Subject: Re: OSI enforcement? (Was Re: Microsoft use of the term "Open Source")
From: Rick Moen <>
Date: Sat, 5 Jan 2008 03:21:59 -0800

Quoting Arnoud Engelfriet (

> Which immediately suggests to me that OSI should re-apply for
> a registered trademark on "open source", as this kind of activity
> may well have established secondary meaning for this otherwise
> descriptive term.

(For readers' background:)

More specifically, US trademark caselaw divides marks into four
categories: arbitrary (aka fanciful), suggestive, descriptive, and
generic.  The ease of showing validity for the mark, and the degree of
legal protection, differs.   Generic marks, ones that simply describe
the product/service category, don't qualify for trademark protection at
all.  That's one reason you don't see a Car-brand car.  ;->

Arbitrary (fanciful) marks are ones utterly unrelated to the product
category, e.g., the word "Nike" and its swoosh insignia (examples of
trade dress, which also encompasses distinctive packaging) are signs of
an arbitrary mark.  Arbitrary is good for legal validity because it
makes the mark distictive to the product or service, and such marks
easily earn a high degree of protection by law.

(Eh, I belatedly see that the Wikipedia page distinguishes arbitrary
from fanciful.)

A suggestive mark is almost as good in the courts' eyes, using a name
and trade dress that call up the product/service category to customers'
eyes, but can be distinguished from it, e.g., Sunkist orange juice.  

A descriptive mark is the most problematic and thus most-scrutinised of
the three potentially-valid types:  It directly describes in its
definition the product's inherent characteristics, e.g., "Quality Inn".
The courts (and USPTO) require that claimants create public
understanding of a "secondary meaning" of the mark itself, as distinct
from the associated general product category, to make it _distinctive_.

Basically, this extra hurdle for descriptive marks is because you
_cannot_ become "the legal owner of an expression" (to borrow Philippe's
phrase):  The law permits people to have a limited monopoly over 
_brand impressions_ created by _brand identities_ in commerce.  The
actual words associated with those brands remain absolutely free for use
by anyone who doesn't infringe on commercial rights associated with
brand impressions.  (And I'm welcome to make statues of Nike.)

Someone wishing to establish, and/or to register, a descriptive mark 
is thus motivated to associate his/her mark with his/her product,
service, or certification regime.  That's what "secondary meaning" _is_.

Factors the courts normally evaluate to determine if a descriptive mark
has established enough "secondary meaning":  (1) the amount and manner
of advertising; (2) the volume of sales; (3) the length and manner of
the term's use; (4) results of consumer surveys.[1]  (Equivalents for a
certification program for software would probably be things like surveys 
of mentions in the press.  The key question, really, is whether people
think of the certification program when they see the mark.)

"Trade dress" (distinctive insignias, logos, other stylistic elements,
product packaging) is often very helpful in establishing the required
"secondary meaning".  For example, one notes the drawing associated with
OSI's certification mark "OSI Certified".  

Thus, maybe a similar drawing for "Open Source"[tm] would be useful --
and, in particular, would help improve on SPI's 1998 attempt to register
the bare phrase "Open Source" with USPTO, which failed for that reason
and others.

[1]  Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th
Cir. 1983).