--- Begin Forwarded Message ---
Date: Mon, 22 May 2000 13:54:47 -0500
From: Charles Hickman <[log in to unmask]>
Subject: re: "metadata" as a trademark
Sender: Charles Hickman <[log in to unmask]>
Jon,
One of our contacts with the U.S. Federal Geographic Data Committee (FGDC) provided the following 1998 information about the "metadata" trademark issue from the Office of the Solicitor at the U.S. Department of the Interior (DOI).
Hope this helps,
Charley
>>> Kimberly Burns-Braidlow 05/22/00 12:24PM >>>
... The FGDC looked into the use of the word METADATA a couple of years ago. I have a hardcopy letter dated April 20, 1998 from DOI's Office of the Solicitor. This is what the letter says:
Re: Alleged Infringement of METADATA, Registration No. 1,409,260
To: Charles H. Thomas, Esq.
Cislo & Thomas LLP
4201 Long Beach Boulevard
Suite 405
Long Beach, CA 90807-2022
Dear Mr. Thomas:
Since talking to you on the telephone we had occasion to further review the above subject.
We are not selling any goods, under the word "METADATA;" accordingly there is no trademark infringement of the above registration. Further, the word 'metadata' is used widely in computer programs without reference to it as a trademark. In our opinion the word 'metadata' has entered the public domain and is no longer a trademark. Accordingly, we feel free to use the word as we would any other word in the English language.
Signed, E. Philip Koltos, Patent Attorney, Branch of Procurement and Patents, Division of General Law
- Kim
--- Begin Forwarded Message ---
Date: Thu, 18 May 2000 09:28:34 +1000
From: [log in to unmask]
Subject: FW: Metadata a trademark ?
A colleague has received a letter from a firm of attorneys in the US, as follows below. I recollect that this issue was raised about a year ago either on this list or another to which I subscribe. In any case I am seeking information on the validity of the claim, whether it has been tested in USA, and what organisations are doing about it. Appreciate any comments or pointers. Many thanks in advance.
Jon Stirzaker
Australian Geological Survey Organisation
E-mail: [log in to unmask]
-----------------------------------------------------
Please be advised that our firm represents The Metadata Company LLC which is the holder of all rights in the trademark METADATA as applied to computer programs and computer program manuals. Our client's mark is registered as U.S. Trademark Registration Nos. 1,409,260 and 2,185,504, copies of which are enclosed herewith. Our client's Registration No. 1,409,360 has become incontestable as provided by 15 U.S.C. § 1065.
It has come to our client's attention that your organization has published documents on the Internet in which our client's registered trademark, METADATA, has been misused, and has invited interested entities to download a copy of a document with this misused and infringing form of our client's mark. We refer specifically to your use at your web [site] of our client's mark in your description of an "ANZLIC Metadata Entry Tool (MET)".
Our client has no objection to the use of the two separate words, "Meta Data" or even the hyphenated term "Meta-data" to describe data about data or as a title for any software you wish to provide. However, the single unhyphenated term, "METADATA" is a federally registered trademark in the United States which belongs exclusively to our client. We would appreciate it if you would provide us with your written commitment that you will ensure that your future web site publications and any other publications do not misuse our client's registered trademark, METADATA.
-------------------------------------------------------
I have found that the company has a web site at http://www.metadata.com/ and the claim to the term "metadata" is expressed at http://www.metadata.com/word.htm
I am contacting the FGDC to see whether similar demands have been made in the USA and what response there has been to them. If anyone has any further knowledge of this issue, I would appreciate any information you may have.
Regards,
Graham Baker
===========================================
Graham Baker
Executive Officer
ANZLIC
PO Box 2
BELCONNEN ACT 2616
Australia
Ph: +61-2-6201 4299
Mob: 041-9228226
Fax: +61-2-6201 4366
e-mail: [log in to unmask]
home page: http://www.anzlic.org.au/
===========================================
ANZLIC - the Spatial Information Council
===========================================
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--- Begin Forwarded Message ---
Date: Thu, 18 May 2000 17:11:03 -0500
From: [log in to unmask]
Subject: METADATA as a Trademark
I am not a part of your list, but thought you might like some background/history/resource information about trademarks (at least in the US). I am the Patent and Trademark Librarian at a Patent and Trademark Depository Library, a program sponsored by the United States Patent and Trademark Office (USPTO).
First some resources:
The letter to the colleague (or colleague's client) said:
"Our client's mark is registered as U.S. Trademark Registration Nos. 1,409,260 and 2,185,504"
This can be verified at the USPTO's TESS database or Trademarkscan US Federal (available from Dialog and possible other online services). I did this and sure enough, those two marks are the only ones registered for Metadata. Interestingly an Australian company applied for Metadata for computer software, but the application was abandoned at the applicant's request. Hmmm... (the database doesn't have the detail of the correspondence).
