Legal Issues Around SOFTWARE FREEDOM Trademarks

The Software Freedom Law Center (SFLC) recently filed with the USPTO to cancel the registered trademark SOFTWARE FREEDOM CONSERVANCY, owned by the non-profit of the same name. Both SFLC and Conservancy have a long history together with several people working for both.

Since this is a TTAB legal proceeding – not in federal court – here’s a brief review of the legal aspects of this case, from an experienced layperson.

Both SFLC and Conservancy have been granted registrations of their full names by the USPTO; thus they can use the ® symbol after their names, and registration gives them a few extra rights in the US as to how their names may be used. The obvious root issue is that both organizations share two words in their name:


Merely having somewhat similar names isn’t a problem with trademarks, unless consumers are confused about which organization is providing specific services or products.  This similarity is the core argument in the SFLC’s petition to cancel the Conservancy’s registration. But there are a lot of questions about the petition, including that the SFLC aided Conservancy in incorporating and registering their name! It’s very strange to petition to cancel something you yourself helped to create, which is used as a defense by Conservancy.

What’s Happened So Far

The SFLC filed a Petition to Cancel with the USPTO, essentially asking to have the SOFTWARE FREEDOM CONSERVANCY registration canceled – making it as if it hadn’t been registered.  This doesn’t necessarily mean that Conservancy couldn’t use their name as a trademark, but it’s likely that if the SFLC actually won the cancellation they would try to force an effective name change of Conservancy.

Note that the current legal action has just started – the paperwork takes a while to bubble through the Trademark Trial And Appeal Board (TTAB) process. This action also only affects registrations in the US – most countries have their own trademark registration bodies and laws, which don’t necessarily change what happens outside the US. Conservancy has a currently granted registration for their name in the EU, which helps protect their rights in many EU member countries.

Evaluating the Petition To Cancel by SFLC

To make it easier to follow along, I’ve annotated a PDF of the SFLC’s Petition to Cancel with the paragraph-by-paragraph Answer to the petition.  Reading along both sides of the case – at least as it is so far – is instructive.

The SFLC starts by stating it “believes that it has been and will continue to be damaged by U.S. Trademark Registration No. 4,212,971 for the mark SOFTWARE FREEDOM CONSERVANCY, and hereby petitions to cancel the same…“, and then details some background information and specific claims.

Most of the petitioner’s claims are merely restating various facts or allegations about the trademark registrations in question, and they also go into detail about who worked where at what time. In particular, Karen M. Sandler and Bradley M. Kuhn both served as officers at the SFLC at the time that Conservancy was spun off as a separate corporation, as well as being involved in the registration of the Conservancy’s mark. It’s actually a little odd seeing some of the claims made there about details of who was where when – I don’t think many of those claims really support the petition.

Para 18 gets to the real issue: the claim “Registrant’s SOFTWARE FREEDOM CONSERVANCY Mark is confusingly similar to Petitioner’s SOFTWARE FREEDOM LAW CENTER Mark.” However, they spend time talking about the similar sounds but don’t get into as many details about the actual services provided.  Trademarks associate the mark with a specific producer of a service/product in the minds of a consumer – so it’s critical to show that the services offered under both names are actually similar – and are similar in terms of claimed goods.

Para 24 is pretty odd considering the history of how the mark was originally applied for:

24. Registrant’s (Conservancy) registration should be canceled because it consists of or comprises a mark which so resembles Petitioner’s (SFLC) previously used and registered SOFTWARE FREEDOM LAW CENTER Mark as to be likely, when used in connection with Registrant’s goods and services, to cause confusion, mistake, or deception within the meaning of 15 U.S.C § 1052(d), and to cause damage to Petitioner thereby.

This might make tortuous legal sense within the TTAB, but not any common sense given that the SFLC helped to register that mark 6 years ago!

Claims 25-32 don’t even seem to be particularly applicable – sure, they’re facts of the case, but don’t show why the registration should be canceled.

Evaluating the Defense Response by Conservancy

Following the blue text in my annotated PDF, we can see that the response is roughly: “No, you’ve got nothing valid here to bring cancellation, and here’s why”.

Many of the factual claims are admitted, but some of the basic statements are “Denied”, presumably meaning Conservancy argues to the TTAB that those petition claims aren’t correct or aren’t relevant.  In particular, the responses are in general much more direct and specific than the petition’s claims (including one factual correction), which seems to support my first thought that some of the claims are just (ahem) puffery.

The interesting part is, of course, the AFFIRMATIVE DEFENSES, where Conservancy argues that the petition is bogus and should be thrown out of the TTAB.  They include:

1. Petitioner’s claim fails to state a claim upon which relief can be granted.
1. Petitioner’s claim is barred by the doctrine of unclean hands.
2. Petitioner’s claim is barred by the doctrine of laches.
3. Petitioner’s claim is barred by the doctrine of estoppel.
4. Petitioner’s claim is barred by the doctrine of acquiescence.

While I’m not a lawyer (please note: none of this is legal advice!), the first 1. bullet point there seems pretty specific: your petition is bogus.  (And it seems bogus for practical and community reasons as well).

Separately, the defenses lay out the legal reasons why the cancellation is bogus: the SFLC helped to apply for the Conservancy’s registration in the first place! Similarly, SFLC and Conservancy promoted themselves separately without conflicts for years in the past – so it reduces any claim to complain now.

Overall, my money is with Conservancy getting this thrown out of the TTAB.  The main question is: how much effort will it take, and will the SFLC actually come talk to the Conservancy outside of the TTAB, or merely plug away in trademark court?

Time will tell; I just hope this doesn’t drag on for too long since there are more important things we can all be doing to help free and open source software grow.

Classes Of Goods (UPDATED)

When applying to register a trademark, you list the Nice classes that your products or services are provided in – automobiles, software, restaurant services, etc.  Similar marks in different classes aren’t necessarily a problem, but they aren’t necessarily OK to use by different producers either.  The claimed goods by each registrant here are very different:

  • SOFTWARE FREEDOM LAW CENTER®, registered in class 45 for “Legal services”.
  • SOFTWARE FREEDOM CONSERVANCY®, registered in class 35 for “Charitable services, namely, promoting public awareness of free, libre and open source software projects, and developing and defending the same.”, and also in class 9 for “Downloadable computer software for media file management, object-oriented software engineering, messaging, software development tools, operating system utilities, operating system emulation, inventory management, graphics modeling, Braille displays, implementation of dynamic languages, print services, browser automation, operating systems programs in the field of education, and computer operating system tools for use in embedded systems, provided freely and openly licensed use for the public good.”

Registration classes aren’t directly used in the likelihood of confusion tests, but this certainly feels like SFLC is changing their business (see their recent post about project services), and is now claiming that their rights expand beyond what their registration claims.

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Briefly, Shane is: a father and husband, a friend, a geek, a Member and director of the ASF, a baker, an ex-Loti, a BMW driver, a punny guy, a gamer, and lifelong resident within the 495 belt. Oh, and we have cats.

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