August 28, 2012
Michael Webster, Examining Attorney
USPTO Law Office 102
Commissioner for Trademarks
Re: Trademark Application 85492013, by Salesforce.com using the mark “Social Enterprise”
Dear Examiner Webster:
We note with interest the Examiner’s Office Action of March 13, 2012, stating the initial reasons for rejection of the referenced application. On behalf of our nonprofit organization, Benetech, and the thousands of similarly situated social enterprises in the United States, we are writing to support this rejection. In addition, we hope to supply the Examiner additional information that may be relevant in reviewing this and similar applications in the future. Our goal is to make four critical supporting points:
• The term “Social enterprise” is descriptive.
• “Social enterprise” is generic.
• “Social enterprise” is in wide use in Trademark classes covering computer software and services to business and society.
• The subject application is against the public interest.
1. Social enterprise is descriptive.The term social enterprise is in common use globally to describe enterprises that have a social welfare intent. In the Merriam Webster dictionary definition featured in the Office Action, this is the third meaning of social: “advancing the welfare of human beings in society.” The use of social as an adjective to modify enterprise dates back to at least the 19th century in the writings of Karl Marx (although modern usage does not follow Marx’ usage). The Wikipedia entry on this topic is extensive, and the most common usage in the marketplace is for the socially beneficial flavor of “social enterprise,” not the Salesforce one-year-old marketing campaign.
2. Social enterprise is generic.The widespread use of the term “social enterprise” to describe business undertakings that have a socially beneficial component makes the term manifestly generic. It should be noted that Google has more than five million instances of websites using the phrase “social enterprise.” Universities have programs on learning how to run social enterprises. In doing a Google search on the term, Harvard Business School has an ad listing: “Social Enterprise Programs for Senior Managers. Apply Online,” which leads to a web page
(http://www.exed.hbs.edu/category/Pages/socialenterprise.aspx) with the “Social Enterprise” topic listed between the generic terms as “Real Estate” and “Strategy.” Once universities have courses in a subject area, it would seem clear that the term is quite generic.
Finally, I was a founding board member and a former chair of the Social Enterprise Alliance, a North American industry association made up of more than 500 social enterprises, and the owner of related trademarks in the social enterprise sector. At the time we applied for our much more narrowly drawn trademarks, we and our attorneys thought it inconceivable that anyone could try to baldly own the name of our entire industry.
3. Social enterprise is widely used in classes covering computer software and services.The application purports to claim the trademark “social enterprise” in five areas: computer software, business services, educational services, on-line software and social networking services. Unfortunately, there are literally hundreds of nonprofit social enterprises operating in all of these areas. My organization, Benetech, alone has products and services touching on all of these areas:
• We write the leading software package used for managing conservation projects: Miradi, a standalone software program usable on PCs and Macs, and our Read2Go software is the leading Special Education Literacy software for the iOS platform (for iPhones and iPads)
• We work with multiple third-party social enterprises to convert inaccessible books into digital books, and provide these digital books for publishers as a business service
• Our Route 66 Literacy program is an educational service for teaching reading to developmentally disabled teenagers and adults, and our Bookshare project is the largest on-line library for students with disabilities in the country, serving over 200,000 American students with disabilities with the accessible books they need to succeed in education
• Both Bookshare and Route 66 are online services, commonly known as “cloud computing” solutions
• Our Martus standalone software package helps activists collect information about human rights violations and securely share that information both with trusted partners and the world utilizing storage in “the cloud,” a highly valuable example of social networking software
Benetech is just one small nonprofit organization in the field of Information and Communications Technology, but we have hundreds of peers. For example, there are many just in the area of open source foundations: nonprofit organizations structured as social enterprises writing open source software for the benefit of society, with many examples in each of the five claimed areas.
4. The application is against the public interest.It is not in the public interest to have one for profit company attempt to gain a monopoly over a single generic term in common use. The public interest is served even less when a business entity such as Salesforce attempts to privatize a term predominately used by the nonprofit sector. The great majority of social enterprises are nonprofit organizations dedicated to the social good through employing disadvantaged people, educating students, improving the environment, advancing health care, respect for human rights and so many other beneficial activities.
Thank you for the opportunity to share our concerns and to express our support for the rejection of the application for a trademark on the term “social enterprise.” The social enterprise movement is a global one, so we hope that the measured approach of the USPTO to this application is echoed by peer trademark authorities in other countries. We sincerely hope that this letter supplied information that the Examiner may also find useful in future consideration of trademarks relating to the term “social enterprise.”
James R. Fruchterman
President and CEO