Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA180433
`ESTTA Tracking number:
`12/12/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91121040
`Plaintiff
`OSHO FRIENDS INTERNATIONAL
`MARK I. FELDMAN
`PIPER MARBURY RUDNICK & WOLFE
`P.O. BOX 64807
`CHICAGO, IL 60664-0807
`UNITED STATES
`Brief on Merits for Plaintiff
`Gina L. Durham
`gina.durham@dlapiper.com, ch.tm@dlapiper.com, mark.feldman@dlapiper.com
`/gina durham/
`12/12/2007
`Trial Brief of Opposer-Petitioner.pdf ( 55 pages )(1374173 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`____________________________________-X
`
`OSHO FRIENDS INTERNATIONAL,
`
`Opposer.*'Petitione1‘,
`
`V.
`
`:
`:
`'
`:
`:
`'
`
`Opposition No. 91 121040
`Opposition No. 91 150372
`Opposition No. 91150379
`Opposition No. 91152313
`Opposition No. 91153103
`Opposition No. 91155927
`Opposition No. 91157465
`Opposition No. 91157610
`Opposition No. 91157698
`Cancellation No. 92031932
`
`OSHO INTERNATIONAL FOUNDATION,
`
`(as consolidated)
`
`App1icaJ1tfRespondent.
`
`------_-___-______---_--_--__--__-_----_-__-..-----_--__---_.x
`
`TRIAL BRIEF OF OPPOSER/PETITIONER
`
`

`
`TABLE OF CONTENTS
`
`P_-329
`
`1.
`
`II.
`
`III.
`
`IV.
`
`STATEMENT OF THE ISSUE ....................................................................................... .. 5
`
`PRELIMINARY STATEMENT ..................................................................................... .. 5
`
`DESCRIPTION OF THE RECORD ............................................................................... .. 7
`
`FACTS ..................................................................
`
`......................................................... .. 9
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Man Known As Osho and The Osho Movement ......................................... .. 9
`
`The Little Center That Wanted To Grab It All ......... .. ....................................... .. 13
`
`OIF’s Pm-ported Licensing of the “Osho” Name to Prior Users of “Osho” ...... .. 17
`
`The Instant 0ppositiom’Ca11ce11ation Action ..................................................... .- 22
`
`V.
`
`ARGUMENT ................................................................................................................. .. 25
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Friends’ Standing In This Matter ....................................................................... .. 25
`
`Osho is Not a Trademark ................................................................................... .. 27
`
`Osho is Genetic and Descriptive........................................................................ .. 28
`
`Osho Is Abandoned ............................................................................................ .. 37
`
`OIF’s Applications and Registrations Are Invalid on Fraud and Void ab
`Initio Grounds .................................................................................................... .. 44
`
`VI.
`
`OTHER CONSIDERATIONS ....................................................................................... .. 52
`
`VII.
`
`CONCLUSION .............................................................................................................. .. 53
`
`CHGOl\3l 1040165
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`TABLE OF AUTHORITIES
`
`Cases
`
`Barcarnerica Int 7 USA Trust v. Tyfield Importers, Inc., 289 F.3d 589, 62 USPQ2d 1673
`(9t11 Cir. 2002) ......................................................................................................................... .. 42
`
`Baskin-Robbins Ice Cream Co. v. Pillsbury Co., 1 USPQ2d 1223 (N.D. Tex. 1986) ................ .. 38
`
`Brandwynne v. Combe Int ’l Ltd, 74 F.Supp.2d 364 (S.D-N.Y. 1999) ....................................... .. 28
`
`Christian Science, Board ofDirectors ofthe First Church ofChrist, Scientist v. Evans,
`2 USPQ2d 1093 (N.J. 1987) ............................................................................................. .. 31, 35
`
`Circus Foods, Inc. v. Frank Herfort Canning Co., Inc., 110 USPQ 501
`(C0mIn’r Pats. 1956)............................................................................................................... .. 52
`
`Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385 (TTAB 1999) ................. .. 29
`
`Daesang Corp. v. Rhee Bros. Inc., 77 USPQ2d 1753 (D. Md. 2005) .................................. .. 44, 45
`
`Dawn Donut v. Hart ’s Food Stores, Inc., 267 F.2d 358, 121 USPQ 430 (2d Cir. 1959) ........... .. 43
`
`Ditri ’v. Coldwell Banker Residential Afliliates, Inc., 954 F.2_d 869 (3d Cir. 1992) ................... .. 42
`
`First National. Bank ofOmaha v. Autoteller Systems Service Corp., 9 USPQ2d 1740
`(TTAB 1988) .............................................................................................................. .. 38, 39, 42
`
`Giant Food, Inc. Standard Terry Mills, Inc., 229 USPQ 955 (TTAB 1986) .............................. .. 45
`
`Great Seats Ltd. V. Great Seats Inc., 84 USPQ2d 1235 (TTAB 2007) ...................................... .. 51
`
`Hargio v. Pro Football, 30 USPQ2d 1828 (TTAB 1994) .................................................
