The following pages describe how to obtain an official license to use the JABBER trademark in the name of a software program, product, or service.
Note: Special thanks to the Linux Mark Institute for allowing us to re-use its content on this website.
The XMPP Standards Foundation (XSF), formerly the Jabber Software Foundation (JSF), is a non-profit organization established on behalf of the Jabber® community for the purpose of managing the growth of the Jabber/XMPP protocols for instant messaging, presence, and other forms of near-real-time communication. In addition, the XSF provides a simple means of licensing or sublicensing the use of the JABBER registered trademark for use in connection with software and computer products, as well as other miscellaneous products related to the promotion of Jabber technologies. In relation to the JABBER trademark, the XSF's purpose is to protect legitimate uses of the trademark without burdening any one entity with the financial responsibility of protecting the Jabber community's use of the mark.
The express purpose of this web page is to provide a simple, self-supporting Trademark Licensing Program by which interested companies, open-source projects, and individuals can obtain a non-exclusive and simple trademark license for the proper use of the mark in relation to Jabber-based products, software projects, paraphernalia, and the like.
If you have any questions about the Jabber Trademark Licensing Program, please contact Peter Saint-Andre, the XSF's Executive Director.
Prior to the development of Jabber instant messaging software by anyone (including Jeremie Miller, Webb Interactive Services, Inc., or Jabber, Inc.), a company named Oquirrh Technologies was using the trademark JABBER for its voice compression software (as of March 1996). When Jeremie, the inventor of Jabber technologies, teamed up with Webb Interactive Services (which later created a new subsidiary, Jabber, Inc.), Webb realized that potentially the IM software would not be able to be called JABBER, because such a use might infringe the trademark rights of the senior user, Oquirrh Technologies. Oquirrh also owned a federal registration for the mark JABBER (Reg. No. 2148182), which would prevent federal registration for the mark JABBER for IM software. Webb had Oquirrh assign its registration of the mark and its domain name (Jabber.com) to Webb, for which Webb paid Oquirrh. Since that time, Webb has assigned its rights to Jabber, Inc., which has since paid several thousand dollars in attorney's fees for advice related to the trademark and to file applications for federal and foreign registrations of the Mark for use in connection with IM software.
Jabber, Inc. had several reasons for purchasing the trademark:
First, it wanted to ensure that instant messaging software based on the Jabber protocols could legitimately use the JABBER name and not infringe on existing intellectual property claims.
Second, Jabber, Inc. wanted to make sure that anyone selling or giving away Jabber software is actually using the Jabber open source code, Jabber commercial software, or the Jabber protocols, rather than providing products or services unrelated to the Jabber protocols, but calling it "Jabber" in order to sell or distribute more copies (this is called "Passing off"). Everyone in the Jabber Community should share this goal, in order for the term JABBER to maintain its distinctive meaning. If there were no trademark right owned by anyone, Microsoft, for example, could develop a completely unrelated IM or non-IM product and call it JABBER.
Finally, at the time of purchasing the trademark, Jabber, Inc. wanted to ensure that it would be the only IM-related company called JABBER and that any other commercial or open-source entities using JABBER in their name did so in a manner that was deemed good for the Jabber Community and not detrimental to Jabber, Inc.
The Jabber trademark covers the use of the word "Jabber," when applied to the general category of computer software, including its use in product names and company names. Trademark rights are associated with specific goods and services, so that DELTA is a trademark owned by Delta Airlines for air travel services and is also a trademark owned by Delta Faucets for plumbing fixtures. Similarly, even if Jabber, Inc. owns a JABBER trademark in the area of computer software, Toyota could name its new car model JABBER. The standard is whether consumers would be confused and think that the products came from the same source. Software is so different from cars, that it is unlikely that a consumer would conclude that Toyota made the software, and vice versa.
During 2002 and 2003, the Jabber Software Foundation (JSF) entered into agreements with Jabber, Inc. (the trademark holder) that authorize the JSF to sub-license use of the JABBER mark. These agreements are as follows:
The agreements are attached to this page for convenient review.
1. Using JABBER on an Unlicensed Basis
JABBER may be used in a descriptive, fair-use manner without a license (or other written approval) in the following ways.
