We bring you a guest post on controversial case of the Osho trademark, as decided by the Trademark Trial and Appellate Board (TTAB) in the US. You will recall our previous posts on the frequently coinciding paths of the sacred and the profane in IP, which you can sample here, here and here. Today’s post is in continuation of the same, and draws attention to the detailed discussion by the TTAB on whether or not OSHO could be regarded as generic, and related matters.(Image: Wikipedia)(Interestingly, as an aside, the website of Osho Friends International has a banner proclaiming “OSHO Everybody’s Birthright – Nobody’s Copyright”, perhaps in response to the various matters that have gone litigious in the recent past.)
Our guest blogger for this post is Abhishek Malhotra, an IP advocate admitted to practice in India and California, with nearly ten years of experience, based in Delhi. Abhishek’s expertise ranges across IP issues, as well as on information technology, employment and competition issues. He regularly advises clients across industry sectors on the creation, maintenance, management and enforcement of IP rights. He has also provided inputs to the Government of India on the Copyright Act, and spoken at conferences held by the International Trademark Association and the World Intellectual Property Organisation. He is also a regular contributor on the Indian position for various issues pertaining to the music industry for the annual legal publication of the International Association of Entertainment Lawyers.
The decision discussed below is available as a download here. It will be of interest for readers to know, as Abhishek points out in his note, that this TTAB decision was appealed against by the Osho International Foundation, but later withdrawn, thereby making the order of the TTAB final. The post follows.
Is OSHO a trademark – Osho Friends to the Rescue
The Trademark Trial and Appellate Board, USA (TTAB), has, after a long and interesting trial, answered the question with an emphatic NO.
This decision is music to the ears of Osho sanyasins who have been using Osho’s name to identify their activities
for the last 20 years and who have, of late, been constantly threatened with legal action by Osho International Foundation (OIF) based on OIF’s claimed trademark rights and copyrights in and to Osho and content attributed to him.More Good news. The appeal filed by OIF has been withdrawn by OIF and the Court of Appeals for the Federal Circuit has passed an order making the order of the TTAB final.
The applications and registrations for OSHO and variations of OSHO were discovered by Osho World Foundation (Osho World), the founder members of Osho Friends International (OFI) when OIF filed a case against Osho World for transfer of domain name, Oshoworld in 2000. The case was based on these registrations and applications in USA. Osho World won that case and followed up on the victory with filing cases for cancellation or registered trademarks and opposition to the registration of pending applications for OSHO and its variations. The main arguments were:- That the word OSHO was generic, i.e., it was required to be used for identifying all activities and teachings of OSHO.
- That OSHO was primarily used to describe all such activities and teachings.
- That OIF played a fraud on the US Patents and Trademark Office (USPTO) by stating that no one except OIF was entitled to use OSHO even though OIF knew of the various centers using OSHO in their names and in connection with their activities.
The TTAB, after hearing both parties and looking to the evidence filed and testimonies of all persons concerned, concluded that OSHO was generic and descriptive in respect of the activities and teachings of OSHO and hence the registered OSHO trademarks are to be cancelled and the applications for OSHO are to be rejected. As the TTAB ruled in favour of OFI on the first two arguments, it did not give a determination on the third argument of fraud. Some of the important statements of the TTAB in its decision, which include important findings of fact, are quoted below:
“Osho urged and authorized his followers to spread his teachings as broadly as possible, throughout the world. To this end, his followers transcribed and recorded his discourses and shared them with others during Osho’s lifetime. In addition, Osho’s followers opened meditation centers and camps in different parts of the world, offering several of his meditation techniques. These followers have created and offer their variations of music, cultural and celebratory events, education and therapeutic courses, workshops and retreats based upon Osho’s ideas. Some of these followers and their centers have offered and continue to offer publications, recordings and newsletters relating to their activities and Osho’s ideas. Such centers have also begun operating internet websites relating to the same subjects. These centers operate independently and separately from one another, without coordination by any single source or hierarchy. Osho gave each center a name as a gift and a certificate bearing such name. However, Osho neither controlled nor created a hierarchy to control or supervise these centers. Nonetheless, in 1989, upon adoption of his name, Osho requested that the centers use Osho in their names so people would recognize them as meditation centers based upon his teachings and ideas. Most centers immediately complied with this request.”
