WebHome » Trademarks » OSI Trademark Consent Agreement

OSI Trademark Consent Agreement

Last modified by Patrick Masson on 2013.12.27 at 08:45:52 PST

CONSENT AGREEMENT

This Agreement is entered into this 26th day of September, 2012 (the “Agreement”) by and between the Open Source Initiative (“OSI”), a California nonprofit public benefit corporation, having its principal place of business at 855 El Camino Real, Ste 13A, #270, Palo Alto, CA 94301 and the [NAME OF ORGANIZATION], a [STATE OF INCORPORATION], having a mailing address at [ADDRESS].

WHEREAS, [NAME OF ORGANIZATION] and various third parties have adopted and are using the mark attached hereto as Exhibit A (“[NAME OF ORGANIZATION] MARK”) in association with goods and services that comply with the [PURPOSE OF MARK/ORGANIZATION] attached hereto as Exhibit B, where such use of the [NAME OF ORGANIZATION] MARK in association with such goods and services does not create the impression that it denotes open source software (“[NAME OF ORGANIZATION] GOODS/SERVICES”);

WHEREAS, OSI has adopted and is using the mark described in the Certificate of Registration attached hereto as Exhibit C (“OSI MARK”) in association with open source software and related goods and services (“OSI GOODS/SERVICES”), for which it owns U.S. Trademark Registration No. 3560035;

WHEREAS, OSI and [NAME OF ORGANIZATION] desire to avoid and resolve any potential conflicts between themselves regarding their respective uses of OSI MARK and [NAME OF ORGANIZATION] MARK for their respective goods and services, and any potential confusion, mistake or deception of the general public or members of the relevant merchandising trades with respect to ownership, use and registration rights; and

WHEREAS, the parties wish to end this matter without any formal proceedings.

NOW, THEREFORE, for and in consideration of the mutual representations, promises, terms and conditions contained herein, OSI and [NAME OF ORGANIZATION] agree as follows:

  1. Consent to Co­-Existence 

    (a).  Acknowledgment.  OSI acknowledges that [NAME OF ORGANIZATION]’s use and the use of any third parties of [NAME OF ORGANIZATION] MARK as a trademark for [NAME OF ORGANIZATION] GOODS/SERVICES is not confusingly similar to OSI’s use of OSI MARK as a trademark for OSI GOODS/SERVICES based upon the differences in the respective marks, the prospective customers and the channels of trade. Similarly, [NAME OF ORGANIZATION] acknowledges that OSI’s use of OSI MARK as a trademark for OSI’S GOODS/SERVICES is not confusingly similar to [NAME OF ORGANIZATION]’s use and the use of any third parties of [NAME OF ORGANIZATION] MARK as a trademark for [NAME OF ORGANIZATION] GOODS/SERVICES based on the differences in the respective marks, the prospective customers and the channels of trade.

    (b).   No Registration.   OSI and [NAME OF ORGANIZATION] each agrees not to register the [NAME OF ORGANIZATION] MARK.  [NAME OF ORGANIZATION] hereby consents to OSI’s registration and use of OSI MARK as a trademark for OSI GOODS/SERVICES.
  2. Further Action.

    (a). Avoid Confusion.  OSI and [NAME OF ORGANIZATION] each agrees to take any reasonably necessary further action to avoid potential confusion between the marks.  [NAME OF ORGANIZATION] shall publish and advocate guidelines for use of the [NAME OF ORGANIZATION] MARK designed to promote its use in compliance with the [PURPOSE OF MARK/ORGANIZATION] attached hereto as Exhibit B.  [NAME OF ORGANIZATION] shall not use or recommend variations on the [NAME OF ORGANIZATION] MARK that increase its similarity to the OSI MARK, including any variation that uses the color of green found in the OSI MARK.  In the event that either party becomes aware of any actual confusion or mistake occurring as a result of their uses of their respective marks, the parties agree to communicate all details of each such instance to each other, and to cooperate reasonably to take steps to abate the cause of confusion or mistake, and to prevent any such confusion or mistake from arising again.

    (b). Non­-Opposition by [NAME OF ORGANIZATION].  [NAME OF ORGANIZATION] will not oppose or otherwise challenge the use,  application or registration of the mark OSI MARK by OSI in the U.S. or any other jurisdiction.

    (c). Non­-Opposition by OSI.  OSI will not oppose or otherwise challenge the use of the mark [NAME OF ORGANIZATION] MARK by [NAME OF ORGANIZATION] or any third parties for the [NAME OF ORGANIZATION] GOODS/SERVICES in the U.S. or any other jurisdiction.

  3. Scope of the Agreement.  The scope of this Agreement shall be worldwide.

  4. Entire Agreement.  This Agreement shall be the entire agreement between the parties with respect to the rights in the marks OSI’S OSI MARK and [NAME OF ORGANIZATION] MARK.  This Agreement supersedes, and the terms of this Agreement govern any prior agreements, proposals or other communications, whether oral or written.  This Agreement may only be changed by mutual agreement of authorized representatives of the parties in writing.

  5. Assignment.  This Agreement and the rights and obligations of any party hereunder may not be assigned by one party without the prior written consent of the other party, except for a merger or a sale of all or substantially all of the assets of the party or a sale of the entire product lines associated with the respective marks.  In the event this Agreement is assigned by either party upon a merger, the sale or transfer of all or substantially all of its assets or the sale of the entire product lines associated with the respective marks, this Agreement shall be binding upon and inure to the benefit of the parties' successors and permitted assigns.

  6. Controlling Law.  This Agreement shall be construed under the laws of the State of New York as applied to New York residents.

  7. Notices.  All notices shall be sent to the parties at the addresses set forth above. Notices shall be deemed received upon personal delivery or within five (5) days of deposit in the mail.  Notices may be sent by email, courier, facsimile with confirmation or registered mail.

 

IN WITNESS WHEREOF, the parties have executed this Agreement as of the date set forth above.

  
[NAME OF ORGANIZATION]Open Source Initiative
  
  
By:
 
By:
 
  
Print: [NAME OF SIGNATORY]Print: [OSI PRESIDENT]
  
Title: [TITLE OF SIGNATORY] Title: President

Exhibit C

[EXHIBIT C SHALL INCLUDE THE "OSI STANDARD LOGO" (OSI MARK) AS DEPICTED ON THE "LOGO USAGE GUIDELINES" PAGE ON WWW.OPENSOURCE.ORG (http://opensource.org/logo-usage-guidelines#The_Standard_Logo).]

Tags:
Created by Patrick Masson on 2013.12.27 at 08:33:32 PST

This wiki is licensed under a Creative Commons 2.0 license
XWiki Enterprise 5.2.2 - Documentation