Subject: Community Input Requested on Trustees’ Intent to Renounce “IETF Secretariat” Trademark

From: IETF Administrative Director <[email-masked]>
Date: Fri, 04 Apr 2014 11:00:01 -0700

All;

The Trustees of the IETF Trust have voted an intent to renounce (abandon) the “IETF Secretariat” 
trademark, but before taking any action they desire to hear from the community.  

Specifically:  

It is the Trustees’ intent to:

1. Not renew the “IETF Secretariat” trademark, Registration 3860848, in the European Community 
at an approximate cost of $5,000 USD for a ten-year period when due on May 28, 2014, and 
thereby renounce the trademark as having no foreseeable future value in accordance with Article 7.1a 
of the Amended and Restated Trust Agreement, <http://trustee.ietf.org/trust-agreement-2014.html>.  
The trademark has no foreseeable future value as the “IETF” trademark is registered in the European 
Community and its use with Secretariat is protected.

2. Not renew the “IETF Secretariat” trademark, Registration 2392833, in the United States at an unknown 
future cost when the trademark expires on October 10, 2020, and thereby renounce the trademark as 
having no foreseeable future value in accordance with Article 7.1a of the Amended and Restated Trust 
Agreement, <http://trustee.ietf.org/trust-agreement-2014.html>.  The trademark has no foreseeable 
future value as the “IETF” trademark is registered in the United States and its use with Secretariat is 
protected.

Authority:

The Trustees have the authority to renounce the trademark in accordance with Article 7.1a of the 
Amended and Restated Trust Agreement after consulting with the Beneficiary.   
<http://trustee.ietf.org/trust-agreement-2014.html>

This Article states in relevant part:
"the Trustees may, after due consultation with the Beneficiary, dispose of, assign, sell, transfer, 
renounce, convey or terminate Trust Assets that are of no current or foreseeable future value to 
the Beneficiary and which require the expenditure of funds to retain.This exception does not 
include RFCs.”

The purpose of this announcement is to begin the consultation with the Beneficiary, the IETF 
Community.  This thirty (30) day comment period expires on 5 May 2014.  The Trustees will consider 
the Community input before making a decision whether to renounce the “IETF Secretariat” trademark 
or not.  

Your feedback is appreciated.

Thanks
Ray Pelletier
IETF Administrative Director
Trustee
IETF Trust

---

From: David Morris <[email-masked]>
Date: Fri, 4 Apr 2014 11:09:26 -0700 (PDT)

An english interpretation would be helpful ... I think this is saying is
that "IETF Secretariat" is not needed because we have "IETF" as a
registered trademark (and thus "IETF Secretariat" remains prtected)?

On Fri, 4 Apr 2014, IETF Administrative Director wrote:

> All;
>
> The Trustees of the IETF Trust have voted an intent to renounce (abandon) the ?IETF Secretariat?
> It is the Trustees? intent to:
>
> 1. Not renew the ?IETF Secretariat? trademark, Registration 3860848, in the European Community
> The trademark has no foreseeable future value as the ?IETF? trademark is registered in the European
> 2. Not renew the ?IETF Secretariat? trademark, Registration 2392833, in the United States at an unknown
> future value as the ?IETF? trademark is registered in the United States and its use with Secretariat is
> protected.
>
> Authority:
>
> include RFCs.?
> the Community input before making a decision whether to renounce the ?IETF Secretariat? trademark
> or not.
>

---

From: Dave Crocker <[email-masked]>
Date: Fri, 04 Apr 2014 11:11:10 -0700

On 4/4/2014 11:00 AM, IETF Administrative Director wrote:
> trademark,

It sounds as if this will open the door to my being able to advertise 
myself as the IETF Secretariat.  Or even the ITU's being able to.  Yes?

d/

-- 
Dave Crocker
Brandenburg InternetWorking
bbiw.net

---

From: Ray Pelletier <[email-masked]>
Date: Fri, 4 Apr 2014 14:19:38 -0400

On Apr 4, 2014, at 2:11 PM, Dave Crocker <[email-masked]> wrote:

> It sounds as if this will open the door to my being able to advertise myself as the IETF Secretariat.  Or even the ITU's being able to.  Yes?