“…there is no evidence of record that the individual known as Osho ever used OSHO as a trademark. Indeed, the parties agree that Osho never owned or used OSHO as a mark. Thus, the record in this case supports a finding that Osho himself neither claimed nor used OSHO as a trademark. The record further supports a finding that Osho gave permission to his followers to individually open centers utilizing his name to spread his teachings throughout the world. In addition, the record supports a finding that upon his adoption of the name, Osho requested that such centers utilize OSHO at the beginning of their titles so they would be recognized as “Osho meditation centers.” Finally, the record supports a finding that Osho never withdrew his permission for such centers to refer to themselves using his name.”
“…defendant (OIF) cannot appropriate the term OSHO to identify the source of its goods and services related to such teachings.”
“Because the evidence of record shows that consumers identify the term OSHO with a series of meditative and religious teachings, defendant (OIF) cannot monopolize such teachings by asserting trademark rights in the generic term used to identify them.”
“In this case, testimony and evidence of record establishes that Osho himself requested that his followers change the names of their centers to include OSHO so that they would be recognized as “Osho centers.” Further testimony and evidence establishes that the term OSHO is necessary to describe the meditations, practices and beliefs that form the core of the OSHO meditative and religious movement. As such, the term OSHO must be freely available for the practitioners and followers of the mystic Osho to be able to identify their activities based upon his teachings. Based upon the foregoing, we find the term OSHO is generic for the meditations devised by the mystic Osho and the meditative and religious movement arising therefrom. As a result, defendant (OIF) cannot foreclose others from utilizing the term OSHO to describe their own goods and services based upon such meditations and movements. Accordingly, we grant plaintiff’s (OFI) petition to cancel as to those marks consisting in whole of the term OSHO.”
What does this mean for OSHO sanyasins?
This decision means that OIF cannot claim a monopoly in the USA on use of the word OSHO in relation to Osho’s teachings and activities and cannot use these registrations and applications to threaten anyone who is using OSHO in relation to Osho’s teachings and activities or as names of their centers/web addresses.
While OIF may try to rely upon registrations of OSHO and its variations in other countries, these would now become vulnerable and perhaps open to challenge based on the detailed finding given by the TTAB.
This is the same Anonymous Examiner of Trade Marks writes this comment for the post on ‘OSHO’ –Trade Mark.
Even after going through that article fully and asking a query to my higher official on a circular with regard to Trade Mark OSHO, which was circulated quiet three months back, I am not yet convinced to come to the conclusion, still in confusion, that why that circular was issued, no… no.. shown to examiners.
While looking at the caption of the Post on OSHO suddenly I remembered a circular issued nearly three months before to all the examiners and the officers higher than that . What it actually said was ‘’As per the court order Examiners are asked not to register the word mark OSHO”. This circular was just shown and got our signatures. None of us was given a copy of that circular. Nor was it published in the official website. And nowhere in the circular it was spoken about the Application/Petition/Suit Number, what the dispute all about, which court has passed such order or direction.
Once again, after this post was published, I approached my higher official and enquired about the details on the Trade Mark OSHO and the related circular. The reply was ‘one South India High Court! (Andhra Pradesh) has passed an order in this regard and the order was even passed in the year 1989”.
Suddenly I started searching the judgment of all the South India High Courts! My efforts went futile. (That is why it took more time in sending this comment)
This is not first time the Trade Marks Registry is issuing such a headless circular. In the case of ZEE and CFI also similar incident happened. What is circulated from Head office to all branch offices will be taken as it is. YES BOSS.
Here why I take it to readers is where any of you aware of the judgment on OSHO Trade Mark passed by any High Courts or Supreme Court, please let all know.
SNIPPET:- Recently in my allocated files I found that there were nearly five Trade Mark Applications for registration of the mark ‘OHSO’ in different classes. I kept aside those files for getting further clarification. (It is OHSO not OSHO) What to do?