Zope Corporation Trademark Management Open Letter
In anticipation of the formation of a Zope Foundation we have documented our position with respect to the use and management of the Zope trademarks. We hope you find this document clarifies our position and addresses concerns about the future-proofness of the Zope brand.
Some of this open letter represents the simple collection of trademark background and documentation from around the Internet. We've collected this information in order to address popular misconceptions about what trademarks are, how they behave and what it means to preserve them. Many of the concerns we hear regarding the Zope trademark have no basis in law.

What is a Trademark?
A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.
What are the limits of trademark rights?
There are two situations where the doctrine of fair use prevents infringement:
Fair Use.
The term is a way to describe another good or service, using its descriptive term and not its secondary meaning. The idea behind this fair use is that a trademark holder does not have the exclusive right to use a word that is merely descriptive, since this decreases the words available to describe. If the term is not used to label any particular goods or services at all, but is perhaps used in a literary fashion as part of a narrative, then this is a non-commercial use even if the narrative is commercially sold.
Nominative fair use: This is when a potential infringer (or defendant) uses the registered trademark to identify the registrant's product or service in conjunction with his or her own. To invoke this dense, the defendant must prove the following elements.
Parody Use: Parodies of trademarked products have traditionally been permitted in print and other media publications. A parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that it is not the original and is instead a parody.
Non-commercial Use: If no income is solicited or earned by using someone else's mark, this use is not normally infringement. Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services are being offered, or the goods would not be confused with those of the mark owner, or if the term is being used in a literary sense, but not
to label or otherwise identify the origin of other goods or services, then the term is not being used commercially.
Product Comparison and News Reporting: Even in a commercial use, you can refer to someone else's goods by their trademarked name when comparing them to other products. News reporting is also exempt.
Geographic Limitations: A trademark is protected only within the geographic area where the mark is used and its reputation is established. For federally registered marks, protection is nationwide. For other marks, geographical use must be considered. For example, if John Doe owns the mark Timothy's Bakery in Boston, there is no infringement if Jane Roe uses Timothy's Bakery to describe a bakery in Los Angeles.
Why is Zope Corporation licensing the trademark to the Zope Foundation? And why now?
The formation of the Zope Foundation is an important step in the progress and development of Zope. This is especially true in the light of Zope 3's readiness for production deployments. We recognize that trademarks are an important component in the Foundation.
Where is the exact language of the trademark license?
The exact language has not been developed. We will be working on this as soon as possible and will post drafts and the final version when they're ready.
What is being covered by the trademark license?
Zope Corporation will license the right to use and sub-license the use of the word Zope and the "Circle-Z" for each of the following purposes:
-Distributing software releases
-owning and operating the website at www.zope.org.
-for the branding of Zope Foundation membership classes (e.g., Zope Committing Member, Zope -Strategic Developer, Zope Associate Member, etc.)
What will the Zope Foundation not be able to do with the marks?
The Zope Foundation will not have the authority to sublicense the trademarks in any way other than as explicitly permitted. In other words, it is easier to characterize what can be done rather than what can't be done.
That is vague. Give some examples of sub-licenses that would not be permitted.
The Zope Foundation would not have the authority to sub-license the following uses of the marks:
-Zope Consulting, GmbH
-http://www.ZopeDevelopmentForExperts.com
-http://zopemanagedhosting.com
So, if I wanted to create a site called Zope Development For Experts, I could not?!
If you wanted to create a site called Zope Development for Experts and locate it at http://www.zopedevelopmentforexperts.com you would ask Zope Corporation for a license to use the trademark. This application would ask you for the purpose of the site. Presuming the site was for the purposes of helping expert Python and Zope developers hone their skills Zope Corporation would not hesitate to grant a license to use the marks.
Are there any uses that don't require a trademark license from either Zope Corporation or the Zope Foundation?
Yes. As one example, eGenix recently approached us about trademark licensing for their eGenix mxODBC Zope Adapter. This is an example of nominative fair use. Their use of the word Zope is free of trademark issues. They neither required nor received a license to use the word Zope in their product, and we immediately informed them that they didn't need one.
Other nominative fair uses of the trademark that in no way confuse the market as to whether the word Zope refers to the "software" or to Zope Corporation.
Zope Intranet Solution would require a license from Zope Corporation (and likely not get one), but Acme Zope Intranet Solution would not require one, and would get one if they preferred to have one to avoid the ambiguity. The point is that "Acme Zope Intranet Solution" makes it obvious that this is based on Zope the software, from Acme the company.
Are there any uses that Zope Corporation would obviously deny a license for?
Zope4Accounting. Zope Managed Hosting, etc.. The first one is too close to the pattern of a number of our current commercial offerings, and would likely imply to the market that the product came from Zope Corporation. The second is the exact wording that we already use. However, if it were labeled "Acme Zope Managed Hosting", then it would be fine.
What is the nature of the license?
The trademark license that will be granted to the Zope Foundation will be a fully-paid, worldwide, perpetual, and irrevocable license to use and sublicense the use of the marks in accordance with the associated guidelines. The Zope Foundation will owe Zope Corporation no accounting for its use and sublicensure of the marks.
Zope Corporation doesn't want to see any derogatory content about it or the Zope software posted on the Internet - that's why they protect the trademark so aggressively.
The first part is right - we would surely prefer not to see derogatory content about Zope Corporation or Zope the software on the Internet. The notion that we can control this - independent of trademarks - is naive. Zope won't satisfy all people all of the time. People are bound to write unflattering things about us. We can not and will not use trademark protection to preclude that. This does not mean that we won't defend ourselves in cases of libel or slander which are not related to trademark protection. See the earlier section regarding our intent to amend our current trademark license agreement to preclude the use of editorial censure as a basis for the revocation of a trademark license.
Will the Foundation have any enforcement rights or obligations?
The Zope Foundation will have the right and obligation (to its Members, not to Zope Corporation) to enforce the sublicenses it grants. This obligation to protect sublicensed marks will ensure that the Zope Foundation Licensed Marks are being used in a manner consistent with the objectives and ByLaws of the Foundation. Any enforcement action taken by the Foundation (e.g., revocation) will be done in the sole discretion of the Foundation without accounting or notice to Zope Corporation.
Why do we need trademarks and enforcement, etc.? Can't we dispense with all of this?
A trademark registration provides the mechanism for protecting a brand. If we want Zope, the brand, to have meaning, it must be protected. There are simply no two ways about it. Zope Corporation wants the brand to have meaning, importance, "equity" and to share this value with other Zope stakeholders to the maximum practical extent.
Is it fair that the community contributes so much to the development of Zope and Zope Corporation is the exclusive owner of the trademark?
This question suggests that, over time and by virtue of contributions to software, documentation and evangelistic efforts, the Zope Community has developed "sweat equity" in the Zope trademarks. Few companies better understand or appreciate the value that can be created by a talented, hard-working world-wide developer community than Zope Corporation. Zope Corporation clearly and deeply understands the value that has been created. Trademarks are not a divisible asset. Unlike copyright, two parties cannot jointly own a trademark. Since the trademark (and associated brand integrity) has value and is important to all Zope stakeholders (users, developers, consultants, etc.) some (single) organization needs to own and manage it. Clearly Zope Corporation owned all of the source code to Zope in November 1998 when it released the project as Open Source under the ZPL. Since then, both Zope Corporation and the Zope Community have made material contributions to both Zope 2 and Zope 3. Even now, Zope Corporation is contributing 100% of their ZPL-licensed copyrighted code to the Foundation.
Zope Corporation is contributing a fully-paid, irrevocable license to the Zope Marks that permit the Zope Foundation to have the software be protected from a branding perspective, forever.
Zope Corporation does not intend to change its corporate name, nor change the names of its products, and therefore will retain all other uses of the marks in order to protect the corporate brand, separate from the software brand.