Trademarkscan also has information about lawsuits which have been filed or if anyone has contested the mark. More information on specific suits can be found in the USPQ (United States Patents Quarterly).
The USPTO has a very good website (www.uspto.gov). Some specific pages of interest might be:
Basic Facts About Trademarks
(http://www.uspto.gov/web/offices/tac/doc/basic/basic_facts.html)
Trademarks FAQ (http://www.uspto.gov/web/offices/tac/tmfaq.htm)
TESS (http://tess.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk) database
Some history that may relate to this:
Many historic trademark have become "generic" due to misuse. Cellophane, escalator, aspirin, and corn flakes are just a few examples. Some recent companies who are still fighting this are Kleenex, Band-Aid, Xerox, and Roller Blades.
The key is that a trademark must always be used as an adjective (Kleenex tissues, Band-Aid bandages) and never as a verb ("Xerox this for me") or noun ("See my new Roller Blades").
I don't know the exact legalities about how long it takes to lose a trademark, but it seems that this company at least has given you a very easy solution. Just separate the word! To be honest, I never knew METADATA was a trademark either.
If you have any other questions, you may want to find an intellectual property attorney. (I've pretty much told you all I know, and my guess is that the USPTO may tell you to speak to an attorney as well.)
****************************************
Donna Hopkins
Patents/Engineering Librarian
141 Middleton Library
Louisiana State University
Baton Rouge, LA 70803
(225)388-8264
[log in to unmask]
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-- Begin Forwarded Message ---
Date: Fri, 19 May 2000 11:05:50 +0100
From: Darius Bartlett <[log in to unmask]>
Subject: Re: FW: Metadata a trademark ? <fwd>
Jon, I forwarded your message to the Irish GIS interest group mailing list (IRLGIS-L) and got the following reply from Bernard Farrell at the Irish Ordnance Survey:
>Date: Fri, 19 May 2000 10:20:28 +0100
>From: Bernard Farrell <[log in to unmask]>
>Subject: RE: Metadata a trademark ? <fwd>
>Organization: OSI
>
> It would appear that it is indeed a genuine registration. See the entry below for some background to the origins of "Metadata".
> http://www.dictionary.com/cgi-bin/dict.pl?term=Metadata
> It would appear that all our metadata experts have now become meta data experts!
>Regards,
>Bernard Farrell
I had a look at the website he refers to, and this seems to bear out and explain the general conclusion that "Metadata" truly IS an Incontestable U.S. trade mark. Interesting! And I think many people will both thank and curse you, in equal measure (the latter because of human tendencies to blame the messanger for the message), for bringing it to our attention!
Best regards
Darius Bartlett
***********************************************************************
Darius Bartlett Darius Bartlett
Department of Geography Roinn na Tireolaiochta
University College Cork Colaste na hOllscoile Corcaigh
Cork, Ireland Corcaigh, Eire
Phone: (+353) 21 902835 Fax: (+353) 21 271980
Phone(GSM): (+353) 86 8238043 Fax (GSM): (+353) 86 8018143
E-mail: [log in to unmask]
Web page URL: http://www.ucc.ie/ucc/depts/geography/stafhome/djb/djb.htm
------------------------------------------------------------------------
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--- Begin Forwarded Message ---
Date: Sun, 21 May 2000 02:56:56 CDT
From: Joseph McCollum <[log in to unmask]>
Subject: Re: METADATA as a Trademark <fwd>
Are you aware that USGS (the United States Geological Survey) and the Federal Geographic Data Committee routinely use this word -- and ask others preparing maps under their standards to use it as well? (As do people in other sciences besides geography) It says 1986 as trademark date -- unfortunately I cannot claim that this already was a generic word before then (in the scientific community at least) -- but I am inclined to believe that it is. Is this Australian outfit prepared to sue the United States government?
Joseph McCollum
USDA Forest Service
Asheville, NC
I would ask interested parties to also check out the League for Programming Freedom.
http://lpf.ai.mit.edu
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>>>
<><><><><><><><><><><><><><><><><>
Charles Hickman -- Geographer
U.S. Geological Survey -- Rolla, Missouri, USA
[log in to unmask] (573) 308-3502
http://mapping.usgs.gov/
http://mcmcweb.er.usgs.gov/
<><><><><><><><><><><><><><><><><>
Lat: 37.952894 degrees north
Lon: 91.745014 degrees west
Elev: 1,044 feet
http://www.topozone.com/map.asp?lat=37.9529&lon=-91.745&size=s&s=25
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