam Ruby
> Sent: Wednesday, September 03, 2008 7:43 AM
> To: legal-discuss@apache.org
> Subject: Re: Registering the SpamAssassin trademark
>
> On Wed, Sep 3, 2008 at 9:56 AM, Jim Jagielski <ji...@jagunet.com> wrote:
> >
> > IIRC, didn't the applications for SPAMASSASSIN and and POWERED BY
> > SPAMASSASSIN get transfered to use from Network Solutions in 2004?
>
> Looks that way:
>
> http://assignments.uspto.gov/assignments/q?db=tm&sno=78148991
> http://assignments.uspto.gov/assignments/q?db=tm&sno=78213077
>
> > I think we even have a scanned document in documents to that effect
>
> Yup.
>
> - Sam Ruby
>
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> only. Statements made on this list are not privileged, do not
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> and policies of the ASF. See <http://www.apache.org/licenses/> for
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Re: Registering the SpamAssassin trademark
Posted by Sam Ruby <ru...@intertwingly.net>.
On Wed, Sep 3, 2008 at 9:56 AM, Jim Jagielski <ji...@jagunet.com> wrote:
>
> IIRC, didn't the applications for SPAMASSASSIN and and POWERED BY
> SPAMASSASSIN get transfered to use from Network Solutions in 2004?
Looks that way:
http://assignments.uspto.gov/assignments/q?db=tm&sno=78148991
http://assignments.uspto.gov/assignments/q?db=tm&sno=78213077
> I think we even have a scanned document in documents to that effect
Yup.
- Sam Ruby
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Re: Registering the SpamAssassin trademark
Posted by Jim Jagielski <ji...@jaguNET.com>.
On Sep 2, 2008, at 10:03 PM, Sam Ruby wrote:
> On Tue, Sep 2, 2008 at 9:00 PM, Daryl C. W. O'Shea
> <sp...@dostech.ca> wrote:
>> Howdy,
>>
>> One of our better known SpamAssassin users have been prodding us to
>> have
>> the SpamAssassin trademark registered now that Hormel has lost,
>> apparently hundreds of, cases objecting trademarks containing "spam".
>>
>> Apparently (I don't recall at the moment) the ASF tried once before
>> to
>> have the mark registered and now that there's been a bunch of "spam"
>> trademarks registered we should have no problem getting the mark
>> registered.
>>
>> My questions... is this something the ASF would like to have happen
>> and
>> how can we go about making it happen?
>
> The PRC (prc@apache.org) is responsible for enforcing the ASF's marks.
> Registration may or may not be necessary for them to do so, but may
> be helpful. If the PRC decided this was worth pursuing, and the cost
> was on the order of $500 or less (as Larry has indicated), then I see
> the board approving the expenditure. Particularly if SpamAssassin
> users are asking for this.
>
>>
IIRC, didn't the applications for SPAMASSASSIN and and POWERED BY
SPAMASSASSIN get transfered to use from Network Solutions in 2004?
I think we even have a scanned document in documents to that affect
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Re: Registering the SpamAssassin trademark
Posted by Sam Ruby <ru...@intertwingly.net>.
On Tue, Sep 2, 2008 at 9:00 PM, Daryl C. W. O'Shea
<sp...@dostech.ca> wrote:
> Howdy,
>
> One of our better known SpamAssassin users have been prodding us to have
> the SpamAssassin trademark registered now that Hormel has lost,
> apparently hundreds of, cases objecting trademarks containing "spam".
>
> Apparently (I don't recall at the moment) the ASF tried once before to
> have the mark registered and now that there's been a bunch of "spam"
> trademarks registered we should have no problem getting the mark registered.
>
> My questions... is this something the ASF would like to have happen and
> how can we go about making it happen?
The PRC (prc@apache.org) is responsible for enforcing the ASF's marks.
Registration may or may not be necessary for them to do so, but may
be helpful. If the PRC decided this was worth pursuing, and the cost
was on the order of $500 or less (as Larry has indicated), then I see
the board approving the expenditure. Particularly if SpamAssassin
users are asking for this.
> Thanks,
>
> Daryl
- Sam Ruby
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Re: Registering the SpamAssassin trademark
Posted by Jim Jagielski <ji...@jaguNET.com>.
On Sep 8, 2008, at 5:15 PM, Sam Ruby wrote:
> On Tue, Sep 2, 2008 at 9:00 PM, Daryl C. W. O'Shea
> <sp...@dostech.ca> wrote:
>>
>> My questions... is this something the ASF would like to have happen
>> and
>> how can we go about making it happen?