Trademark Management
Trademark Management provides form, discipline and structure to complete trademark lifecycle including trademark search request submission and review; trademark docketing, filing, prosecution through registration; transactions including licensing, policing and oppositions.

The web based multi-lingual system is pre-packaged with several configurable workflows and electronic forms for trademark search and clearance management. Using the web based portal, marketing and branding teams are able to submit new search requests for clearance. The trademark team can provide clearance opinions, attribution requirements and provide approvals for filing or use.

With inbuilt docketing capabilities, trademark management automates every prosecution task with country laws and custom workflows.

Trademark Management also provides comprehensive features for domains and copyright management including domain profiles, DNS server mapping, consolidator groups and renewals management.

Key Features:
Centralized Repository

Trademark case information is centrally organized into electronic case files. Trademark case file contains each paper correspondence and email between attorneys, requestors and other case participants to provide a single source of all relevant information.

Prosecution Workflow Management

Prosecution actions include specific templates and workflow for each prosecution action. The examples include notice of publication, certificate of registrations, office actions, response to office action, other PTO correspondence, notices of allowance, checklists, etc. These documents may be in Word, Excel, Vision, PDF, TIFF or other formats. Official correspondence is stored as unalterable images in the exact form they were filed in or received from the trademark office.

Docketing Management

Docketing management is fully integrated with case files so that docketing information is automatically associated with cases, and the user can instantly link from docket to the case file, or from case file to docket.

Trademark Portfolio Management

Create, manage and analyze your portfolios and cluster them by technology areas, product groups and other business factors.

Trademark Assertions, Enforcement and Policing

Capture relevant information about any dispute including engagement details, parties, products, impacted IP and resolutions.

Spend Management

Trademark management provides comprehensive budget, estimates and actuals management for each task performed by Law Firms. You can structure each estimate provided by law firms to go through a review and approval process. This provides a complete and most up to date budget situation.

Document Management

The system provides the capability to search and attach related documents in any format.

Configurability

Lecorpio trademark management is very configurable and so it works the way you do rather than making you conform to its working style. It offers both mid- and large-sized enterprise users alike the flexibility to handle diverse requirements by providing configurable customer preferences and task parameters.

