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SCO Registers Trademark (Intent to Use) for "UNIX SYSTEM LABORATORIES"
Wednesday, July 28 2004 @ 01:03 AM EDT

You have to admit SCO is never boring. Now they have applied to register a trademark on the word mark "UNIX SYSTEM LABORATORIES". Once again, it was Rand McNatt who noticed.

Naturally, that raises some questions, like who are these people, anyway?

Here I thought they were pretending to be oldSCO, what with celebrating a quarter century of "UNIX Solutions" at SCOForum beginning August 1. And shazaam. Here, up they pop with the trademark on UNIX SYSTEM LABORATORIES. So, what do you think? You think the name SCO isn't helping them get business and they'd like a new identity? Or worse? They're maybe addicted to litigation and can't sleep unless they are suing someone or getting sued? I'm thinking the Open Group might be interested in this news.

UPDATE: 9:00 PM

Groklaw member thpr has found a trademark opposition case that is ongoing, involving the X/Open Group, and the other side, an individual, Wayne R. Gray, who filed for the mark INUX, is using SCO FUD to argue that SCO owns the UNIX trademark, if anyone can. FUD tends not to prevail in courtrooms, but note particularly that the exhibits on document 29, which he links to below, include the trademark assignments. INUXproclaims itself a Linux company. Maybe it's like LinuxInsider is a Linux media outlet? From the INUX website:

"This uniquely powerful computer software system will embrace and extend not just the traditional single-user desktop environment, but entire enterprise security, compatibility, and integration solutions, including Microsoft® Windows®."

INUX is a privately held Florida company.

You can see the assignments here as well:

http://tarr.uspto.gov/servlet/tarr?regser=registration&entry=1390593
http://assignments.uspto.gov/assignments/q?db=tm&rno=1390593

http://tarr.uspto.gov/servlet/tarr?regser=registration&entry=1392203
http://assignments.uspto.gov/assignments/q?db=tm&rno=1392203

And convince me please, if you can, that this is all just coincidental. Here's what thpr found:

"I went searching around, and found a pending case in front of the United States Patent and Trademark Office Trademark Trial and Appeal Board:

http://ttabvue.uspto.gov/ttabvue/v?pno=91122524&pty=OPP

"Opposition by X/Open Group to the proposed mark of 'INUX' is resulting in the claimant saying that UNIX can no longer be trademarked. This doesn't seem like a big deal, except the case took a wild turn of events in December 2003:

http://ttabvue.uspto.gov/ttabvue/v?pno=91122524&pty=OPP&eno=29

"Notice the claim at the bottom of page 2 of this PDF (that SCO is claiming ownership of the UNIX trademark) and that it references the IBM/SCO documents [specifically IBM/SCO 25] (starting on page 38 of the PDF) The FUD is spreading. This individual is now using SCO's arguments against X/Open Group. . . .

"Here's the schedule for this trademark hearing: (from the end of the latest Board decision 7/22/04):

  • THE PERIOD FOR DISCOVERY TO CLOSE: 8/31/04 (Discovery is open directed solely to the matters arising from applicant's amended pleadings, as discussed more fully in this order and in the Board's April 12, 2004 decision.
  • Testimony period for plaintiff in the opposition to close: (opening thirty days 11/29/04 prior thereto)
  • Testimony period for defendant in the opposition and as plaintiff in the counterclaim to close: 1/28/05 (opening thirty days prior thereto)
  • Testimony period for defendant in the counterclaim and its rebuttal testimony as plaintiff in the opposition to close: 3/29/05 (opening thirty days prior thereto)
  • Rebuttal testimony period for plaintiff in the counterclaim to close: 5/13/05 (opening fifteen days prior thereto)
  • Briefs shall be due as follows: [See Trademark rule 2.128(a)(2)].
  • Brief for plaintiff in the opposition shall be due: 7/12/05
  • Brief for defendant in the opposition and as plaintiff in the counterclaim shall be due: 8/11/05
  • Brief for defendant in the counterclaim and its reply brief (if any) as plaintiff in the opposition shall be due: 9/10/05
  • Reply brief (if any) for plaintiff in the counterclaim shall be due: 9/25/05

