Subject: Status of trademark claims in SECSH working documents?

From: Thor Simon <[email-masked]>
Date: Wed, 14 Feb 2001 16:00:09 -0500

The current SECSH working documents contain quite a bit of language
identical or substantially similar to the following:

> 9.  Trademark Issues
>
> SSH is a registered trademark and Secure Shell is a trademark of SSH
> Communications Security Corp.  SSH Communications Security Corp permits
> the use of these trademarks as the name of this standard and protocol,
> and permits their use to describe that a product conforms to this
> standard, provided that the following acknowledgement is included where
> the trademarks are used: ``SSH is a registered trademark and Secure
> Shell is a trademark of SSH Communications Security Corp
> (www.ssh.com)''.  These trademarks may not be used as part of a product
> name or in otherwise confusing manner without prior written permission
> of SSH Communications Security Corp.

Unfortunately, it appears to me that the text quoted above contains at
least one substantial misrepresentation.  US registered trademark number
214991, owned by SSH Communications Security Oy, 12 02150 Espoo FINLAND,
is for '"ssh", namely the letters in "stylized form"'; in other words,
it refers to the *SSH Communications corporate logo*, a particular way
to write the lowercase letters "ssh" -- mind you, as far as I can tell,
not even "any way to write the lowercase letters", just the particular
stylized way that was registered -- and not other use of the letters
"SSH" whether lowercase or uppercase.

I think the language quoted above raises a number of other ethical
issues I'd honestly prefer to avoid flamage about on this list.  However,
I would like some clarification about the language above and/or confirmation
that it will be stricken from the standard before issue, unless there
has been some serious misunderstanding and it is actually true.

The one ethical concern I _would_ like to raise is the practice of
naming a standard and working group in such a manner as to evidently
attempt to be able to later bushwack implementors with intellectual
property claims, whether valid or specious.  But I don't think this list
is necessarily the right place to raise that concern, either.  I would
like it if someone could tell me what *is* the right place within the
IETF structure to do that, in private email, please.

Thor

---

From: Thor Simon <[email-masked]>
Date: Wed, 14 Feb 2001 17:28:53 -0500

On Wed, Feb 14, 2001 at 11:49:00PM +0200, Tatu Ylonen wrote:
> This is not true.  I've seen the incorrect text on USPTO web site, which
> apparedly contains something scanned from a fax in small font.  Our
> lawyers checked it and the registration was ok as intended.
> 
>     Tatu

The USPTO records available online show an *abandoned application for*
a plain-text mark "SSH" and a *stylized text* mark "ssh".  I have
confirmed this with legal counsel.  Are you saying that the USPTO is
in error about the status of your mark?  I believe you'd need to take
that up with them; as it stands now, as far as I or my attorney are able 
to ascertain, there is no registered trademark for the text "SSH" in the 
United States.  Furthermore, given the use of the word "SSH" in a
generic sense, including use in a generic sense and granting of permission 
to use in a generic sense *by the registrant of the mark*  prior to even 
the filing date for the abandoned application, it seems highly unlikely to 
me (note that I am *not* a lawyer and I am not presuming to give *anyone* 
legal advice, this is my personal speculation) that the USPTO would in 
fact be willing to register a trademark for the text "SSH".

However, that's neither here nor there; the USPTO records show no such
registered trademark.

Consequently, as I requested in my previous message, I believe that the
referenced text should be stricken from all documents in the SECSH
working group immediately.

There are plenty of other reasons why I believe it should be stricken,
but I fear the onset of serious flamage were I to enumerate them.  Let's
stick to this one for the moment.

Thor

---

From: Bill Sommerfeld <[email-masked]>
Date: Wed, 14 Feb 2001 19:17:21 -0500

There's another problem with the trademark wording:

(Quoting from draft-ietf-secsh-architecture-07.txt):

   9.  Trademark Issues

It is not appropriate for the IETF to speak this way about a claimed
trademark or claim that another party (SSH Communications Security)
has granted certain rights to others.

This is in direct conflict with some of what RFC2026 states regarding
IPR claims:

   "The IETF takes no position regarding the validity or scope of
    any intellectual property or other rights that might be claimed
    to  pertain to the implementation or use of the technology
    described in this document or the extent to which any license
    under such rights might or might not be available; neither does
    it represent that it has made any effort to identify any such
    rights.

The current process for publication of IPR notices is to send them to
the IESG Secretary for placement on http://www.ietf.org/ipr.html; the
process is described on that page.

My understanding is that, before these documents have a chance of
approval by the IESG, the trademark section must be either removed or
altered to be in conformance with RFC2026's policy regarding IPR
claims by the IETF.

				- Bill

---

From: Thor Simon <[email-masked]>
Date: Wed, 14 Feb 2001 20:22:41 -0500

On Thu, Feb 15, 2001 at 02:37:10AM +0200, Tatu Ylonen wrote:
> I may have been inaccurate my statement above.  I just discussed this with
> our US trademark lawyer, and the US registration really appears to be for
> the lowercase word "ssh" (I have apparently received inaccurate
> information from our Finnish trademark lawyer).  However, our US lawyer
> confirmed that use of the name SSH in uppercase is "misleadingly
> similar" to the "ssh" mark and is infringing.

Unfortunately, your US mark is not a "typed drawing" mark; it is a
"Words, letters, and/or numbers in stylized form" mark.  It is my
understanding, based upon my discussion of the issue with my attorney,
that such a mark applies *only* to the specific graphical representation
of the mark which was registered; this is the *precise* difference from
the "typed drawing" mark the application for which you abandoned.

I am further advised by my attorney that such a mark does *not* apply to 
the uppercase letters "SSH" and certainly does not apply to those letters 
as a substring of another word.  In fact, it doesn't even apply to other
*lowercase* renderings of the letters "ssh".

Whatever conclusion is reached elsewhere in the IETF about this type
of maneuvering, if any, could we please have an end to it in *this* working
group?  That text does not belong in the documents, for the reasons that
I have stated in this and previous contributions and for the solid RFC 2026
reasons that Bill Sommerfeld cited in his most recent message.

Thor