Re: [Geotools-admin] letter passed on from osgeo

[Jody G. <jod...@gm...>]

I note that the GeoTools project started in leeds, and that trademarks between the US and UK are not carried over the same way they are around europe.

If you would like an opinion from a US trademark attorney we can ask OSGeo. Is there a department on CSIRO that would be
knowledgable on such things?

I am a little bit cautious about venturing any further opinion on a public email list such as this; it may be worth setting up a PMC conference call via Skype. Possibly with Tyler.

-- 
Jody Garnett

On Thursday, 31 March 2011 at 5:35 PM, Ben Caradoc-Davies wrote: 
> They have certainly taken a conciliatory and constructive tone. Peaceful 
> coexistence is a preferable outcome.
> 
> I wonder when they first started using the name in commerce? GeoTools 
> has a well-documented release history. They may be on shaky ground 
> because tolerating infringement by a well-known global project may be 
> evidence of abandonment. Registration alone may be insufficient:
> http://en.wikipedia.org/wiki/Abandonment#Abandonment_of_Trademark
> (Google for trademark abandonment for hours of amateur fun.)
> 
> geotools.com was registered in 1997. geotoolsmt.com was registered three 
> days ago. :-)
> 
> They may be conciliatory because they have taken legal advice.
> 
> In my view, an opinion from a US trademark attorney would be money very 
> well spent. In particular, getting advice before we respond would ensure 
> that we do not make any inadvertent prejudicial remarks.
> 
> Kind regards,
> Ben.
> 
> On 31/03/11 14:51, Michael Bedward wrote:
> > Well, at least they didn't threaten to sue.
> > 
> > In a previous life I used to contribute to the wxWindows C++ GUI
> > library which had to be renamed to wxWidgets because a certain big
> > company with a big legal stick decided that wxWindows was too similar
> > to its OS name.
> > 
> > Michael
> > 
> > On 31 March 2011 17:38, Jody Garnett<jod...@gm...> wrote:
> > > Passing on the following from Tyler:
> > > 
> > > From: Tyler Mitchell<tmi...@os...>
> > > Dear Isabelle, thank you for the note. I'll be passing your note along to
> > > the project management team for discussion and consideration.
> > > Best wishes,
> > > Tyler
> > > Tyler Mitchell
> > > Executive Director
> > > Open Source Geospatial Foundation
> > > tmi...@os...
> > > +1-250-303-1831
> > > On 2011-03-30, at 2:07 PM, Isabelle Herbert wrote:
> > > 
> > > Dear Sirs
> > > 
> > >  I'd like to draw your attention to your use of the name 'Geotools' on your
> > > website and within your organization.
> > > 
> > >  You may not be aware that the name 'GEOTOOLS'TM in all its forms (words,
> > > letters, or numbers in typed form) belongs to AOA Geophysics Inc. a
> > > corporation headquartered in Houston, Texas. We have owned the name
> > > GEOTOOLSTM since October 30th 1990 when it was originally granted to WSE
> > > Associates Inc who were later bought by Geotools Corporation and then later
> > > still bought by AOA Geophysics Inc.
> > > 
> > > The Mark GEOTOOLS was registered 22nd January 1991, number 1,632,235
> > > 
> > >  The name GEOTOOLSTM is trademarked for class 009 - computer software for
> > > earth sciences.
> > > 
> > >  It has been renewed at regular intervals since 1990 and is still in our
> > > possession.
> > > 
> > >  AOA Geophysics Inc. uses the name GEOTOOLS TM for its magnetotelluric (MT)
> > > data processing and interpreting software suite. I refer you to our website
> > > 
> > > http://www.aoageophysics.com/electrical-methods/geotools-mt-software/
> > > 
> > >  We also own the domain names www.geotools.com and www.geotoolsMT.com
> > > 
> > >  We are currently in the midst of an update to the software and will shortly
> > > be relaunching it and are therefore anxious to avoid confusion among our
> > > clients - as I'm sure you are too. The name of your product GeoTools, The
> > > Open Source Java GIS Toolkit could easily be confused with our software, and
> > > in addition, throughout your text, you refer to it solely as 'Geotools'
> > > rather than Geotools GIS or something similar, leading we feel to even more
> > > potential for confusion.
> > > 
> > > We would appreciate it if you could please make clear that your 'version' of
> > > GEOTOOLS / Geotools / GeoTools does NOT refer to AOA's MT processing
> > > software suite. You may wish to put that as an item on your website, or
> > > possibly announce it via email to your clients.
> > > 
> > > Furthermore, we would like you to consider putting a link from your website
> > > to ours, so that any clients will be able to find the information they are
> > > looking for.
> > > 
> > > We await your reply.
> > > 
> > > Regards
> > > 
> > > 
> > > 
> > > Isabelle
> > > 
> > > --
> > > 
> > > Isabelle Herbert
> > > 
> > > Operations Manager
> > > 
> > > AOA Geophysics Inc.
> > > 
> > > 2500 Tanglewilde Ave., Suite 120
> > > 
> > > Houston TX 77063
> > > 
> > > Office: 713 532 2624
> > > 
> > > Cell: 831 254 9147
> > > 
> > > email: isa...@ao...
> > > 
> > > 
> > > 
> > > 
> > > 
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> -- 
> Ben Caradoc-Davies <Ben...@cs...>
> Software Engineering Team Leader
> CSIRO Earth Science and Resource Engineering
> Australian Resources Research Centre
>