[Resuming original article:]

Here's the trademark:

Word Mark
UNIX SYSTEM LABORATORIES

Goods and Services
IC 009. US 021 023 026 036 038. G & S: Computer software; namely, computer operating system software, computer language compilers, and translators, computer networking software, transaction processing software; graphical user interface software; computer graphics software; computer applications software; data management software; software development tools and environments; computers and computer hardware; providing web services

Standard Characters Claimed

Mark Drawing Code - (4) STANDARD CHARACTER MARK
Serial Number - 78438912
Filing Date - June 21, 2004
Current Filing Basis - 1B
Original Filing Basis - 1B
Owner - (APPLICANT) The SCO Group, Inc. CORPORATION DELAWARE Suite 100 355 South 520 West Lindon UTAH 84042
Attorney of Record - Wesley L. Austin
Type of Mark - TRADEMARK
Register - PRINCIPAL
Live/Dead Indicator - LIVE

You'll note it's a 1B. When your basis for filing is 1B it means you haven't used it in commerce yet -- that would be 1A, Use in Commerce -- but you intend to:

Intent to Use

Check this box if actual use of the mark in commerce that the U.S. Congress can regulate (i.e., interstate commerce, territorial commerce, or commerce between the United States and a foreign country) has not yet occurred, but instead there is simply a bona fide (good faith) intention to use the mark in commerce at a later time after filing of this application. The intention to use may be by the applicant, the applicant's related company, or the licensee of the applicant. You may file under more than one basis, but you may not file an application based on both use in commerce under §1(a) and a bona fide intention to use a mark in commerce under §1(b) for the identical goods and or services (e.g., you cannot list "shirts" under Section 1(b) and Section 1(a), but you could list "shirts" under Section 1(b) and "pants" under Section 1(a)). NOTE: If filing under this basis, you will be required to submit a demonstration of use (i.e., submission of a form with an additional fee and a specimen (sample) of said use) later in the prosecution process of the application.

Use in Commerce

Choose this basis if actually already using the mark in commerce that the U.S. Congress may regulate (i.e., interstate commerce, territorial commerce, or commerce between the United States and a foreign country) in connection with the goods and/or services identified in the application. You must be able to provide the date of first use anywhere and the date of use in commerce that the U.S. Congress may regulate, and a specimen (sample) of said use. Use may be by the applicant, the applicant's related company, or a licensee of the applicant. You may file under more than one basis, but you may not file an application based on both use in commerce under §1(a) and a bona fide intention to use a mark in commerce under §1(b) for the identical goods and or services (e.g., you cannot list "shirts" under Section 1(b) and Section 1(a), but you could list "shirts" under Section 1(b) and "pants" under Section 1(a)).

The UNIX Systems Laboratories mark, the one USL owned, was abandoned in 1993:

Word Mark UNIX SYSTEM LABORATORIES

Goods and Services
(ABANDONED) IC 009. US 026 038. G & S: computer software; namely, computer operating system software, computer language compilers, and translators, computer networking software, transaction processing software; graphical user interface software; computer graphics software; computer applications software; data management software; software development tools and environments; computers and computer hardware. FIRST USE: 19900601. FIRST USE IN COMMERCE: 19900601

Mark Drawing Code - (1) TYPED DRAWING
Serial Number - 74354526
Filing Date - February 1, 1993
Current Filing Basis - 1A
Original Filing Basis - 1A
Owner - (APPLICANT) UNIX System Laboratories, Inc. CORPORATION DELAWARE 190 River Road Summit NEW JERSEY 07901
Attorney of Record - Frank L. Politano
Prior Registrations - 1390593;1392203
Type of Mark - TRADEMARK
Register - PRINCIPAL
Live/Dead Indicator - DEAD
Abandonment Date - August 18, 1993

Of course, that was the year USL was purchased by Novell, in June of 1993.