1.1 Protocol Names:
Many protocol names (e.g., "jabber:iq:roster" and "http://jabber.org/protocol/offline") contain JABBER as part of the name. Such a protocol name should be considered an opaque string, and must be used unaltered (i.e., without inclusion of the "®" symbol) in order to be maintained as a unique identifier. Any use of such protocol identifiers in software or associated documentation, or in XML streams sent over the wire, is considered fair and descriptive use under the trademark laws and requires no license.
1.2 General Technology References:
In any reference to JABBER that merely refers to it as an instant messaging and presence technology or XML streaming technology (e.g., in software documentation), the use of the "®" symbol is requested, but not required. It is not necessary to obtain or hold a trademark license to refer to the name of the technology. This type of use is called "descriptive use" under the trademark laws and requires no license.
1.3 Domain Names:
Use of a domain name that incorporates JABBER will constitute a fair, descriptive use if the following conditions are met:
1.4 Publications, Seminars and Services:
If you refer to JABBER in the titles of books, magazines, e-zines, other publications, seminars, or user groups, you must use your own trademark in conjunction with the goods or service provided and may not claim rights in the portion of the title referring to the Jabber Trademark. Examples of appropriate titles include: "Your Name Jabber Protocol User's Guide," "Your Name Jabber User Group," "Your Trademark Supporting Jabber Services" and "Your Brand Jabber Training." Your name or trademark must appear in a prominent location on all materials relating to the publication, seminar, or services.
1.5 Trade Shows, Conferences and Expos:
Unless Jabber, Inc. or the XSF is sponsoring your show or conference under a written sponsorship agreement, the name of any trade show, conference or exposition concerning a Jabber product, service or technology should begin with the producer's or sponsor's brand or name, and should then follow a "for Jabber" format. For example, "YourName Expo for Jabber Development" or "YourName Conference for Jabber Developers." The producer's or sponsor's own name or trademark must be prominently displayed on all materials that advertise, promote or are otherwise associated with the conference.
For all instances of fair or descriptive use in an image or text (i.e., not protocol names used in software code or in XML streams sent over the wire), if space allows and if you want to be especially law abiding, you should place a short legend at the bottom of the image or text that says:
JABBER is a registered trademark of Jabber Inc., and its use is licensed through the XMPP Standards Foundation.
This places everyone else on notice that they cannot use the Mark improperly and protects it for use by everyone interested in promoting it.
2. Using JABBER on a Licensed Basis
JABBER may be used as all or part of an organization, software, service, or site name only upon written approval and/or under a license agreement, available through the XMPP Standards Foundation (XSF). Unlicensed or otherwise unauthorized use of JABBER or of marks that are confusingly similar to JABBER may constitute an infringement of trademark rights.
2.1 Products:
JABBER may NOT be used as the standalone name of any software product (e.g. The Jabber Server) or prepended to other words or characters as the standalone name of any software product (e.g. The JabberLinux Client).
JABBER may be used in the name of software products licensed under an OSI approved open source license (e.g. GPL, JOSL) providing that:
JABBER may be used in the name of software products licensed under a commercial/proprietary license providing that:
2.2 Company/Organization Names:
JABBER can be used in the official name of any commercial (for profit) business or entity only through a license from the XSF and written approval from Jabber, Inc.
JABBER can be used in the official name of any non-commercial (non-profit) organization or entity only through a license from the XSF.
3. General Tips on Using Trademarks
A trademark should be used as an adjective immediately preceding a generic noun such as in "Jabber protocol" or "Jabber software." A trademark should not be used as follows:
To protect a registered trademark, the owner is required to "police" or control the use of the mark by others, under penalty of loss of the mark. Others may use or refer to a registered mark in some circumstances without a license from the owner if it is for a so-called "fair use," or in other cases they may need to obtain a license for the use. The examples provided below may help to explain the differences (see also the usage guidelines). The XMPP Standards Foundation (XSF) is not trying to develop a revenue source from licensing, so our interpretation of the trademark laws may be a bit more liberal than other companies or trademark owners.
Examples of Fair Use
For instance, if all you are doing is printing up pencils, stenciling T-shirts, or distributing coffee cups with a legend on them like "JABBER®: Open IM!" or "IM with JABBER®, IM the world!" this is normally considered "fair use" unless the trademark owner is a content company like Disney who seeks to collect royalties on virtually any mention of its characters and properties. We do not consider this type of activity as requiring a license from the XSF, unless you are taking the position that no one else can make similar items and distribute or sell them without your permission. In the latter case, you are wrong and you will have a major hassle with us if we find this out.
