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A Trademark Tale
Friday, February 17 2006 @ 06:14 AM EST

Now that Intel has told the court in Utah that SCO said some things that were in Intel's opinion unfair and untrue, it might be the right time to tell you about their trademark efforts, where we find SCO again telling only some of the story, to put it politely.

Do you remember back in June of 2004 when SCO applied for the trademark on the mark UNIX SYSTEM LABORATORIES? It was rejected and it gave us all a good laugh at the time. Well, the story doesn't end there.

In August of 2005, SCO sent a letter to the USPTO, in which SCO pleaded its case after that first notice of denial. SCO's reasoning as to why it deserves the trademark UNIX SYSTEM LABORATORIES is a sketch, as my dear grandmother used to say.

Groklaw member cfs sent me a copy of the letter, and here it is in 4 PDFs, one per page:

Page 1
Page 2
Page 3
Page 4

You'll see on page 4 that SCO claims that USL "is now part of" SCO and that is why SCO deserves the trademark. Say, what?

In its letter pleading its case for publication, SCO walks the USPTO through the history of ownership of USL, their version of it, through all the hops, but notice how their language changes at the last hop, from page 4:

Because UNIX SYSTEM LABORATORIES is now part of the Applicant, this trademark should be sent on to publication. In 1992, Novell purchased UNIX SYSTEM LABORATORIES and all of the UNIX assets, including all trademarks owned by UNIX SYSTEM LABORATORIES. In 1995, The Santa Cruz Operation, Inc. purchased all of the UNIX assets from Novell. As part of the transaction, Novell assigned the UNIX and UNIXWARE trademarks to The Santa Cruz Operation. In 2001, The Santa Cruz Operation completed the sale of, inter alia, the UNIXWARE technologies to Caldera Systems, Inc. Caldera subsequently changed its name to The SCO Group. Because of this, the mark should be allowed to go on to publication.

Breathtaking, isn't it? But did you notice the missing word "trademark" in the last hop? cfs gets credit for noticing the odd wording. But you just can't beat SCO for running, jumping or standing gall. Unix System Laboratories "is now part of the Applicant."

The USPTO denied the application, which you can see in their letter of final denial [PDF] dated September 12, 2005:

For the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d), is now made FINAL with respect to U.S. Registration No(s). 1390593, 1392203, and 2241666. In addition, the following requirement(s) is now made FINAL: (1) an acceptable identification of goods and recitation of services and classification of goods and services. 37 C.F.R. §2.64(a).

The USPTO letter is telling SCO its claims don't match the USPTO's records. They don't match reality as I know it, either. The first two registration numbers the USPTO cites are for the mark UNIX, and their records show them as having been transferred to X/Open. The last number, 2241666 is the registration number for serial number 74433508, for the mark UNIXWARE, and it shows it registered to Santa Cruz. But notice the date on the last line. It reads: "Cancellation date: February 4, 2006."

I told you there is more to this story. It's a complex, winding tale, so hang on while I take you through all the details of what I've found. Let's take a look at the hops in SCO's version of history, just to have some organization to the details.

1. SCO wrote, "In 1992, Novell purchased UNIX SYSTEM LABORATORIES and all of the UNIX assets, including all trademarks owned by UNIX SYSTEM LABORATORIES." SCO's application serial number is 78438912, by the way. Unfortunately, the USPTO doesn't let you save search results and share them with others, so you'll have to run the searches yourself, which you can do by going to the USPTO site, choose Search under Trademarks, on the left, then searching for them (New User is fine) by numbers individually or just by the phrase UNIX SYSTEM LABORATORIES. SCO's is first on the list, and if you click on it, and then click at the top on TDR, you will find all the documents in the matter, including their application and the USPTO's letters. To view them on a Mac, you'll have to download them. It's a Microsoft-loving system. Here's the TARR page if the link works, and you can get the whole story there. For one thing, we find out that SCO applied for the mark in two classes:

International Class: 009
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...,

International Class: 042 Providing web services, namely, providing web-based computer programs so that users or other web-based computer programs can dynamically interact with the web-based computer programs

SCO has six months from that September letter to try to change the USPTO's mind, which is why the USPTO lists the application still as LIVE, they told me, but so far SCO has taken no such steps, at least as far as what can be seen on the USPTO website.

The USPTO also lists two UNIX SYSTEMS LABORATORIES marks as dead, serial numbers 74354526 (word mark, typed drawing) and 74068205 (same, but for computer consulting services) abandoned in 1993, and one, number 74068206, as cancelled in 2000.

