Dear Heather: I hope you and Samvera are finding your new home with us agreeable so far! Scott asked me to reply to this; apologies for the long trailing list of CCs below, but I did want you to see what he forwarded to me. He will see this message as well (as our "oodf-" mail-alias spools to the foundation LLC managers, including him and me) ... but I suspect he might be very happy to hand it off, and play hooky from the next set of trademark-ese messages :) Our role here is just to stay aware of Samvera's assets post-transition, and offer suggestions where we can, but not to get in-between you and your counsel. At first glance, my impression is that you've encountered some administrative issues with managing trademark transfers and filings, but not any active outside challenges to them. Can you and I set a time to confer briefly, so I can confirm that understanding? Normally I am on US Pacific time, and my visible calendar can be seen here:
https://is.gd/jamieclark Could you suggest a time or two when we could chat, sometime in the next few weeks? Cordially Jamie James Bryce Clark, General Counsel, OASIS Open, setting the standard for open collaboration ---------- Forwarded message --------- From: Scott McGrath <
scott.mcgrath@oasis-open.org > Subject: Fwd: LYRASIS - Trademark Applications for SAMVERA and SAMVERA and Tree Logo in Canada. To: James Bryce Clark <
jamie.clark@oasis-open.org > ---------- Forwarded message --------- From: Heather Greer Klein <
heather@samvera.org > Subject: Fwd: LYRASIS - Trademark Applications for SAMVERA and SAMVERA and Tree Logo in Canada. To: Scott McGrath <
scott.mcgrath@oasis-open.org > Hi Scott, I wanted to share this update on our (very long) journey to our trademark in Canada. The attorney we have been working with via LYRASIS is recommending we amend our description, and the $700 cost isn't outrageous. But I know the Samvera Board will want me to run this by OASIS first. Do you recommend that we go ahead and continue working with this attorney, or is this something else we should do as a FaaS project? The deadline is in August so it isn't a rush to decide. Thanks! Heather ----- Heather Greer Klein (she/her/hers) Samvera Community Manager Schedule time with me
heather@samvera.org https://samvera.org/ Working from Durham, NC (US Eastern Time Zone) ---------- Forwarded message --------- From: Erin Tripp <
erin.tripp@lyrasis.org > Date: Wed, Apr 7, 2021 at 6:11 PM Subject: Fwd: LYRASIS - Trademark Applications for SAMVERA and SAMVERA and Tree Logo in Canada. To: Heather Greer Klein <
heather@samvera.org >, Metz, Rosalyn <
rosalyn.metz@emory.edu > Cc: Vern Ritter <
Vern.Ritter@lyrasis.org >, Laurie Arp <
laurie.arp@lyrasis.org > Hi Heather and Rosie, I received this from our trademark attorney today. The Canadian word and logo marks needs our attention. Please read the message below and let me know how you'd like me to respond. I'm happy to proceed either way. If we do amend the application the cost would be booked to Samvera. I know it's been a while. I hope you two are doing okay. Erin Get Outlook for Android From: Michael J. Schwab <
mschwab@moritthock.com > Sent: Wednesday, April 7, 2021 7:03:17 PM To: Erin Tripp <
erin.tripp@lyrasis.org > Cc: Vern Ritter <
Vern.Ritter@Lyrasis.org>; Rachel A. Fernbach <
rfernbach@moritthock.com > Subject: LYRASIS - Trademark Applications for SAMVERA and SAMVERA and Tree Logo in Canada. Re: Lyrasis Trademark App. Nos. 1948635 and 1915776 for SAMVERA and SAMVERA and Tree Logo in Class 9 in Canada Our Ref.: N-1718-001 Dear Erin, I hope you are well. Official actions issued against these applications. The deadline to file a response is August 17, 2021 (this cannot be extended). These applications cover the following goods: Downloadable open source repository software, namely, computer software for storing, hosting, indexing, cataloging, searching, managing, controlling access to, retrieving, and distributing digital content. The trademark examiner claims the description cannot be accepted because it does not define the area of use of the software. We disagree. Repository software clearly defines the purpose and function of the software. Moreover, the description has been accepted in other countries (e.g. the United States and European Union) without objection. We, therefore, suggest, asking the Examiner to accept the goods as filed. An alternative is to amend the goods. We believe the following will likely be accepted by the Examiner: Downloadable open source repository software for digital archiving , namely, computer software for storing, hosting, indexing, cataloging, searching, managing, controlling access to, retrieving, and distributing digital content. The cost to file arguments or amend the goods is about $700. We look forward to hearing from you. Regards, To view our COVID-19 Resource Page, click here. Michael J. Schwab Counsel Tel: 212.239.2000 Email:
mschwab@moritthock.com Web:
www.moritthock.com 1407 Broadway New York, NY 10018 400 Garden City Plaza Garden City, NY 11530 From: Erin Tripp [mailto:
erin.tripp@lyrasis.org ] Sent: Monday, November 16, 2020 9:54 AM To: Michael J. Schwab Cc: Vern Ritter; Rachel A. Fernbach Subject: Re: LYRASIS - Samvera trademarks in Canada and Europe Hello Michael, Friday, Nov 20 between 10 am and 1 pm ET is open on my calendar. Let me know if there's a time in there that works for you. Best, ~ Erin From: Michael J. Schwab <
mschwab@moritthock.com > Sent: November 11, 2020 7:51 PM To: Erin Tripp <
erin.tripp@lyrasis.org > Cc: Vern Ritter <
Vern.Ritter@Lyrasis.org>; Rachel A. Fernbach <
rfernbach@moritthock.com > Subject: RE: LYRASIS - Samvera trademarks in Canada and Europe Erin, Are available Friday (11/13) for a call regarding the registrations owned by the Dspace Foundation? Any time except between 12:00 pm and 1:00 pm works for me. Thank you. Regards, To view our COVID-19 Resource Page, click here. Michael J. Schwab Counsel Tel: 212.239.2000 Email:
mschwab@moritthock.com Web:
www.moritthock.com 1407 Broadway New York, NY 10018 400 Garden City Plaza Garden City, NY 11530 From: Erin Tripp [mailto:
erin.tripp@lyrasis.org ] Sent: Monday, October 26, 2020 6:24 AM To: Michael J. Schwab Cc: Vern Ritter; Rachel A. Fernbach Subject: Re: LYRASIS - Samvera trademarks in Canada and Europe Sorry, Michael. I think you're saying you reviewed the documents I sent on Sept 8 and they are not sufficient. I will keep digging. Erin Get Outlook for Android From: Erin Tripp <
erin.tripp@lyrasis.org > Sent: Monday, October 26, 2020 7:13:26 AM To: Michael J. Schwab <
mschwab@moritthock.com > Cc: Vern Ritter <
Vern.Ritter@Lyrasis.org>; Rachel A. Fernbach <
rfernbach@moritthock.com > Subject: Re: LYRASIS - Samvera trademarks in Canada and Europe Hi Michael, I sent you some documents a while ago. I will find that email and resend. Erin Get Outlook for Android From: Michael J. Schwab <
mschwab@moritthock.com > Sent: Saturday, October 24, 2020 3:40:52 PM To: Erin Tripp <
erin.tripp@lyrasis.org > Cc: Vern Ritter <
Vern.Ritter@Lyrasis.org>; Rachel A. Fernbach <
rfernbach@moritthock.com > Subject: FW: LYRASIS - Samvera trademarks in Canada and Europe Erin, I hope you are well. I refer to our prior correspondence in this matter (see below). Have you had any luck with the former CEO of the DSpace Foundation regarding documents related to the assignment of the marks from the DSpace Foundation to Fedora Common? Regards, To view our COVID-19 Resource Page, click here. Michael J. Schwab Counsel Tel: 212.239.2000 Email:
mschwab@moritthock.com Web:
www.moritthock.com 1407 Broadway New York, NY 10018 400 Garden City Plaza Garden City, NY 11530 From: Michael J. Schwab Sent: Tuesday, September 08, 2020 8:20 AM To: 'Erin Tripp' Cc: 'Vern Ritter'; 'Laurie Arp'; Rachel A. Fernbach Subject: RE: LYRASIS - Samvera trademarks in Canada and Europe Erin, 1. We are pleased to report that the application to record the assignment of the registrations for SAMVERA and SAMVERA Logo from Fedora Commons to LYRASIS on the International Register was accepted and the assignment recorded. An updated report on the status of the marks that were owned by Fedora Commons is attached. 2. We were unable to find documents on the public records sufficient to record the assignments of the registrations owned by DSpace Foundation. It would be helpful if can reach out to the former CEO of the DSpace Foundation to see if she has or knows where the documents related to the assignment of the marks from the DSpace Foundation to Fedora Commons can be found. The attorneys who represented DSpace Foundation and Fedora Commons may have copies of the documents in their files. Thank you. Regards, To view our COVID-19 Resource Page, click here. Michael J. Schwab Counsel Tel: 212.239.2000 Email:
mschwab@moritthock.com Web:
www.moritthock.com 1407 Broadway New York, NY 10018 400 Garden City Plaza Garden City, NY 11530 From: Michael J. Schwab Sent: Thursday, August 27, 2020 6:58 PM To: 'Erin Tripp' Cc: Vern Ritter; Laurie Arp; Rachel A. Fernbach Subject: RE: LYRASIS - Samvera trademarks in Canada and Europe Erin, I am reviewing the DSpace Foundation assignment issue and will advise. Regards, To view our COVID-19 Resource Page, click here. Michael J. Schwab Counsel Tel: 212.239.2000 Email:
mschwab@moritthock.com Web:
www.moritthock.com 1407 Broadway New York, NY 10018 400 Garden City Plaza Garden City, NY 11530 From: Erin Tripp [mailto:
erin.tripp@lyrasis.org ] Sent: Thursday, August 27, 2020 8:01 AM To: Michael J. Schwab Cc: Vern Ritter; Laurie Arp; Rachel A. Fernbach Subject: Re: LYRASIS - Samvera trademarks in Canada and Europe Hi Michael, What a wonderful update. Thank you. I'm relieved you received the WIPO notice. I was worried about that one. I don't have documentation showing that the assets of the DSpace Foundation, including the trademark DSPACE, were transferred to Fedora Commons. Are there official state records of the dissolution of the DSpace Foundation and distribution of assets similar to what we filed last year? Would it be time consuming to search? I know the former CEO of the DSpace Foundation and can contact her privately but I don't know that she would have this documentation. Thanks again for your prompt response. I really appreciate it. ~ Erin -- Erin Tripp Director, Research & Innovation Division
erin.tripp@lyrasis.org 800.999.8558 ext. 4906 she / her / hers From: Michael J. Schwab <
mschwab@moritthock.com > Sent: August 26, 2020 7:28 PM To: Erin Tripp <
erin.tripp@lyrasis.org > Cc: Vern Ritter <
Vern.Ritter@Lyrasis.org>; Laurie Arp <
laurie.arp@lyrasis.org >; Rachel A. Fernbach <
rfernbach@moritthock.com > Subject: RE: LYRASIS - Samvera trademarks in Canada and Europe Erin, Welcome back! Two reports are attached. One shows the status of the marks that were owned by Fedora Commons, Inc. The other is for the marks that were owned by the DSpace Foundation. 1. SAMVERA and SAMVERA and Tree Logo a. Registrations: United States and the European Union (through the International Register). b. Applications: Canada i. The applications are waiting to be examined. ii. Examination turnaround in Canada is usually about 18 20 months. There have been further delays because of COVID 19. We hope to receive information on the results of the examination in the next few months. 2. Assignments a. Applications to record the assignment of the marks owned by Fedora Commons have been filed. i. The assignment has been recorded in Canada and the United States . ii. The application to record the assignment on the International Register (this includes the European Union) is pending. (We received and responded to the correspondence from WIPO that was sent to Clocktower. We have been following up with WIPO on the status of the recordation of the assignment and will keep you advised of developments.) b. Applications to record the assignment of the registrations owned by the DSpace Foundation have not yet been filed . i. Dspace Foundation owns a registration for DSPACE in Class 41 in the United States and on the International Register (this covers China , the European Union and Japan ). These registrations were filed by the Massachusetts Institute of Technology ( MIT ) in 2006 and assigned to the Dspace Foundation in 2007. ii. We understand that the DSpace Foundation was dissolved in 2010. iii. The records of the United States Patent and Trademark Office ( USPTO ) and the International Registrar were never updated to reflect that the ownership of the mark was assigned from the DSpace Foundation to Fedora Commons. Dspace Foundation is still named as the owner of the marks on records of the USPTO and International Registrar. We cannot update the records for these registrations to show LYRASIS as the owner without first recording the change in ownership from Dspace Foundation to Fedora Commons. Do you have any evidence (e.g. Certificate of Merger, Assignment, etc.) showing that the assets of the DSpace Foundation, including the trademark DSPACE, were transferred to Fedora Commons? We look forward to hearing from you. Regards, To view our COVID-19 Resource Page, click here. Michael J. Schwab Counsel Tel: 212.239.2000 Email:
mschwab@moritthock.com Web:
www.moritthock.com 1407 Broadway New York, NY 10018 400 Garden City Plaza Garden City, NY 11530 From: Erin Tripp [mailto:
erin.tripp@lyrasis.org ] Sent: Wednesday, August 26, 2020 7:57 AM To: Michael J. Schwab Cc: Vern Ritter; Laurie Arp Subject: LYRASIS - Samvera trademarks in Canada and Europe Hello Michael, I hope you are well. I'm back from maternity leave and would like to follow up on a few trademarks related to the distribution of assets from Fedora Commons, Inc to LYRASIS in the last year. One of our stakeholder groups is looking for an update on three pending applications. They are for Samvera logo trademarks in Canada and Europe. See the attached spreadsheet for details (the highlighted lines). Can you tell me the status of these applications? Are they now under LYRASIS? Are there any barriers to them moving forward? While I was on leave, our former trademark attorney (clocktower law) forwarded me the attached letter from WIPO. Did you also get a copy? Can you look into this for me, please? Is it holding up with the European Samvera application? Thanks in advance for your help with these questions. I cc'd my colleagues Vern Ritter and Laurie Arp on this message. Please reply all. Warmest regards, ~ Erin Tripp -- Erin Tripp Director, Research & Innovation Division
erin.tripp@lyrasis.org 800.999.8558 ext. 4906 she / her / hers