>
> To bring this to closure, here's my suggestion.
>
> If the PRC and the SpamAssassin PMCs agree that this should be done,
> Larry has already graciously volunteered to file the necessary
> paperwork. The funding needs approved, and as there isn't a
> pre-existing budget item for this, that requires board action. Given
> the small amount in question, I would think that a quick note to
> board@ and a 72-hour period of lazy consensus would suffice, but I'll
> leave that up to Jim to decide. Once that's done, I will work with
> Larry (who is doing the work) and J Aaron (ASF Treasurer) to see to it
> that the payments are made.
>
+1
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Re: Registering the SpamAssassin trademark
Posted by "Daryl C. W. O'Shea" <sp...@dostech.ca>.
On 08/09/2008 5:15 PM, Sam Ruby wrote:
> On Tue, Sep 2, 2008 at 9:00 PM, Daryl C. W. O'Shea
> <sp...@dostech.ca> wrote:
>> My questions... is this something the ASF would like to have happen and
>> how can we go about making it happen?
>
> To bring this to closure, here's my suggestion.
>
> If the PRC and the SpamAssassin PMCs agree that this should be done,
The SpamAssassin PMC would like to see this done. I've failed to incite
a response from the PRC though.
> Larry has already graciously volunteered to file the necessary
> paperwork. The funding needs approved, and as there isn't a
> pre-existing budget item for this, that requires board action. Given
> the small amount in question, I would think that a quick note to
> board@ and a 72-hour period of lazy consensus would suffice, but I'll
> leave that up to Jim to decide. Once that's done, I will work with
> Larry (who is doing the work) and J Aaron (ASF Treasurer) to see to it
> that the payments are made.
Great, thanks.
Daryl
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Re: Registering the SpamAssassin trademark
Posted by Sam Ruby <ru...@intertwingly.net>.
On Tue, Sep 2, 2008 at 9:00 PM, Daryl C. W. O'Shea
<sp...@dostech.ca> wrote:
>
> My questions... is this something the ASF would like to have happen and
> how can we go about making it happen?
To bring this to closure, here's my suggestion.
If the PRC and the SpamAssassin PMCs agree that this should be done,
Larry has already graciously volunteered to file the necessary
paperwork. The funding needs approved, and as there isn't a
pre-existing budget item for this, that requires board action. Given
the small amount in question, I would think that a quick note to
board@ and a 72-hour period of lazy consensus would suffice, but I'll
leave that up to Jim to decide. Once that's done, I will work with
Larry (who is doing the work) and J Aaron (ASF Treasurer) to see to it
that the payments are made.
---------------------------------------------------------------------
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RE: Registering the SpamAssassin trademark
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
Daryl C.W. O'Shea asked:
> My questions... is this something the ASF would like to have happen and
> how can we go about making it happen?
As to the second question, just say "make it so" and give me enough money to
file the trademark registration application (<~$500). I can file it for you
as your "attorney in fact". Of course, if necessary, responding to office
actions from the PTO is extra time, but that's down the road.
I suggest ASF try filing to register SpamAssassin. It is a nice trademark.
/Larry
P.S. I don't know what Hormel's "spam" has to do with it. What was famous
for being barely edible in the 20th century isn't famous for the same reason
any longer. :-) I suppose I should read the cases.
Lawrence Rosen
Rosenlaw & Einschlag, a technology law firm (www.rosenlaw.com)
3001 King Ranch Road, Ukiah, CA 95482
707-485-1242 * cell: 707-478-8932 * fax: 707-485-1243
Skype: LawrenceRosen
> -----Original Message-----
> From: Daryl C. W. O'Shea [mailto:spamassassin@dostech.ca]
> Sent: Tuesday, September 02, 2008 6:00 PM
> To: legal-discuss@apache.org
> Subject: Registering the SpamAssassin trademark
>
> Howdy,
>
> One of our better known SpamAssassin users have been prodding us to have
> the SpamAssassin trademark registered now that Hormel has lost,
> apparently hundreds of, cases objecting trademarks containing "spam".
>
> Apparently (I don't recall at the moment) the ASF tried once before to
> have the mark registered and now that there's been a bunch of "spam"
> trademarks registered we should have no problem getting the mark
> registered.
>
> My questions... is this something the ASF would like to have happen and
> how can we go about making it happen?
>
> Thanks,
>
> Daryl
>
>
> ---------------------------------------------------------------------
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> only. Statements made on this list are not privileged, do not
> constitute legal advice, and do not necessarily reflect the opinions
> and policies of the ASF. See <http://www.apache.org/licenses/> for
> official ASF policies and documents.
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