To go forward, SCO would have to offer some proof that USL is now part of SCO. Ah, there's the rub. That same nagging problem SCO keeps bumping into. It's one thing to make a claim; it's quite another to prove it. They'd need to start by correcting the factual errors, one assumes. What factual errors? Well, what's this about Novell transferring the UNIX trademark to Santa Cruz?

2. SCO wrote about the Novell to Santa Cruz deal, "As part of the transaction, Novell assigned the UNIX and UNIXWARE trademarks to The Santa Cruz Operation." Novell didn't assign the UNIX trademark to Santa Cruz, according to the USPTO records, or according to The Open Group. Here's the assignment page for UNIX, where it shows clearly that Novell assigned the UNIX mark to X/Open. X/Open, now The Open Group, concurs:

In 1994 Novell (who had acquired the UNIX systems business of AT&T/USL) decided to get out of that business. Rather than sell the business as a single entity, Novell transferred the rights to the UNIX trademark and the specification (that subsequently became the Single UNIX Specification) to The Open Group (at the time X/Open Company). Simultaneously, it sold the UNIX source code and the product implementation (UNIXWARE) to SCO. The Open Group also owns the trademark UNIXWARE, transferred to them from SCO more recently.

And then on their trademark page, The Open Group tells us this:

Some trademark attributions still say Novell (or even AT&T or Bell Labs), which is correct?

UNIX® is a registered trademark of The Open Group.

The correct attribution is:

"UNIX is a registered trademark of The Open Group"

Some licenses (which date from before the merger of X/Open Company with The Open Group) still require the following attribution:

"UNIX is a registered trademark in the United States and other countries, licensed exclusively through X/Open Company Ltd."

All licenses will be updated in due course; in the meantime, The Open Group is happy for either attribution to be used. Any other attribution is incorrect.

You, or SCO, may say, "That's *their* story." So, let's dig a little deeper.

I started all this research because when I saw SCO's August letter to the USPTO, I asked myself, why didn't SCO just file an assignment, if it thought sincerely that it was assigned the marks and that USL is now a part of SCO? One of the things you can search for on the USPTO site is trademark assignments, so that is where I decided to start. Here's what I found by searching for all Novell assignments, the assignment to X/Open of the Unix trademark:

Trademark Assignment Abstract of Title

Total Assignments: 3
Serial #: 73537419

Filing Dt: 05/13/1985
Reg #: 1390593
Reg. Dt: 04/22/1986
Registrant: AMERICAN TELEPHONE AND TELEGRAPH COMPANY

Mark: UNIX

Assignment: 1
Reel/Frame: 0711/0800
Received: Recorded: 05/18/1990
Pages: 0 Conveyance: ASSIGNS THE ENTIRE INTEREST AND THE GOODWILL
Assignor: AMERICAN TELEPHONE AND TELEGRAPH COMPANY
Exec Dt: 05/15/1990
Entity Type: CORPORATION
Citizenship: NEW YORK
Assignee:
UNIX SYSTEM LABORATORIES, INC.
295 NORTH MAPLE AVENUE
BASKING RIDGE, NEW JERSEY 07920

Entity Type: CORPORATION
Citizenship: DELAWARE
Correspondent:
FRANK L. POLITANO
[address]

Assignment: 2

Reel/Frame: 1195/0248
Received: Recorded: 07/27/1994
Pages: 9
Conveyance: MERGER (SEE DOCUMENT FOR DETAILS.)
Assignor: UNIX SYSTEM LABORATORIES, INC.
Exec Dt: 04/29/1994
Entity Type: CORPORATION
Citizenship: DELAWARE
Assignee:
NOVELL, INC.
[address]

Entity Type: CORPORATION
Citizenship: DELAWARE
Correspondent:
ANDREW P. BRIDGES
COLLEEN BAL
WILSON, SONSINI, GOODRICH & ROSATI
[address]

Assignment: 3

Reel/Frame: 1920/0794
Received: 06/30/1999
Recorded: 06/22/1999
Pages: 4
Conveyance: ASSIGNS THE ENTIRE INTEREST
Assignor: NOVELL, INC.

