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[802SEC] FW: BOUNCE Non-member submission from []

Forwarded for Karen McCabe.


-----Original Message-----
Sent: Tuesday, February 05, 2002 6:49 AM
Subject: BOUNCE Non-member submission from

From Tue Feb  5 09:49:14 2002
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Subject: Re: Non-member submiss ion from []
To: Geoff Thompson <>
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I have followed up with Claudio Stanziola, our staff IP Manager and who
works closely with IEEE-SA and IEEE legal counsel. We are abiding by the
guidance/advise of our legal counsel regarding the placement and use of the
[TM]. With this, we have been advised to use the [TM] as I stated in my
original email, e.g. IEEE 802.16.2 [TM].


Karen McCabe
Senior Marketing Manager, IEEE Standards
445 Hoes Lane, PO Box 1331
Piscataway NJ 08855 USA
PH: +1 732 562 3824


                    Geoff Thompson

                    <gthompso@nortelnet       To:

          >                cc:
                                              Subject:     Re: Non-member
submiss ion from []      
                    02/04/2002 04:34 PM




RE your statement: "It should have been IEEE 802.16.2[TM]."

I do not believe that this is correct.
According to my searches of the PTO database on the web, there is no
registered trademark that matches this.
Therefore, I believe that the TM symbol should not be used as you have

It is my understanding that if you wish to express trademark registration
for the term "802" then the [tm] mark must be expressed immediately to the
right of the registered mark, not some number of characters later.
Thus Coca-Cola Six Pack[tm] doesn't cover Coca-Cola, but rather would be
proper only if the entire phrase "Coca-Cola Six Pack" had been successfully

registered, otherwise Coca-Cola[tm] Six Pack is what it takes.


At 12:30 PM 2/4/02 -0800, Bob O'Hara wrote:

>Forwarded for Karen McCabe.
>  -Bob
>-----Original Message-----
>Sent: Monday, February 04, 2002 12:19 PM
>Subject: BOUNCE Non-member submission
>from []
>Subject: Re: use of trademark symbol inside standard numbers
>To: "Roger B. Marks" <>
>Hi Roger,
>So sorry for my very delayed response. Your original message got lost in
>the "e-mail" shuffle. Please note that the placement of the [TM] is the
>IEEE 802.16 news release was incorrect. It should have been IEEE
>802.16.2[TM]. We can correct on archive versions of the release.
>I have noted the correction and proper usage of the [TM] for future
>efforts--along with notifying CoreCom and Corporate Communications.
>Please advise if there is anything further you would like for staff to
>pursue on this issue.
>Karen McCabe
>Senior Marketing Manager, IEEE Standards
>445 Hoes Lane, PO Box 1331
>Piscataway NJ 08855 USA
>PH: +1 732 562 3824
>                     "Roger B.
>                     Marks"               To:     <>
>                     <r.b.marks@iee       cc:
>           >               Subject:     use of trademark
>symbol inside standard numbers
>                     02/01/2002
>                     12:36 PM
>I wanted to follow up with a question I asked you in early December.
>In your press release on the approval of IEEE Standard 802.16:
>there is a reference to "IEEE Standard 802.16[TM].2" (where [TM] is a
>superscript trademark symbol).
>I am really puzzled as to the use of the trademark symbol right smack
>in the middle of a standard number. My guess is that someone did a
>global replace of "802.16" with "802.16[TM]" and failed to notice the
>impact on standard 802.16.2. However, I'm not certain. Since the
>press release hasn't been corrected, I'm starting to think that this
>was actually intentional. Can you clarify?
>I hope that this is an editorial oversight, not a policy. It would
>take a lot of effort, for instance, to convince the world that
>"802.11b" is really "802.11[TM]b".
> >Karen,
> >
> >Thanks for getting the IEEE 802.16 press release onto the IEEE-SA front
> >
> >
> >
> >While I knew that IEEE had trademarked "WirelessMAN", I was
> >surprised to find the trademark symbol attached to "802.16" (in 12
> >places). I'd like to better understand exactly what the trademark
> >covers. I'm a little confused by the press release's statement that
> >"IEEE Std 802.16, WirelessMAN is a trademark of the IEEE." Exactly
> >what term is trademarked?
> >
> >[By the way, I didn't find "802.16" on the USPTO site
> ><>. (I did, however, find "802" registered to
> >IEEE for "pamphlets of standards and specifications for local and
> >metropolitan area networks", to Wayne Gretzky for hockey equipment,
> >and to the Bose Corporation for loudspeakers).]
> >
> >I would like to voice an objection to one particular use of the
> >trademark symbol in the press release: the reference to our
> >previously-published standard as "IEEE Standard 802.16[TM].2". I
> >request that you reconsider this use of the trademark symbol inside
> >a standard number. I hope that, if you agree with me, you will
> >correct the version on the web.
> >
> >Thanks for all your help in getting the press release out.
> >
> >Roger
> >
>Dr. Roger B. Marks  <>
>Chair, IEEE 802.16 WG on Broadband Wireless Access <
>National Wireless Electronic Systems Testbed (N-WEST) <
>National Institute of Standards and Technology/Boulder, CO
>tel: +1 303 497 3037  fax: +1 303 497 7828