`
`......... .. 26
`
`Huang v. T2:: Wei Chen Food Co. Ltd, 849 F.2d 1458; 7 USPQ2d 1335 (Fed. Cir. 1988) ......... 51
`
`In re Audio Book Club Inc., 52 USPQ2d 1042 (TTAB 1999) ...................................................... 29
`
`In re First Draft, Inc.,_ 76 USPQ2d 1183 (TTAB 205) ............................................................... .. 49
`
`In re Gould Paper Corp, 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) ....................... .. 28, 29
`
`In re Lavelle Russie Inc., 60 USPQ2d 1895 (TTAB 2001) ........................................................ .. 35
`
`In re Leatlierman Tool Group, Inc-., 32 USPQ2d 1443 (TTAB 1994) ....................................... .. 34
`
`In re MCI Communications Corp, 21 USPQ2d 1534 (Comm’r Pats. 1991) ............................. .. 29
`
`In re Nortlzland Aluminum Products, Inc., 777 F.2d 1556,_ 227 USPQ 961 (Fed. Cir. 1985) .... .. 34
`
`In re Recorded Books, Inc., 42 USPQ2d 1275 (TTAB 1997) .................................................... .. 28
`
`In re Steellna’lding.com, 415 F.3d 1293, 75 USPQ2d 1420 (Fed. Cir. 2005) ............................. .. 28
`
`In re Sun Oil Company, 426 F.2d 401, 165 USPQ 718, (CCPA 1970) ........................................ 35
`
`Jewelers of Vigilance Committee, Inc. v. Ullenberg Corp, 823 F.2d 490,
`2 USPQ2d 2021 (Fed. Cir. 1987) ........................................................................................... .. 26
`
`Orient Express Trading company, Ltd. v. Federated Department Stores, Inc.
`842 F.2d 650, 6 USPQ 2d 1308 (2d Cir. 1988) ...................................................................... .. 45
`
`C]-IG0l\3l104016.5
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`3
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`

`
`Pilates Inc. v. Current Concepts Inc., 57 USPQ2d 1174 (S.D.N.Y. 2000) ......................... .. passim
`
`Primal Feeling Center ofNew England, Inc. v. Janov, 201 USPQ 44 (TTAB 1978) ................ .. 36
`
`Setf-Realization Fellowship Church v. Ananda Church ofSelf"-Realization,
`59 F.3d 902 (9th Cir. 1995) .............................................................................................. .. 3.2, 3'?
`
`Smith International, Inc. v. Oiin Corp., 20-9 USPQ 1033 (TTAB 1981) .................................... .. 51
`
`T.A.D. Avanti, Inc. v. Phone~Mate, Inc., 199 USPQ 648 (CD. Cal. 1978) ................................ .. 45
`
`Ihe American Montessori Society, Inc. v. Association Montessori Internationale,
`155 USPQ 591 .........................