Exec Dt: 11/13/1998
Entity Type: CORPORATION
Citizenship: NONE
Assignee: X/OPEN COMPANY LIMITED
APEX PLAZA
FORBURY ROAD
READING, BERKSHIRE, ENGLAND RG1 1AX

Entity Type: CORPORATION
Citizenship: ENGLAND
Correspondent:
FELSMAN, BRADLEY, VADEN, GUNTER & DILLON, LLP
JAMES E. BRADLEY
[address] Domestic rep:
FELSMAN, BRADLEY, VADEN, GUNTER & DILLON, LLP
[address]

So, according to these records the Open Group told the truth; the trademark UNIX was assigned to them by Novell. And the record says Novell assigned its entire interest over to the Open Group. Here's the complete list of all the Novell assignments. Here's the Novell to X/Open Company assignments, assigning the entire interest: http://assignments.uspto.gov/assignments/q?db=tm&sno=73544900 and http://assignments.uspto.gov/assignments/q?db=tm&sno=73537419

Here's the UNIX SYSTEM LABORATORIES mark assignment page, which shows it going from Unix System Laboratories to Novell, and then Novell ("assigns the entire interest") to X/Open Company Limited, and this assignment was recorded in 1999, serial number 74068206 by means of a document dated 11/13/98. Hold that date in mind because we'll be coming back to it in a little while. But note that to apply for an assignment, you have to have a document evidencing the transfer of ownership to you.

That is what it looks like if you are registering an assignment. That isn't the method that SCO chose when it applied for the mark UNIX SYSTEM LABORATORIES.

3. SCO wrote: "In 2001, The Santa Cruz Operation completed the sale of, inter alia, the UNIXWARE technologies to Caldera Systems, Inc. Caldera subsequently changed its name to The SCO Group. Because of this, the mark should be allowed to go on to publication." The implication is that in every hop, all assets transferred, beginning with the USL-Novell merger and continuing all the way through to Caldera. But note some rulings in the SCO v. IBM case and the SCO v. Novell litigation. Magistrate Judge Brooke Wells just recently ruled in the SCO v. IBM litigation that the Novell to SCO transfer and the SCO to Caldera transfers did not transfer the entire businesses. This directly contradicts SCO's letter to the USPTO. They wrote, "In 1995, The Santa Cruz Operation, Inc. purchased all of the UNIX assets from Novell." According to Judge Wells, that isn't so. She ruled:

THE COURT: Thank you. I'm prepared to rule on this matter at this time. First, I find that the Novell to Santa Cruz transaction did not transfer the entirety of the business, nor did the Santa Cruz to Caldera transaction.

The presiding judge, Dale Kimball, in both the IBM and the SCO v. Novell cases has also made some rulings that do not help SCO. For example, in the IBM case, he wrote the following:

"Viewed against the backdrop of SCO's plethora of public statements concerning IBM's and others' infringement of SCO's purported copyrights to the UNIX software, it is astonishing that SCO has not offered any competent evidence to create a disputed fact regarding whether IBM has infringed SCO's alleged copyrights through IBM's Linux activities. Further, SCO, in its briefing, chose to cavalierly ignore IBM's claims that SCO could not create a disputed fact regarding whether it even owned the relevant copyrights."

And in the Novell case, he wrote regarding the APA:

"The Amendment also contains no transfer language in the form of 'seller hereby conveys to buyer.' Given the similarly ambiguous language in the APA with respect to the transfer of assets -- seller 'will' sell, convey, assign, and buyer 'will' purchase and acquire -- it is questionable on the face of the documents whether there was any intention to transfer the copyrights as of the date the amendment was executed. Moreover, the use of the term 'required' in Amendment No. 2 without any accompanying list or definition of which copyrights would be required for SCO to exercise its rights in the technology is troublesome given the number of copyrighted works involved in the transaction. There is enough ambiguity in the language of Amendment No. 2 that, at this point in the litigation, it is questionable whether Amendment No. 2 was meant to convey the required copyrights or whether the parties contemplated a separate writing to actually transfer the copyrights after the 'required' copyrights were identified. Therefore, this is not a case where the court can immediately conclude that there is a writing under Section 204(a).

"Although the case will obviously require contract interpretation, at this stage of the litigation, the agreements raise substantial doubt as to whether the APA as amended by Amendment No. 2 qualifies as a Section 204(a) writing."

These rulings were known to SCO when they wrote their letter to the USPTO in August of 2005, and they mentioned nothing about them or in any other way indicated that there was any dispute about their ownership of the assets they claimed to have received, at least not in any of the documents I have been able to find.

Now, when the USPTO sent its final letter of denial, it referenced some trademarks they show as belonging to The Open Group, which I think SCO also had every reason to know about by August of 2005. And that brings us to an intriguing subplot and some answers to some mysteries.

