[foundation-board] Open Knowledge Foundation trademark portfolio - 5th Jan deadline

Fri Dec 20 10:21:17 UTC 2013

Hi Laura -

I think that in the long run it will be useful to have US protection,
but I don't see urgency to do so prior to 5 Jan.  However, the topic has
also raised another question in my mind. I know that you are doing some
work around branding.  What is the scope and timeline of that work? If
the logo and or name may change shortly, does it even make sense to
continue with all the current CTM applications or should some/all be
paused until the branding work is complete?

best,
Jane

On 19/12/13 15:40, Laura James wrote:
> All, 
>
> *Question for the board:* Should we add US [and optionally other
> territory] registration to our existing EU trademark filing, for a
> total of 6 marks at a cost of around £2k per mark?
>
> *My recommendation: *Not at this time, to control costs; having CTM is
> adequate for now for our purposes
>
> *Reason for email: *we may wish to file by 5th January to get advance
> date on the marks; after 5th January we can still file but won't gain
> additional 6 month date advantage 
>
> */If any board members feel we should move to file in the US or any
> other countries before 5th January, please respond asap and certainly
> by 1st January.  If I don't hear anything I will NOT file for
> additional countries before 5th Jan./*
>
> Full background below. 
>
> best regards,
>
> Laura
>
>
>
> *Background*:
>
> With board authorisation for total costs around £10k total we began
> the process of registering the below trademarks in EU27 last summer.  
> These have now just been published for opposition purposes.  We have
> until January 5th 2015 to file additional marks in other countries if
> we wish to claim the original filing date in those new countries.  We
> can of course file marks later on but the dates would be from the new
> application, not from this original round of applications. 
>
> We chose to file trademarks to protect our brand against misuse and to
> give us some grounds on which we could deal with, for instance, a
> local group "going rogue" and doing something bad, or a group using
> our name but not following our open principles.  Without a much more
> formal legal structure for community engagement, we have few options
> to protect our brand, and the trademark gives us a straightforward
> route to tackle problems if they arise, rather than adding friction to
> the process of engaging with us. 
>
> As advised we filed for EU / CTM marks in the first instance and now
> we have heard these are published, we are able to extend to new
> territories. The US seems the most likely where we may wish to
> protect, as it is large and active in open data; I can get quotes for
> other territories as well if desired (eg SE Asia, Africa, S America,
> all of which are growing areas for our work)
>
> Trademarks applied for, based on advice from Charles Russell LLP:
>
> OKF
> OKFN
> Open Knowledge Foundation  + Logo
> OpenSpending logo-style mark
> School of Data logo-style mark
> CKAN
>
> Filing in the US is estimated at £2k per mark (ie total £12k) and
> other countries will add to this. I can secure quotes from Charles
> Russell if desired. 
>
>
> -- 
> *
>
> *Dr Laura James*
>
> *CEO  | skype: laura.james  |  @LaurieJ <https://twitter.com/LaurieJ>*
>
> *TheOpen Knowledge Foundation <http://okfn.org/>*
>
> *Empowering through Open Knowledge*
>
> *http://okfn.org/ |  @okfn <http://twitter.com/OKFN> |  OKF on
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> ***
>
>
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