`............................................................................................. .. 35
`
`TMTNorth America, Inc. v. Magic Touch GmbI-I, 124 F.3d 876 (7th Cir. 1997) ........................ 47
`
`Torres 1?. Cantine Torreseiia S. r. 3., 808 F.2d 46, I USPQ2d 1483 (Fed. Cir. 1986) .................. .. 44
`
`U.S. Media Corp. v. Edde Entertainment, Inc., 40 USPQ 2d 1581 (SDNY 1996) .................... .. 39
`
`Yocum v. Covington, 216 USPQ 210 (TTAB 1982) ....................................................... .. 37, 42, 43
`
`
`Statutes
`
`15 U.S.C.§ 1051(a)(1) ................................................................................................................ .. S1
`
`15 U.S.C. § 1064(3) .................................................................................................................... .. 44
`
`15 U.S.C. § 1127 ............................................................................................................. .. 27, 37', 38
`
`15 U-S.C. §1051(1) ..................................................................................................................... .. 45
`
`15 U-S.C. §1126(e) ..................................................................................................................... .. 45
`
`37 C.F.R. § 2.21 .......................................................................................................................... .. 51
`
`Treatises
`
`2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair‘ Competition § 18:4 ..................-. 47
`
`3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 20:10 ................ .. 26
`
`CHCi01\3lI040l6.5
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`1. STATEMENT OF THE ISSUE
`
`The term Osho is not — and never was — the identifier of a. single source.
`
`Indeed, the
`
`classic indicators of trademark status are missing here:
`
`the term was coined and adopted by
`
`someone else,
`
`it was used by numerous
`
`third parties before or at
`
`the same time
`
`App1icant;'Registrant began using it, and many of those third parties continue to use the term to
`
`this day in an independent uncoordinated manner without central control.
`
`ApplicantfRegistrant is merely one small group of individuals involved in a spiritual
`
`movement created by the man, Osho, that is seeking to control the name Osho which has been
`
`used independently and. without coordination by thousands of other people of that movement. At
`
`issue in this case is whether that tenn Osho is free for use by all or whether one group can
`
`attempt to hijack -that term as its own.
`
`More specifically,
`
`the issue is whether App1icanURegistrant Osho International
`
`Foundation, a Switzerland based organization (hereinafter “0IF”), is the sole genuine source of
`
`meditations, books, and other educational services and products based upon the teachings of
`
`Osho.
`
`Opposer;’Petitioner Osho Friends Foundation (“Friends”), an association whose
`
`membership is comprised of Osho lovers and centers from around the world who have been
`
`fimctioning independently for decades, asserts that OIF does not have exclusive rights in the
`
`purported Osho marks which are at issue in this proceeding, and thus the applications and
`
`registrations should be refused and cancelled on the bases of genericness, abandonment,
`
`descriptiveness, fraud and because they are void ab initio.
`
`II. PRELIMINARY STATEMENT
`
`The notion that OIF could be the sole genuine source of all of the offerings that have
`
`grown out of the Osho movement is preposterous. Trademark rights are only conferred when the
`
`public recognizes a term as identifying a single source of goods andfor services. Osho could
`
`Cl-lGOl\3l 1040165
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`5
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`never be a single source identifier for one entity because,
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`long before OIF attempted to
`
`appropriate the Osho name for its own trademark, Osho encouraged the open and uncontrolled
`
`use of his name by many independent entities and individuals to facilitate the spread of his
`
`teachings throughout the world. OIF cannot now manufacture prima facie exclusive rights in the
`
`name by seeking trademark registrations for Osho from the United States Patent and Trademark
`
`Office (“PTO”).
`
`Osho was a man who traveled through numerous countries giving discourses and
`
`introducing his meditations. Osho’s teachings promote seltlenlightenment, being yourself, and
`
`living life independent from formal hierarchical organizations. Osho encouraged the people
`
`around him to spread his teachings as broadly as possible. This was done in a number "of ways,
`
`but primarily these people transcribed his discourses into written format to make books, made
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`audio or video recordings of his discourses, and opened Osho centers where they offered
`
`meditations and shared Osho books, audios, and videos. The Osho centers’ activities, while
`
`based on the teachings of Osho, all differ because the nature and type of those activities
`
`originated from each local center, and not centrally. People from all over the world, including in
`
`the United States, engaged in these activities through local centers.
`
`Later, however, one small center -— OIF ~ set its sights on seeking out lucrative publishing
`
`agreements for Osho’s works and apparently concluded that it could profit by asserting that it
`
`had the exclusive rights to distribute Osho goods and services. These claims of unqualified
`
`exclusive rights required 01F to take the implausible position that it was the assignee of a_ll
`
`copyrighted works of Osho and that a_ll of the various other organizations who had already been
`
`using Osho’s name for many years to spread his teachings were OlF’s licensees.
