RE: referencing trademarks in RFCs
Contreras, Jorge <Jorge.Contreras <at> wilmerhale.com>
2004-11-02 11:48:12 GMT
I recall that the text currently in RFC 3667 relating to trademarks was
developed after some careful thought and discussion. I think it would result
in the following outcomes:
1. If an author wants to use (TM) or (R) after certain terms in an IETF
Document, he/she would be permitted to do so.
2. Other claims about trademark ownership belong in separate IP disclosures.
These disclosures would include both statements like "My company is the
registered owner of US Trademark 12345 covering use of the term 'FOOBAR' when
applied to computer software" and "XYZ Company (a third party) is claiming ownership of
German trademark rights in 'FOOBAR'".
3. The IETF should not be put into a position of having to reproduce or make
decisions about the merit of individual trademark claims.
4. Under US law, it is doubtful that use of a trademarked term in an IETF
document would infringe the mark. Infringement generally only occurs in
connection with the sale or promotion of a good or service, which is not what
happens in an IETF document.
I hope that helps,
From: ipr-wg-bounces <at> ietf.org [mailto:ipr-wg-bounces <at> ietf.org]On Behalf
Of Steve Bellovin
Sent: Monday, November 01, 2004 1:59 PM
To: ipr-wg <at> ietf.org
Subject: referencing trademarks in RFCs
The issue of trademarks recognition has come up in a working group.
The IESG has asked the IPR working group to discuss the issue and
formulate a policy.
Section 3.3(a)(D) says that contributors grant rights to the IETF to
reproduce trademarks, etc. It also says:
When reproducing Contributions, the IETF
will preserve trademark and service mark identifiers used by
the Contributor of the Contribution, including (TM) and (R)
where appropriate, and
3.4(e) says that contributors warrant that
All trademarks, trade names, service marks and other proprietary
names used in the Contribution that are reasonably and personally
known to the Contributor are clearly designated as such where
The question is how trademarks should be designated. Clearly, a (TM)
or a (R) is permitted by the RFC. Furthermore, 3.6 says that
conditions pertaining to implementors using the trademarked terms
should be listed on the IETF IPR page, just as is done for patents. We
do have a tradition of not listing specific IPR claims in RFCs, partly
because ownership and/or validity of such claims can change over time.
On the other hand, some trademark owners want to include a more
specific acknowledgment, i.e., "Foobar is a trademark of the Hackers
Corporation". It's been done before; see, for example, RFCs 1510,
2160, 3268, 2268, and 2936. Beyond that, simply using a trademarked
term within an RFC is, arguably, done solely at the pleasure of the
trademark owner; that is quite different from a patent, where a
protocol specification does not infringe. Furthermore, trademark
owners have a legal duty to protect their trademarks, at risk of losing
That said, specific ownership statements are not universal. Pulling a
(non-random) book off my shelf, I see the statement "Many of the
designations used by manufacturers and sellers to distinguish their
products are claimed as trademarks. Where those designations appear in
this book, and Addison-Wesley was aware of a trademark claim, the
designations have been printed in initial capital letters or in all
capitals." Do we want more boilerplate instead?
So -- how should trademarks be denoted? Just a (TM) or (R)? Specific
ownership statements? A blanket statement?
--Steve Bellovin, http://www.research.att.com/~smb
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