Robust Analytics

The integration of Lecorpio business intelligence capabilities reveal the hidden factors driving and inhibiting trademarks planning and registrations. Allows report configuration, customization and real-time reporting.

Trademark Management

Trademark Management
Trademark audits – what you need to know..

One of the most important services that should be performed by trademark professionals, which is often overlooked, is a trademark audit. Trademarks are not static. Thus, it is imperative that a company’s trademark assets are reviewed regularly.

A trademark audit allows a company to review, manage and fully exploit the value
of existing and potential trademarks. A trademark audit can range from a yearly
review managed internally, to a comprehensive audit conducted by outside
counsel. Trademark audits are also often conducted as part of a comprehensive due
diligence programme by an acquiring company, the results of which can often
make or break a deal.

The benefits of a trademark audit include the identification of new brands and the
maximum exploitation of existing brands. Thus, a bare bones trademark audit includes a survey of what marks are currently used by a company (as well as whether proper trademark use and notice is being made), what applications and registrations exist, and a review of the chain of title. Through this analysis, a trademark audit will identify trademark assets that have not been protected. While companies are usually aware of their core brands, a review of, among other things, product lines, marketing materials and websites will often reveal trademarks that have not been identified, including in many cases, nontraditional marks. In addition, a company may have expanded use of its marks into product lines or geographic markets that were not initially contemplated at the time of filing, or, in some cases, the initial filing may simply not have been broad enough A cost-benefit analysis (taking into account the longevity of a product line/new geographic market) should follow to evaluate whether new applications should be filed to cover the expanded breadth of the goods/services/countries where a mark is used. This ensures that a company is obtaining proper protection to exploit and enforce its marks in connection with all of the goods/services and geographic regions of represents a cost-effective filing strategy to fill the geographic gaps in protection.
In addition, one of the best reasons to perform a trademark audit is that it may
identify opportunities to increase revenue through exploitation of existing or newly
identified brands. A primary path to increasing revenues (other than direct sales
under a mark) comes from licensingarrangements. As with acquiring companies,
of key concern to a licensee will be the value of the brand, including whether or not it has been protected. Regular trademark audits demonstrate a commitment to the value of those assets and will usually result in a positive review by a potential licensee.
A trademark audit can also identify critical ownership issues. If an application is
filed in the name of a party which did not own the rights to the mark at the time the
application was filed, any resulting registration may be void, in which case a
new filing should be considered. Further, a mark may have been assigned to another
entity, or a name change or merger may have occurred since filing. Ensuring that the
chain of title is clean is imperative. Filing suit or an opposition without proper
ownership may create a standing issue, resulting in zero value in a trademark
registration. Similarly, a review of liens and security interests tied to trademark assets
should be reviewed to determine if such encumbrances should be removed.
Further, as the audit is conducted, attention should be paid to whether proper
trademark use and trademark notice is being practised by the company. Proper
trademark use and notice can deter third parties from adopting a mark similar to
your client’s or company’s mark and, in some cases, can ensure that a mark does not
become generic.
A company must also have a programme in place to monitor effectively
potential infringements and enforce its trademarks. Failure to do so can weaken or
even completely destroy the value of a brand. Thus, an audit of policing activities
and monitoring programmes should be conducted. For example, watching services
in place for marks in which the company. has lost interest should be cancelled,

whereas they should be added for Marks that are important to the company and not
currently being watched. The scope of the watching services (in terms of classes and
types of service) should also be carefully reviewed to ensure that all third-party marks of interest will be revealed. A review of any settlement agreements with potential infringers should also be reviewed to assess the contractual obligations of third parties and to ensure that they are complying with the terms of such agreements (including limitations as to registration/use). Allowance of noncompliance
with settlement terms can result in a waiver of rights. Further, an area that is often overlooked is appropriate customs recordation for registered marks.
This can be an important tool in stopping the import (and in some countries the
export) of counterfeit or infringing goods. Domain name acquisition can also play
a vital role in the protection of a company’s trademarks. Thus, an audit of a company’s domain name portfolio should be conducted in conjunction with the
trademark audit. Domain name acquisition is an inexpensive means to keep others
from adopting marks or trade names identical to that of your client or company.
When trademark audits are not regularly performed, certain events (such as
a desire to enforce, sell or continue to use certain marks) typically highlight
deficiencies in a trademark programme.
However, in many cases, it is too late to cure the deficiencies. Consequently, valuable trademark rights can be lost/weakened or a company may not be able to exploit its trademarks fully in connection with certain goods/services/countries of interest. Regular trademark audits will help optimize the business benefits that a company derives from its valuable trademark rights and ensure that the integrity of a company’s trademarks is maintained.

Susan M Natland is a partner in Knobbe Martens Olsen & Bear LLP's Orange County
office. She handles the development and management of worldwide trademark
portfolios, and specializes in all aspects of domestic and international trademark
selection, protection, licensing and enforcement.
snatland@kmob.com