Similarly, if you are writing a product review, an engineering report, or even printing literature that merely refers to JABBER as the real-time messaging and presence technology, as long as you indicate at least once by using the circle ® symbol that it is a registered mark, it is not necessary to obtain or hold a trademark license from the XSF to use the name. This type of use is called "descriptive use" under the trademark laws and requires no license. We are generally delighted when you do this, as it helps the public know more about Jabber.
We do ask that even in the above situations that you place the ® symbol after the first prominent use of the JABBER mark, and that if you have space, and want to be especially law abiding, you place a short legend at the bottom of the image or text that says "JABBER® is a registered trademark licensed through the XMPP Standards Foundation." This places everyone else on notice that they cannot use the mark improperly and protects it for the use by all of us interested in promoting it.
Examples of Use Requiring a License
On the other hand, if you plan to market a product or offer a service to the public using a mark that identifies the JABBER based product under a name that you consider your product name, like the "Acme Jabber Server" or "Applied Jabber Consulting" you are required to apply for and obtain the low cost one time royalty license described elsewhere on this web site. This is true whether you actually apply for a trademark for your product or service name, because you are using the mark in a trademark sense, and it is important that the public know that JABBER is the base mark licensed through the XMPP Standards Foundation (XSF), and that the derivative mark you have adopted is your particular version of Jabber.
Beside our need to protect the Jabber mark for all of us in the industry, this process allows us to prevent improper uses of the mark that might eventually result in someone obtaining a trademark with the word Jabber in it that suggests that they are the sole source of Jabber or the sole authority to certify some aspects of use or training concerning Jabber.
If In Doubt, Find Out
If you have any question about the need for a trademark license from the XSF, please contact Peter Saint-Andre, Executive Director of the XSF. We will try to respond promptly. In many cases you will find that obtaining the license is simple and low cost protection from any problems in the future. In other cases, we will send you a letter confirming that you do not need the license because of the nature of your use. It also helps us all to protect the mark so that it can be used properly by those in the industry without someone trying to appropriate the use to themselves. Thanks for being concerned.
If you or someone you represent wish to use and/or register as a trademark some variation of a mark or trade name including the word Jabber, you are required to apply for a license. Your license application it will be reviewed by the Board of Directors of the XMPP Standards Foundation (XSF), processed, and returned to you within a several week period, indicating the approval or disapproval of the organization of your proposed use and granting the license. The XSF reserves the right to disapprove known conflicting uses and uses deemed inimical to the Jabber community as a whole.
The criteria for review are that such a mark must not preclude others from reasonable variations of the Jabber mark and should not confuse the public into believing that the particular user and its mark or trade name are somehow an exclusive source of a Jabber product. The proposed use of the mark should also not conflict with that of an existing Jabber trademark licensee. For this reason, we have declined in the past to approve a number of proposed marks that would suggest exclusivity, would preclude other reasonable uses of the mark and other variations thereof, or where the proposed use of the mark has already been licensed to another party. If in some unusual circumstances the proposed scope of use of the mark is not be acceptable but the proposed use may be easily modified and approved, the JSF will return your application with the proposed changes included.
The actual license language speaks for itself. In essence the only things necessary to obtain a license are to fill out the online application form, complete all of the questions, provide all of the information requested, and submit the application through this website, accompanied or followed by a check in the appropriate amount for the license if required. There is no fee required for software and other products licensed under an OSI approved open source license. Otherwise, the fee is $250.00 for use of the mark in connection with Jabber accessories or any use other than software or computer hardware, and a $500.00 one-time fee for use in connection with software or computer hardware or any other type of computer or Internet use of the Jabber mark. We have divided the fee into two classes in recognition that most of the accessory uses involve much smaller revenues than the computer software or hardware. The fees are standard and are not negotiable.
In addition, the user and licensee must be certain that a legend is placed on the licensed product near the most prominent use of the proposed mark with language to the effect that:
"The registered trademark Jabber® is used pursuant to a license from the XMPP Standards Foundation, authorized licensor of the Jabber trademark on a worldwide basis."
Recognizing that this exact language may be too long for your packaging, any reasonable facsimile thereof will accomplish the purpose. The point is to make clear to the public that the mark is used pursuant to a license granted by the XMPP Standards Foundation.