You could certainly use “Secretariat” but you cannot use “IETF Secretariat” without violating the “IETF” trademark.

Ray

---

From: Ray Pelletier <[email-masked]>
Date: Fri, 4 Apr 2014 14:20:30 -0400

On Apr 4, 2014, at 2:09 PM, David Morris <[email-masked]> wrote:

> registered trademark (and thus "IETF Secretariat" remains protected)?

That is correct.

Ray

---

From: John C Klensin <[email-masked]>
Date: Fri, 04 Apr 2014 15:45:52 -0400

--On Friday, April 04, 2014 14:19 -0400 Ray Pelletier
<[email-masked]> wrote:

>> It sounds as if this will open the door to my being able to
>> advertise myself as the IETF Secretariat.  Or even the ITU's
>> being able to.  Yes?
> 
> You could certainly use "Secretariat" but you cannot use
> "IETF Secretariat" without violating the "IETF"
> trademark.

Ray, I assume that if Dave (or someone else) set themselves up
as the International Elegant Tophat Fabrication Society, made at
least a perfunctory effect to establish themselves as being in
that business, established a business unit that they called
their "Secretariat", and then advertised the result as the "IETF
Secretariat", things could get dicey.  Given the different line
of business, they might even be able to take out a trademark on
"IETF Secretariat".  Right?

Now, whether having a trademark registered as "IETF Secretariat"
with whatever line of business the IETF and IETF Secretariat
claim to be in would offer significant protection against that
attack is far outside my knowledge or experience.

I have enough trouble imagining someone going to the trouble to
attempt the above as an attack that I think it would probably be
foolish to worry about it, but it is, in principle, the
difference between "no risk" and "no risk worth worrying about".

    john

---

From: "John Levine" <[email-masked]>
Date: 4 Apr 2014 20:06:00 -0000

>> advertise myself as the IETF Secretariat.  Or even the ITU's being
>> able to.  Yes?

> You could certainly use "Secretariat" but you cannot use "IETF
> Secretariat" without violating the "IETF" trademark.

Secretariat is a generic world, while IETF is made up.  Trademark law
generally allows you to protect a made up word, or a phrase containing
made up words or a combination of generic and made up.

I agree that so long as we maintain a trademark on "IETF" there is
little value in separate registration of phrases, particularly
considering how expensive it is.  The US renewal fee is only $450 but
that still seems like a waste in this case.

By the way, when I go to the WIPO Madrid Protocol web site, it says
that the renewal fee for the EU is CHF2186, about $2500.  Where'd the
$5000 come from?  And did we ever follow up on Japan's rejection of
our application?

R's,
John

---

From: "John Levine" <[email-masked]>
Date: 4 Apr 2014 20:18:53 -0000

>"IETF Secretariat".  Right?

Yes, and under those circumstances, it wouldn't matter whether we had
a registration or not, since trademarks are topic specific unless you
can persuade a court that your trademark is "famous".  That's why
there are live registrations for both the Ford Motor Company, and the
unrelated Ford Gum and Machine Company.

If someone other than us started passing itself as the IETF anything,
trademark registration would be only one bit of the battle.

Although I do note that on the WIPO Madrid Trademark page, we have
registrations in Australia, the EU, Korea, Norway, Russia, and
Singapore, but not in Switzerland, where the ITU is, nor China.

R's,
John

---

From: Ray Pelletier <[email-masked]>
Date: Fri, 4 Apr 2014 17:57:53 -0400

> "IETF Secretariat".  Right?

The "risk" applies to IETF in addition to IETF Secretariat.  
We don't own IETF in every class of goods and services. 
IETF bananas, top hats and car tires can be sold and  
that won’t violate our IETF trademark  

People aren’t going to be confused between the two,
just like they aren’t for Apple computers and Apple records.