`
`OIF’s primary witness, Klaus Steeg, who became involved with OIF in the mid 903,
`
`years after Osho’s death, provides vague conclusory testimony about OIF’s claimed acquisition
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`CHGOl\31l040]6.5
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`of rights in Osho’s. works and its purported worldwide control of Osho centers, books, audios,
`
`etc. However, OIF's testimony lacks credibility because (1) it is not based on any personal
`
`knowledge of Mr. Steeg, (2) it is wholly unsupported by documentary evidence, and (3) leaders
`
`of Osho centers from across the United States testified that they had never been controlled by
`
`anyone, let alone OIF, throughout their years of efforts to offer Osho meditations, teachings and
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`other products based on those teachings.
`
`Indeed, the efforts by the local centers were made in
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`honor of Osho’s wishes that his teachings be spread as broadly as possible and not because of
`
`anything done by OIF.
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`As such, Osho is far from a single source identifier for OIF. Nevertheless, OIF has filed
`
`the applications and registrations that are the subject of this. proceeding in an ill—conceived
`
`attempt to misappropriate history for personal gain.
`
`III. DESCRIPTION OF THE RECORD
`
`The record consists of:
`
`(1)
`
`the pleadings;
`
`(2)
`
`(3)
`
`(4)
`
`(5)
`
`(6)
`
`(7)
`
`(8)
`
`(9)
`
`the files of the applications and regstrations subject to the oppositions and petitions to
`cancel;
`
`testimony" deposition of Prabhat Tiwari, leader of an Osho center in Maryland;
`
`testimony deposition of Rachael Freeman, board member of an Osho center in Colorado;
`
`testimony deposition of Sirlea Naster, leader of an Osho center in North Carolina;
`
`testimony deposition of Gloria Terhaar, leader of an Osho center in California;
`
`testimony deposition of Leonard Rosanslcy, leader of an Osho center in California;
`
`testimony deposition ofPriya Hemenway, officer of an Osho center in California;
`
`testimony deposition of Maniko Dru Dadigan, an individual in California associated with
`a number of Osho centers;
`
`(10)
`
`the testimony deposition of Atul Anand, a trustee of Petitionerx’Opposer;
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`CHG0l\3ll{J40l6.S
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`(11)
`
`(12)
`
`(13)
`
`(14)
`
`(15)
`
`(16)
`
`Petitionerr'0pposer Friends’ First Notice of Reliance on (a) OlF’s responses to Friends’
`Second Request for Admissions;
`(b) OIF’s response to Friends" First Request for
`Admissions
`(selected admissions);
`(c) OIF’-s
`answer
`to Friends’ First Set of
`Interrogatories; (d) OIF’s answer to Friends" First Request for Production of Documents;
`(e) selected pages of deposition transcript of Klaus Steeg; and (f) selected pages of
`deposition transcript of D’Arcy O’Bryne;
`
`Petitionerx’0pposer Friends’ Second Notice of Reliance on several Nexis articles with
`generic use of Osho;
`
`Petitioner!Opposer Friends’ Third Notice of Reliance on certified copies of official
`records from Copyright Office;
`
`Petitioner/Opposer Friends’ Fourth Notice of Reliance on excerpts from books containing
`quotes from Osho (submitted on rebuttal");
`
`PetitionerfOpposer Friends’ Fifth Notice of Reliance on public records on file with the
`Arizona Secretary of State regarding the American Multi-Media Corporation (submitted
`on rebuttal);
`
`PetitionerfOpposer Friends’ Sixth Notice of Reliance on additional selected pages of
`discovery deposition Klaus Steeg (submitted on rebuttal) ;_
`
`(17)
`
`testimony deposition of Klaus Steeg, director of Registrant/Applicant OIF ;
`
`(13)
`
`testimony deposition of Ursula Hoess, witness on behalf of Registrantmpplicant OIF;
`
`(19)
`
`testimony deposition of John Andrews, witness on behalf of RegistrantfApp1icant OIF;
`
`(ZCD
`
`testimony deposition of David Alexander, witness on behalf of Registrantlrkpplicant OIF;
`
`(21)
`
`(22)
`
`(23)
`
`Registrant!Applicant OIF’s First Notice of Reliance on (a) Friends" Responses to OIF’s
`First Set of Interrogatories;
`(b) Friends’ Responses to OIF’s Second Request
`for
`Admissions; (c) discovery deposition of Atul Anand; and (cl) discovery deposition of
`Chaitanya Keerti.