The final condition is that if you fail to comply with the terms of the license at any time, you will be given reasonable notice and time to cure, and in the event that it is not cured to the reasonable satisfaction of the XMPP Standards Foundation, your license will be terminated after further written notice. Once cancelled, the license may not be renewed or reinstated. The license provides for recovery of attorney fees to enforce it.
Unless it can be demonstrated that there is an error in the license form or that it is commercially unreasonable in your situation, the terms of the license form are not negotiable, since we do not have the time and money to enter into negotiated licenses. The fee is set at such a low level that the legal costs of changing or negotiating modifications to the license are in most cases prohibitive. If any changes are to be made in the license, and that is unlikely, the user and proposed licensee will be required to pay all legal costs incurred by the XMPP Standards Foundation in discussing and/or making any modifications. Therefore, please do not ask for changes in it unless there is some critical reason for doing so. We do not expect to make many exceptions.
Communications about the Jabber licensing program are being sent to the industry in general now that XMPP Standards Foundation (XSF) has established a trademark licensing program. If you know of entities or persons using the Jabber mark without a license and without the required legend, please notify Peter Saint-Andre, Executive Director of the XSF, complete with the details. We will then contact that entity or person and attempt to negotiate a license agreement with them, or will take such other further legal action as might be necessary. We are serious about enforcing the trademark rights, not because of the revenues, but because of the desire of the XSF and the responsible members of the Jabber community to see to it that the mark is available to anyone who wishes to uses it in a reasonable form and in such manner as would not preclude others from using it for their own Jabber products or conflict with a pre-existing license to use the mark.
Applications are provided by completing the License Agreement.
All decisions regarding approval of licenses for using the Jabber trademark are made by the Board of Directors of the XMPP Standards Foundation, following the usage guidelines.
In some cases (e.g., for most open-source projects), the Board is empowered to waive the licensing fee.
In case of serious question, all disputed applications will be reviewed by the Board of Directors the XMPP Standards Foundation. We expect very few such disputes since the licensing terms are quite liberal, with the intent that everyone possible will be allowed to use the mark as long as they do not preclude others from using variations, except specific derivatives that may have been authorized to someone else. We will not and do not intercede between parties who are having disputes, so please do not ask. If you have a trademark dispute over the name you have selected which is authorized by us and a similar name is then used by someone else, please contact them and their trademark attorneys, not us. All we do is indicate our approval of using the Jabber portion of the mark. We will not knowingly approve the identical name for anyone, but we are not the trademark office, we do not make trademark searches, and we will not get involved in any dispute between licensees. The license form makes that clear.
Please read this website and the application form carefully before you send an email asking questions that are already answered here. Most of your questions should be answered by the website or by the specific terms of the license.
For correspondence regarding the Jabber Trademark Licensing Program, please contact:
Board of Directors
XMPP Standards Foundation
P.O. Box 1641
Denver, CO 80202-1641
Please also feel free to contact Peter Saint-Andre if you have any questions.
The License Application is available below in Portable Document Format (PDF).
The "Type of Entity" should be one of individual, open-source project, non-profit organization, for-profit company, government agency, or educational institution.
The "Mark as Used" is the name of the product, software program, etc. that uses the JABBER mark (e.g., "ejabberd").
This page lists licensed uses of the Jabber trademark as approved by the XMPP Standards Foundation.
| Mark | Licensee | Type | Date Approved |
|---|---|---|---|
| ejabberd | Alexey Shchepin | Open-Source Project | 2004-06-24 |
| Jabber Africa Foundation | Jabber Africa Foundation | Non-Profit Organization | 2004-03-09 |
| Jabber GG Transport | Jacek Konieczny | Open-Source Project | 2006-01-13 |
| Jabber Mail Component | David Rousselie | Open-Source Project | 2006-01-13 |
| Jabber Registration Tool | Rene Bartosh | Open-Source Project | 2006-01-13 |
| jabberd | Rob Norris | Open-Source Project | 2004-03-09 |
| JabberNuke | maketheweb.com | For-Profit Company | 2006-01-13 |
| JabberStudio | Thomas Muldowney | Open-Source Project | 2004-06-24 |
| JabberVP / Jabber Virtual Presence | Klaus H. Wolf | Open-Source Project | 2004-06-24 |