4. The iNUX Trademark Opposition

You'll remember that when SCO first applied for the USL trademark we dug up a case between X/Open, now called The Open Group, and a guy in Tampa, FL, named Wayne Gray. Back in 2001, Gray wanted the trademark iNUX to use on a purportedly Linux-based operating system he said he wanted to sell. I say purportedly because I can't find any such operating system in existence, and even the website speaks of it in the future tense. The Open Group opposed his application, and for a while, it seemed to be a normal opposition process. Then, after SCO started claiming it owned UNIX in various courts, it got really interesting because this supposed "Linux" person vigorously used SCO's court claims to try to "prove" that SCO is the rightful owner of the UNIX trademark, not the Open Group. I wrote to him in 2004 to ask him what was up, but to date I have received no reply. I finally concluded that it's just another in a line of lone-gunman litigants who have shown up just happening to want precisely what SCO wants.

After SCO filed its claims against IBM and Novell, the fellow started using SCO's legal filings and SCO's arguments to buttress his own claims. And he started asking for an enormous amount of discovery. And here's the thing I found interesting: he subpoenaed not only The Open Group but Novell and SCO too. I found 284 pages of discovery requests for documents. He even asked for documents concerning the USL v. BSDi lawsuit.

For a while, it seemed to be helping him to file SCO's court claims as exhibits, and the USPTO tends to give lone litigants more than the usual patience anyway, I imagine. The most recent notation on the docket on the case is February of 2005, saying that proceedings were suspended pending a ruling on a motion which still has not been decided. They're probably doing what I've been doing, trying to understand this whole UNIX mess.

Gray is asking the USPTO to take the UNIX marks away from Open Group. Gray claims SCO got all the IP in the Novell to Santa Cruz and the SCO to Caldera transfers, and he used SCO's documents as "proof". Gray's other angle is that the Open Group doesn't deserve the trademark for a long list of reasons that are too off the point of this article to explain, even if they did receive them from Novell. You can just click on all his documents, and I do mean all, to get the whole picture. He's very long-winded. Here's the page listing everything that has been going on since 2001 in this weirdo Opposition action before the Trademark Trial and Appeal Board. (Here's the interlocutory attorney who is hearing the case.)

If you open number 41 on that list, on page 2, X/Open says this:

Novell granted X/Open an exclusive license to use the UNIX mark in an agreement dated May 10, 1994, and subsequently assigned the UNIX mark to X/Open pursuant to that agreement.

Then on page 8 of document 47 (X/Open's Motion for a Protective Order, the one that is hanging in the air), X/Open says there was "a May 10, 1994 agreement in which Novell granted X/Open an exclusive, perpetual, irrevocable license to use and sublicense the UNIX mark, and agreed to assign the Mark to X/Open." That will help us to understand the wording of the 1996 Amendment 2 of the 1995 APA, which said the Excluded Assets were: "All copyrights and trademarks, except for the copyrights and trademarks owned by Novell as of the date of the Agreement required for SCO to exercise its rights with respect to the acquisition of UNIX and UnixWare technologies." Novell had already promised the UNIX trademark to X/Open in 1994. So, SCO got the UNIX source code, but not the trademark, X/Open says. On page 16, it says: "SCO never owned the UNIX mark and was not a party to the May 10, 1994 agreement between Novell and X/Open."

Then, in document 57, on page 5, the Open Group says something I never knew. It solves the mystery of the 1998 date. Open Group says there is a three-way agreement between X/Open, Novell, and SCO "dispositive of Gray's allegation that Novell transferred the UNIX mark to SCO and not to X/Open." And both sides reference a 1998 Deed of Assignment from Novell to X/Open, the document that officially transferred the mark, as per the promise in 1994. What stands out to me in this part of the story is that SCO, because it was involved in discovery in this trademark opposition, knows about that three-way agreement, but when it sent its letter to the USPTO, it never even mentioned it. I realize that Santa Cruz was a party to the agreement, but despite claiming to be Santa Cruz, SCO Group seems to be missing some paperwork you'd think a successor in interest would have, so I stress that even if they had never heard of the 1998 confirmation, they certainly know about it from the iNUX case.

Document 29 is a request to amend, and it has SCO's complaints in the IBM and Novell court cases attached, as well as the March 17, 2003 "Dear Fortune 1000 and Global 500 Customer" letter from SCO, on page 96.

And on page 109, you can see the Deed of Assignment from Novell to X/Open dated November 13, 1998 for the trademarks serial numbers 1392203, 1390593, 1780785, and if you look at page 110, you'll see that the marks that were transferred to Open Group were UNIX and UNIX SYSTEM LABORATORIES.