`
`Registrantr'Applicant OIF’s Second Notice of Reliance on numerous publications,
`dictionary definitions, and USPTO TESS Printouts;
`
`Registrantmpplicant OIF’s Third Notice of Reliance on certified copies of registrations
`subject to the. instant petition to cancel;_ and
`
`(24)
`
`Registrant/Applicant OIF’s reliance on several Osho Times magazine covers.
`
`Friends respectfully submits that the Board should not consider certain testimony and
`
`exhibits submitted by OIF during the testimony phase that consist of inadmissible hearsay, are
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`CHGOI\3Il04IJ16.5
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`not premised on personal knowledge or properly laid foundation, andfor suffer from other
`
`evidentiary defects. As appropriate, Friends repeatedly objected to the introduction of these
`
`materials during the relevant depositions and now maintains these objections.
`
`Friends’
`
`evidentiary objections to such testimony and exhibits" are set forth in a separate statement filed
`
`concurrently herewith.
`
`IV. FACTS
`
`A. The Man Known As Osho and The Osho Movement
`
`The person who later became known as Osho was born in India in 1931 as Rajneesh
`
`Chandra Mohan.
`
`[Answer to Amend Pet. To Cancel '|l1]
`
`In 1971, he changed his name to
`
`Bhagwan Shree Rajneesh and in 1989 became known as Osho after having dropped all names for
`
`a period of time.‘
`
`[Id.; Friends’ Sixth Not. Of Reliance (NOR), Discovery Dep. of Steeg at 102:,
`
`18-21] Osho was against organisation because of its hierarchy.
`
`[Friends’ 4th NOR, Doc. 4]
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`Instead, Osho encouraged self-discovery, taking responsibility for one’s own life, and continued I
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`self-awareness through meditation.
`
`[Dadigan 40:1-7; Terharr 4:11-14; Tiwari 4:4-8] Today,
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`Osho is referred to in a number of encyclopedias and in the general media as a category of
`
`religious or spiritual movement, just as is Budhism or Paganism.
`
`[Friends’ 2nd NOR, Docs. 1-
`
`14]
`
`The Osho movement’s beginnings go back to the 19605, when Osho traveled all over
`
`India to give discourses and introduce his meditation techniques.
`
`[Answer to Amended Pet. to
`
`Cancel 1[1l 3, 5] During his travels, Osho developed a significant following of individuals who
`
`believed in an_d were inspired to spread his teachings.
`
`[Answer to Amended Pet. to Cancel 111] 5,
`
`7] These individuals are commonly referred to as sannyasins.2 According to a number of
`
`sannyasins who testified in this proceeding, becoming a. sannyasin has a meaning of “self-
`
`' Osho was chosen by the people around Osho. [0IF’s lst NOR, Discovery Dep. of Keerti Q.36.]
`3 Individuals take on a new “sannyas.” name when they become sannyasins.
`[See, e.g. Naster 4:15-5:4]
`
`CHGOl\3ll040l6.5
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`9
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`discovery to enlightenment,” [Tiwari 4:4-8] “live each day in celebration, taking responsibility
`
`for [one’s] life,’’ [Naster 4:18-20] and “to live [one’s] own truth, to live courageously, take,
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`risks...” [Terhaar 4:9-1 1].
`
`In 1974, Osho moved from Bombay to Pune, India, where he established an Ashram
`
`(“place of learning”) dedicated to meditation and self discovery.
`
`[Answer to Amend Pet. To
`
`Cancel 112] Between 1981 and 1985, Osho and a number of his people moved to the high desert
`
`of eastern Oregon, on a 126-square-mile former cattle ranch organized as a commune.
`
`[Answer
`
`to Amend Pet. To Cancel {[4] By 1987, Osho had returned to India, to live again in Pune where
`
`another commune formed around His teachings.
`
`[Answer to Amend Pet. to Cancel '||7; Friends’
`
`1st NOR, Discovery Dep. of Steeg at 87:11-25; Friends 6th NOR, Discovery Dep. of Steeg at
`
`88:1-12] The Pune commune was and is a combination of a number of properties and entities
`
`through which Osho programs are offered.
