First Use in the Marketplace

First Use in the Marketplace

Osho International Foundation, Zurich (OIF), claims that it has used Osho as a trademark since 1989, but in the US, at least, most of the uses of “Osho” by OIF referred to the person Osho (i.e. as the author of a book or speaker in a recording) or used Osho generically to describe products or services related to the teachings of Osho. In the US case OIF attempted to use products designed after the case was filed in 2000 as evidence to prove trademark use, but only products from 1989–90 or the very early 1990s would be relevant to use of “Osho” as a trademark. If OIF did not begin using “Osho” as a trademark until 2000, any rights it once might have had were already abandoned before that trademark use began.

In the US, use of a name as the author of a book or the speaker in a recording is a reference to the person, not a trademark use unless several requirements are met. This question will need to be checked in each relevant country or area. OIF claims that it used Osho in the marketplace first because it claimed to own the copyrights to Osho’s work and that OIF licensed the publication of books and recordings (including the name “Osho” as the author/performer) that were sold in the marketplace. OIF, however, never actually owned the copyrights in question.

Also, use of “Osho” for publications in only one of a long list of goods and services claimed for trademarks in Switzerland and the EU, so OIF would need to have used “Osho” first for all the goods and services in order to claim exclusive rights to all of them. For example, if OIF used “Osho” first to refer to Him as an author in some country, but a center used “Osho” first to refer to groups, events, meditations, etc., OIF would not have exclusive rights to use “Osho” for the center activities. If someone else used “Osho” for a publication, such as for the Osho Times or some other publication, OIF cannot even claim first use with regard to publications.

The dates of OIF’s trademark registrations also argue against any valid claim of first use. OIF did not register any trademarks in the EU until 1998, in Australia until 1999, and in Canada until 2002. From 1989 to those dates the Osho centers in those areas had been using Osho to describe and identify all center activities and individuals had been using the name to label their activities, so OIF could not claim it had used “Osho” exclusively since 1989 in any of those geographical areas.

In the US OIF claimed that it used Osho as an author name, but since that alone is not a trademark use under US law, OIF did not press that as a first use. Even with that claim, OIF failed to produce any evidence that it licensed and controlled the books in question or evidence of when those books were sold in the US.

By the end of the US case OIF was reduced to making the desperate statement that all its claims to ownership of the Osho trademark in the US were based on the alleged “rebranding” of The Rajneesh Times to The Osho Times by OIF’s “predecessor.” The difficulty with this is that OIF had no “predecessor” for any trademark rights, such as “rebranding” rights. (See OIF and RF and RFI for details.) No rights in “Rajneesh,” “Osho,” “The Rajneesh Times,” or “The Osho Times,” were ever assigned to OIF by anyone. Further, there is no legal theory that would allow someone to gain ownership of someone else’s name by co-opting that name for a new brand without an assignment from the person named. There is no such thing as ownership by “rebranding.” OIF, of course, never received any assignment from Osho.

[A claimant can gain exclusive rights by coining a term and using in exclusively the marketplace, by adopting a term and using it exclusively in the marketplace, or by an assignment from the person who owns rights, but OIF did none of those things.]

The Rajneesh/Osho Times was published by Tao Publishing in Pune, and OIF was not able to produce any documentation that showed any connection between Tao and OIF that would transfer trademark rights to OIF. In fact, far from being controlled by OIF, Tao in 1989 claimed in its masthead to own all of Osho’s copyrights. This means that Tao was actually a competitor of OIF in claiming those copyrights in 1989.

The example used in the US case shows how far OIF will stretch to try and manufacturer an appearance of first use in a geographical area. Any claims to first use that OIF makes in any country or area should be carefully checked out in detail to see if they can stand up to scrutiny. Since the reality is that Osho asked everyone to use His new name, Osho, in 1989, and people around the world did so at about the same time, it will be virtually impossible for anyone to claim first exclusive use in the marketplace for all goods and services related to Osho’s teachings.

For more discussion of this topic see: Trial Brief of Opposer/Petitioner pp. 45–48.