UPDATE: I missed something. This next one was registered in 1993 and cancelled in 2000. Here it is:

Word Mark - UNIX SYSTEM LABORATORIES

Goods and Services (CANCELLED) IC 009. US 026 038. G & S: computer software; namely, computer operating system software, computer language compilers, and translators, computer networking software, transaction processing software; graphical user interface software; computer graphics software; data management software; software development tools; namely, computer software used to develop computer programs; computers and computer hardware. FIRST USE: 19900601. FIRST USE IN COMMERCE: 19900601

Mark Drawing Code (1) -TYPED DRAWING
Serial Number - 74068206
Filing Date - June 1, 1990
Current Filing Basis - 1A
Original Filing Basis - 1B
Published for Opposition- October 29, 1991
Registration Number - 1780785
Registration Date - July 6, 1993
Owner - (REGISTRANT) UNIX SYSTEM LABORATORIES, INC. CORPORATION DELAWARE 190 River Road Summit NEW JERSEY 07901
Assignment Recorded - ASSIGNMENT RECORDED
Attorney of Record - Frank L. Politano
Prior Registrations - 1390593;1392203
Disclaimer - NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "SYSTEM LABORATORIES" APART FROM THE MARK AS SHOWN
Type of Mark - TRADEMARK
Register - PRINCIPAL
Live/Dead Indicator - DEAD
Cancellation Date - July 3, 2000

You'll notice that it references two other registrations, and the first, 1390593, for the mark UNIX, looks like this:

Typed Drawing Word Mark - UNIX Goods and Services - IC 009. US 026. G & S: COMPUTERS. FIRST USE: 19841214. FIRST USE IN COMMERCE: 19841214
Mark Drawing Code - (1) TYPED DRAWING
Serial Number - 73537419
Filing Date - May 13, 1985
Current Filing Basis - 1A
Original Filing Basis - 1A
Published for Opposition - August 27, 1985
Change In Registration - CHANGE IN REGISTRATION HAS OCCURRED
Registration Number - 1390593
Registration Date - April 22, 1986
Owner - (REGISTRANT) AMERICAN TELEPHONE AND TELEGRAPH COMPANY CORPORATION NEW YORK 550 MADISON AVENUE NEW YORK NEW YORK 10022

(LAST LISTED OWNER) UNIXSYSTEM LABORATORIES, INC. CORPORATION ASSIGNEE OF DELAWARE 295 NORTH MAPLE AVENUE BASKING RIDGE NEW JERSEY 07920

Assignment Recorded - ASSIGNMENT RECORDED
Attorney of Record - FRANK L. POLITANO
Type of Mark - TRADEMARK
Register - PRINCIPAL
Affidavit Text - SECT 8 (6-YR).
Live/Dead Indicator - LIVE

The second reference, 1392203, is also to a registration of the mark UNIX:

Word Mark - UNIX
Goods and Services - IC 009. US 038. G & S: COMPUTER PROGRAMS. FIRST USE: 19721214. FIRST USE IN COMMERCE: 19721214
Mark Drawing Code - (1) TYPED DRAWING
Serial Number - 73544900
Filing Date - June 24, 1985
Current Filing Basis - 1A
Original Filing Basis - 1A
Published for Opposition - October 29, 1985
Registration Number - 1392203
Registration Date - May 6, 1986
Owner - (REGISTRANT) AMERICAN TELEPHONE AND TELEGRAPH COMPANY CORPORATION NEW YORK 550 MADISON AVENUE NEW YORK NEW YORK 10022

(LAST LISTED OWNER) UNIX SYSTEM LABORATORIES, INC. CORPORATION ASSIGNEE OF DELAWARE 295 NORTH MAPLE AVENUE BASKING RIDGE NEW JERSEY 07920

Assignment Recorded - ASSIGNMENT RECORDED
Attorney of Record - FRANK L. POLITANO
Type of Mark - TRADEMARK
Register - PRINCIPAL
Affidavit Text - SECT 15. SECT 8 (6-YR).
Live/Dead Indicator - LIVE

All of which goes to prove that the closer you look at the paperwork back then, the muddier the picture gets. Brenda has just noticed something else. Novell's web site lists all their trademarks (unbelievably slowly). SCO has another live trademark, by the way, SCO GROWS YOUR BUSINESS, proving once again that this company has no sense of irony.

If any of you attend SCOForum, naturally we'd love a report. You may think no one here would be going, but I heard rumors SCO was practically paying people to attend. So if you go, please share the news.


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