Ray

---

From: Pranesh Prakash <[email-masked]>
Date: Fri, 04 Apr 2014 18:06:27 -0400

> myself as the IETF Secretariat.  Or even the ITU's being able to.  Yes?

IAAL: Anyone can do that already.  One must remember that trademarks are 
granted on a class-wise basis.

A trademark for IETF (or IETF Secretariat) can simultaneously belong to 
multiple companies and organization as long as they are for different 
classes (of goods and services).

-- 
Pranesh Prakash
Policy Director, Centre for Internet and Society
T: +91 80 40926283 | W: http://cis-india.org
-------------------
Access to Knowledge Fellow, Information Society Project, Yale Law School
M: +1 520 314 7147 | W: http://yaleisp.org
PGP ID: 0x1D5C5F07 | Twitter: https://twitter.com/pranesh_prakash

---

From: "cdel.firsthand.net" <[email-masked]>
Date: Fri, 4 Apr 2014 23:08:51 +0100

I was about to ask under what classes IETF registrations are held? 

Christian de Larrinaga

> On 4 Apr 2014, at 22:57, Ray Pelletier <[email-masked]> wrote:
> 
>

---

From: "John Levine" <[email-masked]>
Date: 4 Apr 2014 22:47:28 -0000

>I was about to ask under what classes IETF registrations are held? 

No need to ask when the answer is a few clicks away at uspto.gov.

The IETF has two trademark registrations, #78755455 on the term IETF,
and #78755496 on the logo.  Both are in the same three classes, one
cancelled and two active:

(CANCELLED) IC 009. US 021 023 026 036 038. G & S: [ CD-ROMs
containing technical, design, engineering, management and
administrative information in the field of standards and best
practices development for the development and evolution of the
Internet ]. FIRST USE: 19970831. FIRST USE IN COMMERCE: 19970831

IC 035. US 100 101 102. G & S: Providing information services and an
Internet website containing information about administrative,
management, and business standards and best practices for promoting
the development and evolution of the Internet. FIRST USE: 20011231.
FIRST USE IN COMMERCE: 20011231

IC 042. US 100 101. G & S: Providing information services and an
Internet website containing information about technical, engineering,
and design standards and best practices for the development and
evolution of the Internet. FIRST USE: 20011231. FIRST USE IN COMMERCE:
20011231

IETF SECRETARIAT is in two areas:

IC 035. US 100 101 102. G & S: Providing administrative, and
management support services in the field of standards related
activities to facilitate the development and evolution of global
computer networks. FIRST USE: 19990714. FIRST USE IN COMMERCE:
19990714

IC 042. US 100 101. G & S: Providing technical coordination support
services for standards related activities to facilitate the
development and evolution of global computer network. FIRST USE:
19990714. FIRST USE IN COMMERCE: 19990714

Did the IETF ever distribute CD-ROMS?  Not that I recall, but I'm a
relative newcomer.

R's,
John

---

From: John C Klensin <[email-masked]>
Date: Sat, 05 Apr 2014 01:40:05 -0400

--On Friday, April 04, 2014 22:47 +0000 John Levine
<[email-masked]> wrote:

>...
> Did the IETF ever distribute CD-ROMS?  Not that I recall, but
> I'm a relative newcomer.

Yes.  Meeting proceedings were distributed in CD-ROM form for
several years (after distribution in paper volumes was
discontinued).  

IIR, at the time physical distribution of CD-ROMs was
discontinued, there was a commitment to make ISO-format images
available for the whole set for a meeting as well as the HTML
pages that are broken up by, chapter categories and then e.g.,
by area and WG.  As far as I can tell from a quick scan of the
archives, that project was never initiated.  Also, while I know
that most people in the community are quite certain that HTTP
access to structured HTML (mixed with text and PDF) files will
be available forever, it may be that having proceedings only in
that form will eventually turn out to be inconsistent with our
supposed commitments to historical preservation.  