Yes. You read it right. UNIX SYSTEM LABORATORIES, the mark SCO told the USPTO should belong to them. Incredible, no?

You'll find on p. 114 the claims made by Gray. You see him asking for cancellation of the marks on page 119.

Here's the page of everything SCO has had assigned to it that are pertinent to Unix: SCO GROWS YOUR BUSINESS, serial number 76490790; SCO, #73801197; CALDERA VOLUTION, #76299429; OPEN LINUX, #75250949; and OPENDOS, #75283050.

That's it. No UNIX. No UNIX SYSTEM LABORATORIES. It also didn't get the mark UNIX SVR4.2, or at least not according to these USPTO records, which shows it still belonging to Novell, serial # 74288588, which it got from Unix System Laboratories, Inc.

But here's something odd. On this page, we find a UNIXWARE mark allegedly transferred to SCO. They evidently filed this paperwork themselves on December 17, 2002, and the document they filed to evidence their claim was dated August 1, 2000. That would almost certainly be the Santa Cruz Operation/ Caldera Holdings, Inc./Caldera, Inc. APA. If you examine the hops on the assignment page, that is the trajectory, in fact. The earlier hops are from Unix System Laboratories to Novell by merger. Then Novell, it says, transferred its entire interest to Santa Cruz, and then it says Santa Cruz assigned the mark to Caldera. There was no Santa Cruz Operation in existence in 2002. It was by then Tarantella, and the date is identical for the later Caldera hops, so it appears that in December of 2002, SCO filed this assignment of the mark to itself, based on the APA. As we've seen earlier, it has been cancelled as a Santa Cruz mark. The Open Group says it was transferred to them by SCO, and that three-way deal that surfaced in the iNUX case appears to be the document that did it. Clearly this alleged assignment from Santa Cruz to Caldera is very much in doubt, and yet SCO does not mention any cloud over this assignment.

All the USPTO evidence I can find indicates to me that SCO didn't get the UNIX mark, the UNIXWARE mark (except for the page SCO where SCO makes the claim itself), or the UNIX SYSTEM LABORATORIES mark. It also didn't get the mark UNIX SVR4.2.

One final thing I came across. In this Santa Cruz 10K talking about the then proposed sale of assets to Caldera, Santa Cruz (now Tarantella) records this detail:

Further, once this transaction is consummated, the ongoing operations of the company will be significantly altered. The Company's revenues will be derived from only two product lines - Tarantella products, which have only been recently introduced by the Company, and OpenServer products, which are mature products to be distributed on the Company's behalf by Caldera.

I didn't know that Caldera was originally supposed to be the distributor for Santa Cruz of OpenServer products. Did you? It sounds like something very much like what Novell arranged with Caldera, doesn't it? I realize there was a later deal but it's a piece I didn't know. It matches this wording in another 10K:

In August, 2000, SCO and Caldera Systems, Inc., (Nasdaq: CALD), entered into an agreement in which Caldera Systems would acquire assets from the SCO Server Software and Professional Services Divisions. The agreement is subject to the approval of regulatory agencies and The Santa Cruz Operation, Inc. and Caldera Systems, Inc. stockholders, and is expected to close in January 2001.

SCO will receive 28.6% ownership interest of Caldera, Inc., which is estimated to be an aggregate of approximately 18.4 million shares of Caldera stock and $7 million in cash. SCO will retain its Tarantella Division, and the SCO OpenServer revenue stream and intellectual properties.

Caldera will have exclusive distribution rights to SCO OpenServer and has agreed to service and support the SCO OpenServer customer base. Caldera will receive a sales commission and reimbursement for SCO OpenServer engineering and marketing expenses. SCO's operating profit for the SCO OpenServer products will be approximately 55% of future SCO OpenServer revenues.

So, here's my question. When SCO told the Utah court that it was all of its predecessors in interest, and that all assets transferred, and when it told the USPTO that USL was now part of SCO as a result, did it have available evidence to the contrary? If I found it, why couldn't they? They have a trademark attorney. (You will have noted that Boies Schiller is not the firm used for SCO's trademark work.)

And if they knew about all this, why didn't they mention it to the USPTO? Now it is possible there is an explanation. I confess that the more I dig, the more details I find and the less I feel I have the entire picture. But I have enough to know that the simplistic wording SCO offered to the USPTO was misleading in that it didn't present the whole story. Not by a mile.


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