`
`[Friends’ 1st NOR, Discovery Dep. of Steeg at
`
`87: 1 1-.8829] It is not a single corporation or a board or a trust that has board members or officers
`
`ofi°ering goods or services from a single source.
`
`[Friends" lst NOR, Discovery Dep. ofi Steeg at
`
`87:11-25; Friends’ 6th NOR, Discovery Dep. of Steeg at 88:1-12] Rather, over 10 different
`
`separate and independent entities operate in the Pune commune.
`
`[Steeg 603:22-604:10] Osho
`
`remained in Pune until his death in 1990.
`
`[Friends’ 6th NOR, Discovery Dep. of Steeg at 88:2-3;
`
`Answer to Amend. Pet. to Cancel 11 6]
`
`Although Pune, India is naturally a place where many Osho meditation centers are
`
`located and programs are offered, due to Osho’-"s long residence there, Osho urged his people to
`
`spread his teachings as broadly as possible.
`
`[Hemenvvay 13:17-14:7; Friends’
`
`lst NOR,
`
`Discovery Dep. of Steeg at 99:3-11] Osho’s people did this in a number of ways. Many of his
`
`people transcribed and/or recorded his discourses to share with others.
`
`[OIF’s lst NOR Doc. 4,
`
`Discovery Deposition of Keertzi at Q 84-87; Hemenway 8:5~20; Terharr 39:18-25; Freeman
`
`cHoo1\311o4o1s.s
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`10
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`31:11-19] For example, one U.S.-based center leader testified that when she visited Osho in
`
`Pune in 1978, she brought 200 audio tapes to -record Osho discourses.
`
`[Naster 42:8—l5] Also,
`
`meditation centers and camps in different parts of the world emerged around Osho’s teachings.
`
`[See Answer to Amend Pet. to Cancel 1]5] Many of His people opened their own centers in their
`
`home countries, through which they offered and continue to offer the meditations that Osho
`
`promoted,
`
`including active meditations such as kundalini and nadhabrama, as well as other
`
`techniques of their choosing such as tai chi.
`
`[Naster 27:3-24:5, 30:1-8 Tiwari 9:9-92:7; Dadigan
`
`14:15-15:7, 114:2:ll6:l8; Rosansky 11:17-23; Freeman 8:25-9:18; Terharr 7:16-9:16] They
`
`have independently and separately created and offered their own variation of celebration events,
`
`music and cultural events, and educational and therapeutic courses, workshops, groups, retreats,
`
`etc, based on ideas espoused by Osho.
`
`[Id.] Some centers also have offered -andfor do offer their
`
`own ad hoc publications, recordings, and newsletters and have done so without coordination
`
`from any central church or hierarchy.
`
`[Rosansky 2331-24, 77:6-16; Dadigan 14:7-14, 21:3-ll;
`
`Freeman 10:22-11:10; Terharr 45:6-16; Naster 41 :23 -42:3] With the advent of the intemet, local
`
`centers also started operating websites.
`
`[Freeman 13:13-14:25; Rosansky 16:13-19, Hemenway
`
`100:1-9, Terharr 17:15-18:4, Naster 50:9-18] Again,
`
`these were created, managed and
`
`disseminated without coordination from or by a single source. [Id.]
`
`In gratitude for his people opening the centers, Osho gave each center a name as a gift
`
`and a one-page certificate bearing the center's name.
`
`[Hemenway 13:17-14:7; Naster 22:21-
`
`22:3; Terhar 35:21-25] For example, Osho gave Shirlea Naster, who runs a center in North
`
`Carolina the name Rajneesh Dhannadip Meditation Center when she personally met with Him in
`
`India.
`
`[Naster 5:1-2, 6:5-17, 21:8-10]
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`Similarly, Osho gave the names Deepta Rayneesh
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`Meditation Center and Padma Meditation Center.
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`[Dadigan 86:24-87:14; Terharr 6:8-16] The
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`evidence explicitly shows that Osho never controlled the centers nor did he create any sort of
`
`cHGo1\311o4om.5
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`11
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`

`
`legal hierarchy to supervise or control the centers.
`
`[Tiwari 11:7-17; Dadigan 39:16-19, 40:11-
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`21; Hemenway 43:9-44:4; Rosan-sky 8:16-19; Freeman 12:9-11]
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`In fact, such control would
`
`have been contrary to the independent spirit of sannyas.