That is another part of the "security and the files" discussion:
if one looks at the very long term, it is much easier to have
confidence in availability of materials through methods that do
not require encrypted access using particular encryption
technologies then through those that do.   So a decision to make
information available only via security-protected mechanisms
may, depending on the techniques chosen, imply a somewhat larger
maintenance commitment than access that does not require those
mechanisms.

     john

---

From: Mikael Abrahamsson <[email-masked]>
Date: Sat, 5 Apr 2014 08:38:57 +0200 (CEST)

> supposed commitments to historical preservation.

Speaking of which, how is the data/documents/whatever IETF produces backed 
up? I would feel better if I knew that there were 10+ backups spread 
around the world. This would include recordings from the meetings, 
documents (all kinds) etc.

-- 
Mikael Abrahamsson    email: [email-masked]

---

From: Abdussalam Baryun <[email-masked]>
Date: Sun, 6 Apr 2014 15:17:38 +0200

Hi Ray,

my questions below,

On 4/4/14, IETF Administrative Director <[email-masked]> wrote:
> All;
>
> The Trustees of the IETF Trust have voted an intent to renounce (abandon)
> the "IETF Secretariat"

What is this hearing status like? is it like if the community reply
was: *no* don't do that, then they as trustees will change their mind,
or is it, just hearing. I am not sure if my input has any value in
this community request.

If IETF is not active in using its trademarks in business, then why
the trustees don't think in different directions. Was IETF trademarks
used in US and Europe and the result was not good, we need information
to know what is happening?

My thoughts is that we may get benefits from IETF trademarks in
future, so if the trustees decide now to leave it, could they
establish it any time by thoes governments registrations? I am not a
legal expert person but for international organisation like IETF is it
possible to get registrations at UN or any other authority that may
make discounts?

Thanks

AB

---

From: Ray Pelletier <[email-masked]>
Date: Tue, 8 Apr 2014 14:17:25 -0400

> or is it, just hearing. I am not sure if my input has any value in

The responsibility of the Trustees is to “consult” with the community.  There may
be reasons the Trustees hadn’t heard of or considered for not taking this 
particular action. 

> to know what is happening?

The reason for this action is that it is unnecessary to protect “IETF Secretariat”
because “IETF” is protected.  

> establish it any time by thoes governments registrations?

The Trustees could apply for trademark protections in the future.

> I am not a

One has to apply for trademark protections all over the world.
“IETF” is registered in Australia, Canada, China, European Community, Japan, Korea, 
Norway, Russia, Singapore, Switzerland, New Zealand, South Africa,
Taiwan, and the United States.

Ray

---

From: Hector Santos <[email-masked]>
Date: Tue, 08 Apr 2014 17:49:19 -0400

I don't see a legal issue or lost of trademark infringement protection 
for the reason stated.  I would suggest that, if necessary, the IETF 
could still legally list "IETF Secretariat" as a trademark <TM>, just 
not registered (R).

--
HLS

---

From: Abdussalam Baryun <[email-masked]>
Date: Wed, 9 Apr 2014 00:05:26 +0100

On Tuesday, April 8, 2014, Hector Santos wrote:

> I don't see a legal issue or lost of trademark infringement protection for
> the reason stated.  I would suggest that, if necessary, the IETF could
> still legally list "IETF Secretariat" as a trademark <TM>, just not
> registered (R)

Yes. However, I don't understand what is the real value of that
registered mark. I don't understand why it was started/continued in the
first place for such volunteering organisation. If IETF
community agree/identifies that there are some values, then we can find
alternatives. Mostly we only need the one IETF trademark.

AB

---

From: Ray Pelletier <[email-masked]>
Date: Wed, 9 Apr 2014 13:47:48 -0400

> I was about to ask under what classes IETF registrations are held? 

IETF is in Class 42.

The IETF Logo is in the following classes:  9, 35, 42

“IETF Secretariat” is in: 35, 42.

