2009 US Trademark Decision against OIF

This page is part of the historical background relating to "What Is an Osho?", a slick, sannyas-paradigm-shifting policy paper written by Amrito and circulated in 1998. A deconstruction of Amrito's paper is presented on this site, introduced here. A large subset of the background addresses various aspects of OIF's claimed right to control Osho's legacy, particularly regarding the legal muscle of copyright and trademark. This page reports on a major trademark decision in the US against OIF in a case brought by Osho Friends International. It is sourced from an Indian Intellectual Property Law blog. For more legal pages, see OFI or Legal Main Page.

The author of this blog piece is Abhishek Malhotra, a distinguished Intellectual Property advocate based in Delhi who practices in India and California, with a wide-ranging expertise in IP and information technology. In this article, he has presented the key parts of a trademark judgment from the US Trademark Trial and Appellate Board (TTAB) issued in Jan 2009, a case that went on for nearly ten years. The case was brought by OFI to contest OIF's attempts to trademark Osho's name, meditations and various of his symbols and therapeutic processes. OFI has links to M$ Word and pdf versions of the complete decision plus a link to the relevant US gov't website but as all of these links lead to lengthy, wordy and complicated legal jargon that will be too much for ordinary folks to wade through, Malhotra's blog post has been reposted here. It is not known what his connection with Osho is, if any, nor his personal interest in the case. Formatting is more or less as in his article.

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 The appeal filed by OIF has been withdrawn by OIF and the Court of Appeals for the Federal Circuit has passed an order making the order of the TTAB final.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 of registered trademarks and opposition to the registration of pending applications for OSHO and its variations.

[That domain name case was filed and settled very quickly in 2000, under the jurisdiction of a different regulatory body than the trademark case. Details of the domain name case can be found at Sannyas Wiki. It is good and useful to see the connection between the two cases. And possibly some of Malhotra's interest in this trademark case has arisen from some Delhi connection.]

The main arguments were:

1. That the word OSHO was generic, i.e., it was required to be used for identifying all activities and teachings of OSHO.
2. That OSHO was primarily used to describe all such activities and teachings.
3. 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.