[gl4java-usergroup] RE: trademarks

[Tiki D. <Tik...@co...>]

Dear GL4Java members,

I apologize for the delay in responding.  It seemed appropriate to
allow the group to fully comment.  This is the last input we received
at our trademarks@sun alias.

First and most important, Sun appreciates your ongoing support of the
Java technology.

Kerry Bonin has pointed out a number of the obligations that trademark
law imposes on trademark holders.  All trademark holders must protect
against improper use of its marks in order to prevent potential
confusion in the marketplace about the source or origin of products and
services bearing identical or similar marks.

Mark Simms asked a number of good questions about trademarks and
logos.

Because trademark owners must protect against the use of similar marks,
Sun's position, set forth in our guidelines at
http://www.sun.com/policies/trademarks is that it does not permit
companies to adopt company names, product names or service names that
incorporate the JAVA element.  Sun does not license exceptions to this
policy.

Our department is not familiar with QT4Java but we will investigate, as
we do with all reports of names incorporating the JAVA element, and
will take action if appropriate.

We also want to clarify that trademark law does not permit "fair use"
of logos. While it is possible to make "fair use" of word marks, such
as JAVA, to identify the relationship between another product, service
or technology and Sun's Java technology, it is not "fair use" to use a
logo.  If any of you on the alias are aware of any case law to the
contrary, please pass it on to tra...@su....

We hope you find the response helpful and we hope many of you are
joining Sun for the JavaOne conference.

Best Regards,


Tiki Dare

*************************************************************
Marilyn Tiki Dare		Sun Microsystems, Inc.
Asst. General Counsel		Trademarks & Brands Dept.
Sun Microsystems, Inc.		901 San Antonio Road
Tel: (650) 336-0335		M/S PAL01-521
Fax: (650) 336-6623		Palo Alto, California 94303
tik...@su...		USA






>X-Sender: pro...@sh...
>Date: Tue, 11 Apr 2000 22:32:29 -0700
>To: Sven Goethel <sgo...@ja...>, "'Max Gilead'" <gi...@li...>, 
"tra...@su..." <tra...@Su...>, GL4Java mailing list 
<gl4...@li...>
>From: "Kerry L. Bonin" <ke...@vs...>
>Subject: RE: trademarks
>Mime-Version: 1.0
>
>Preface: IANAL (I am not a lawyer) i.e. I haven't taken the bar exam (yet),
>I'm a programmer - but I am a paralegal and have represented myself and
>others in and out of court, have given lawyers obscene amounts of money to
>answer similar questions and draw up contracts, ect. ad nauseum.  Nuff
>disclaimer... :)
>
>Trademark law is an ugly thing.  Once you obtain a trademark, it becomes
>your legal duty to go after anyone and everyone who uses it without
>permission.  The limits on "fair use" of someone else's trademark is prety
>much limited to mentioning or describing their mark.  
>
>For marks protecting products or product lines, it is considered "dilution"
>and "confusing to the marketplace" if someone else uses a product or
>product name which encorporates your mark, no matter how subtly.  For
>example, Lego(tm)(sic) corp. just wrote a website which had used images of
>a lego soldier and walkie talkie to cease and desist on these grounds.
>
>If you don't do this, if you simply 'ignore' someone who's pushing the
>edge, it becomes possible for another party to bend it much farther, and by
>citing proof that you ignored someone else, they may win the right to use
>your mark or (worse) to have your mark placed effectively into the public
>domain.
>
>This sucks, but its how the law works.  (Keeps lots of lawyers well fed. :)
>
>In the case of gl4java, now that it is on their radar, they have the right
>to issue a cease and desist or license use of a term which encorporates
>their mark.
>
>I'd recommend looking for other instances Sun has licensed use of the term
>"java" as a subset of a product or package name to a (small) third party,
>then start making a case for similarity to their trademark office.
>Mentioning that the term has had high profile use will help.  The down side
>is that Sun tends to ignore groups that don't pay annual "consulting" fees.
>
>Kerry L. Bonin
>Sr. Engineer, Security/Cryptography & Advanced Visualization, Cisco Systems.
>VScape lead architect - Adaptive secure clustering for multiuser VR.