Ray

---

From: Abdussalam Baryun <[email-masked]>
Date: Tue, 15 Apr 2014 02:52:16 +0100

Comment Date: 15.04.2014

Subject Issue: IETF trademarks and future plans/decisions.
Comment Author: Abdussalam Baryun (AB).
Your request for comments was dated 04.04.2014
The end date of comment period 05.05.2014

Dear Trustees,

I thank you for your request, and would like to see more feedback requests
in the future on this list for at least once per year. IMO the trust
agreement may need some changes in future to involve more
organised feedback but organised by IETF general area participants. It will
be better to involve IETF WGs when requests related to IETF future image. I
am not sure if there is a RFC for that openness and involvement but it will
be good to have in similar request issues.

My feedbacks/comments or opinions/suggestions on the issue are:

0) IMHO the secretariatsIETF is a service mark not a trademark. But IETF is
the registered trademark. Any trademark and organisation logo has its
markets, so hopefully we know our markets.
1) that we IETF need to protect and use our trademarks, and not sure how we
were using the secretariats trademark. If used we should have made some
money from it. You did not report about past benefits from that trademark
within your request. Also what kind of markets was that trademark
targeting.
2) the IETF trademark should be used in  favour of IETF to cover
its protect expenses. Is there plans for this? I need to know also if there
are future plans. I suggest you make plans available to community because
our feedback needs to stand on some ground otherwise you are asking someone
with no market-history knowledge. I would like to know information of the
markets for all IETF marks if available, then my feedback will be better
useful.
3) I don't know who is the current IETF secretariats (it may be because I
think that knowledge will not benefit me). I don't think there is/were a
market plan for that trademark. The IETF web page does not announce
the secretariats name, which can be a form of protection. However, IETF ADs
and IETF chair are well known, so I suggest announcing the name of the
secretariats.
4) many companies use IETF meetings and participate/host but is there
integrated projects among companies using IETF trademark, so that the IETF
general area can establish. Is that situation I think the secretariats
trademark can be helpful. So I hope you define (defined conditions or
situations or markets) when we need or don't need that secretariats
trademark, also that you have a plan when to bring it back registered if
your defined conditions apply.
5) IETF trademark is not really with good standards of trademarks (if we
evaluate it properly). If I compare with IEEE then I may think that whom
responsible are not marketing/planning for IETF marks/logos.

Thanks for your message, wishing you all the best.

Best Regards
AB

---

From: Ole Jacobsen <[email-masked]>
Date: Mon, 14 Apr 2014 19:13:56 -0700 (PDT)

AB,

Why do you think this has *anything* to do with "marketing" ???

Trademarks are there to protect brands and owners, so that somebody 
else cannot cause confusion by using the same name/mark/logo.

That's all.

Ole

Ole J. Jacobsen
Editor and Publisher
Home: +1 415-550-9427
Cell: +1 415-370-4628
Japan Docomo: +81 90 3337-9311
UK Orange: +44 7805 977889
E-mail: [email-masked]
URL: http://organdemo.info
Skype: organdemo

---

From: Abdussalam Baryun <[email-masked]>
Date: Wed, 16 Apr 2014 04:17:53 +0100

Hi Ole,

IMHO any registered organisation (even if volunteering) has a market which
has users/customers. If there is a market, then there should be a logo and
if there is a logo then that is a marketing signal, but will always need
marketing (planning and strategies) to make that organisation not die in
future within its markets (specially volunteering organisations don't last
without marketing).

@ Trustees:
My point 4 needs amendment as follows:

4) many companies use IETF documents/meetings and participate/host but are
there integrated projects among those companies by using the IETF
trademark. I think that the IETF general area can establish projects among
those companies to produce some new IETF products. In that situation I
think the secretariats trademark can be helpful within that general area
works/projects. So I hope you define (defined conditions or situations or
markets) when we need or don't need that secretariats trademark, also that
you have a plan when to bring it back registered if your defined conditions
apply.

On Tuesday, April 15, 2014, Ole Jacobsen wrote:

> Trademarks are there to protect brands and owners,

 Yes within its market.

so that somebody
> else cannot cause confusion by using the same name/mark/logo.

I don't think that is only the case. IMO it cost thousands for reasons not
just that. The confusion is related to users and those users may change to
use others. If no one uses IETF then it will close down, which trustees
should make sure not to let that happen.

AB