Two ITSMFs - this could get confusing

According to the logo on the top left of the itSMF USA website, itSMF USA is a registered trademark. But " ITSMF is the only national organization dedicated exclusively to fostering upper-level executive talent among African-American IT professionals".

That is of course the Information Technology Senior Management Forum. A little potential for confusion there! But somehow I don't think we'll see itSMF USA enforcing trademark. They were willing enough to set the lawyers on their own ex-executive but this would be political suicide.

Information Technology Service Management Federation, anyone?


Trademarks depend on trade

I noticed this a little while back and was amused. Of course, the defining thing about trademarks is the trade undertaken - there is usually no problem in having two quite different trades having the same mark, as long as there is no confusion. An echo of Jandice vs Jandice recently was the famous, decades long, Apple vs Apple suit. It went on for so very long because, until very, very recently with the release of iTunes, the two were in different businesses. One Apple made computers, the other records - who could imagine them to be in the same trade. So, inevitably, their objections to each other using the name could not be resolved. It is a nice irony that them moving into the same trade - Apple to digital music and Apple to digital music players and the consequent shared interests actually led to the matter being resolved, when a lawyer would (looking at his own interests, naturally) see this as an opportunity to really get some 'legal clarity'.

Over past few decades, Apple has been able to shut down attempts to trade wrongly on its name and reputation where these have been in direct competition in the same trade - it's just been the Apple in the different trade that was the problem. So, if I were a lawyer, I might well try to drum up custom by trying to get one or other itsmf [actually the lawyer would notice that the trademarks are different 'ITSMF' vs 'itSMF', so might not be so foolish] to sue for the name. Not being a lawyer, I see no problem with them co-existing in their different fields - unless one of them wanted to invite the other to become a cousin organisation with links from both web-sites to minimise any possible confusion.....

In legalese, what people sue about is not so much the trademark itself, but, rather, the fraudulent 'passing off' of one organisation as another. So, rather than persecute this quite innocent organisation in a different trade, the itSMF might be warranted in suing a company calling itself, say, it5MF, with the logo made up to look the same as the itSMF logo in order to get genuine itSMF members to buy their product in the belief they were buying from the itSMF itself. It's the fraudulent, passing off, intent that is worth worrying about, not coincidences.

itSMF has a C-level awareness problem?

Quite true, it's not really an issue except for lawyers.

It did occur to me though that obviously nobody important enough to be a founder of ITSMF had heard of (or perhaps gave a toss about) itSMF. If the itSMF wants to have a message for CIOs, it would be nice if they had heard of us first. We don't want them to look puzzled, think "but I'm Hispanic" and move on.

Whose problem is it anyway?


I don't agree. Lawyers can/will help (in an ideal world, at least) define an answer to the question or resolution to the situation. Their interest is serving the client they represent (my opinion, anyway).

1. If you got there first, you'd be most likely interested in preserving the integrity of and ability to differentiate your brand/product/service.
2. So, if you pre-date and/or someone comes too close, if you don't act you may be giving up more than you think.

A hypothetical:
What if I decided that I wanted to be The Real IT Skeptic ( and my interest was Internet Television (source credit to Wikipedia). My pitch was to establish an internet-based forum to promote my critical (some may say skeptical) views on Internet Television and write articles under a psuedonym...

Would that be too close for comfort? After all, I wouldn't be talking about ITIL. Probably railing on MPEG-4, DTV and all sorts of other stuff.


P.S. No, I am not that doing it, so don't worry about calling your lawyer... at least not until skepticism becomes substantially more profitable! ;-P

all this "serving" stuff

I agree with what you say except for all this "serving" stuff. Lawyers serve no-one but themselves. Same with IT consultants, and vendors, and service managers. "Serve" is one of those words cynically abused by our industry, like "partner" and "value". People who really want to serve join the army or the cops or the Red Cross or the church. We're all in this for ourselves.

What's unique?

I chose to give lawyers (as a group) the benefit of my generosity and not condemn them as a lot. I've had numerous interactions where the evidence both proved and disproved your point. Indeed, this isn't unique to lawyers. It transcends professions.

I also grant you that "serving" and "service" have been savagely damaged through misuse, but I don't hold it as hopeless. I also don't believe that we are all just in this for ourselves (blinded by self-interest). I think that's a dangerous generalization. Just as dangerous as the assumption that signing up for a profession can do it.

I think there is an appropriate intersect between service and self-interest. I don't believe they have to be mutually exclusive.

As always, your mileage may vary...

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