Subject: referencing trademarks in RFCs

From: Steve Bellovin <[email-masked]>
Date: Mon, 01 Nov 2004 13:59:12 -0500

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
      reasonable.

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 
them.

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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From: Bill Sommerfeld <[email-masked]>
Date: Mon, 01 Nov 2004 15:48:03 -0500

> ownership statements?  A blanket statement?

under US law there appear to be many different flavors of trademarks.  

trademarks have both geograpic and topical scope.  one trademark at
issue is the same in letter form as another one for medical devices.

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From: Bill Sommerfeld <[email-masked]>
Date: Mon, 01 Nov 2004 15:49:31 -0500

On Mon, 2004-11-01 at 15:48, Bill Sommerfeld wrote...

.. a message which escaped early.   please ignore; I'll send a more
complete one shortly.

---

From: John Levine <[email-masked]>
Date: 2 Nov 2004 01:33:00 -0000

>The question is how trademarks should be designated.

This question has come up many times in the books I've written.
Basically, it's not our job to defend other people's trademarks, no
matter how much their junior lawyers may wish otherwise.  The
boilerplate from A-W is typical of what's been in my books, and I
would suggest using it in documents in which the authors are aware of
mentioning names that are claimed as trademarks.  Trademark law varies
a lot from country to country, registration rules are
country-specific, and it's a swamp we should stay out of as far as
possible.

That said, I can imagine that if one of the authors of a document
works for the Foo corporation, it might be a Foo policy that their
employees acknowledge the company's trademarks.  That seems OK so
long as it doesn't get out of hand, perhaps with a sentence added to
the boilerplate like "Foogasm is a registered trademark of Foo Corp."

Regards,
John Levine, [email-masked], Taughannock Networks, Trumansburg NY
http://www.taugh.com

PS: The infamous "Unix(TM)" comes from a clause in early academic Unix
contracts and was binding on the licensees.  You don't have to do it
any more, unless perhaps if you work for X/Open.

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From: BIll Sommerfeld <[email-masked]>
Date: Mon, 01 Nov 2004 21:43:08 -0500

> country-specific, and it's a swamp we should stay out of as far as

so, under that interpretation, rfc3667 section 3.4e (which I read to
require acknowledgement of third-party trademarks known to the author)
should simply be deleted, and 3.3a(D) extended to better constrain the
specific form of  trademark designations that the IETF agrees to
preserve.

Given the complex nature of authorship of many WG documents (often
there's an original author, and then the text gets handed from editor to
editor, accreting text from many WG members), might it be necessary to
identify which of the original author(s) are making a particular
trademark claim?

					- Bill

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From: Brian E Carpenter <[email-masked]>
Date: Tue, 02 Nov 2004 13:41:28 +0100

I think it is reasonable to use the (TM) and (R) designations
and a blanket statement, but actually trademark holders may well
want more, e.g. http://www.opengroup.org/openbrand/tmug.pdf
In such cases the complete acknowledgement text may be a
practical necessity.

    Brian

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From: "Spencer Dawkins" <[email-masked]>
Date: Wed, 3 Nov 2004 06:46:31 -0600

> identify which of the original author(s) are making a particular

I apologize in advance for wobbling off-topic, but this is yet another 
excellent reason for not dragging on in specifications work!

Spencer

("TM by an infinite number of monkeys typing ...")