`
`[Dadigan 36:4-8; Hemenway 41:19-
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`42:21]. When the leader of one U-S. center was asked to describe her center, she testified:
`
`“Well, I don’t think that it’s really controlled. It’s just -it’s something
`that was to us as a gift from Osho. And we just allow it to happen. And I
`don’t really see it as being under anyone’s control, not even Osho. Because
`I don’t --— I don’t --— I never saw him as being in favor of any type of
`control, just al1o_wing the moment.” [Naster 13 :2-9]
`
`Another U.S. center leader emphasized the independent and decentralized nature of the centers,
`
`describing his center as a place that “experiments with different meditation techniques,” [Tiwati
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`7:15-16] and yet another leader testified that Osho had not restricted his meditation techniques,
`
`but “gave them to us, these were his gift to us.” [Tiwari, Hemenway 12:20-18] Another center
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`leader confirmed that she had her own interpretation of Osho’s teachings.
`
`[Freeman 67:3—68:1;
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`Dadigan 53:19-54:15; Rosansky-47:15-48:12]
`
`For example, the independence and lack of control over centers is demonstrated by each
`
`0611161’:
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`0 Controlling the nature of their own offerings — deciding what will be
`offered on any given day [Tiwari 10:3-9; Naster 7:1-ll; Freeman 10:4-
`11:22; 14:11-24; Terhaar 10:17-11:20]
`
`I Making their own decisions about how, where and when they will promote
`their offerings without input or approval from anyone else [Tiwari 12:16-
`20;Naster 18:13-19:8; Freeman 12:23- 17:3; Terhaar 17:15- 18:14]; and
`
`o
`
`Independently deciding the times and location of offerings [Tiwari 9: 16-9;
`Naster 8:12-9:8]
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`Osho did, however, ask one thing of these centers in 1989. Having changed His name
`
`fnom Rajneesh to “Osho," Osho asked that the centers use Osho in their names “so people would
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`know [they were] Osho centers.”
`
`[Friends’ 4th NOR, doc. 5] Many centers immediately
`
`changed their names following Osho’s request.
`
`[Friends 1st NOR, Discovery Dep. of Steeg at
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`Cl-IGOl\3ll040l6.5
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`

`
`99:7-101:12] For example, Rajneesh Dharmadip Meditation Center changed its name to Osho
`
`Dharmadip Meditation Center [Naster 6:14-17], Viha Rajneesh Meditation Center changed its
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`name to Osho Viha Meditation Center [Rosanky 11:10-16], and Padma Rajneesh Meditation
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`Center changed its name to Osho Padmad Meditation Center. [Terharr 642-12] The record
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`reveals, though, that one center in Europe--- the App1icantx'Registrant in this opposition-- did not
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`change its name right away. [Steeg 10:8-11]
`
`B. The Little Center That Wanted To Grab It All
`
`App1icantfReg;istra11t OIF was founded with the name “Rajneesh Foundation Europe” in
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`1984.
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`[Steeg 9:10-18] OIF’s director admitted that Rajneesh Foundation Europe’s activities
`
`were “limited and small” focusing only on making Osho’s teachings available in Europe.
`
`[Steeg
`
`Testimony Tr. 9:13-10:17; 14:20-23] Rajneesh Foundation Europe, however, had aspirations of
`
`building a large commercial publishing operation and marketing transcriptions. of Osho’s
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`discourses to major book publishers such as Random House and St. Martin’s Press.
`
`[Steeg
`
`105:8-25]
`
`After Osho died in 1990, Rajneesh Foundation Europe changed its name to “Osho
`
`International Foundation.”3 [Friends’ 1st NOR, Steeg Discovery Dep. at 111, 9-15] Using its
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`new official-sounding name, OIF also began filing for copyright registrations from the United
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`States Copyright Office and for trademark registrations for the term “Osho” from the United
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`States Trademark Office. [See application for Reg. # 1815840]
`
`The copyright
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`registrations were not
`
`for books that 01F had itself authored or
`
`commissioned. Rather, they were books of Osho’s discourses that had been transcribed and
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`edited by many volunteers who followed Osho throughout his life.
`
`[OIF’s 1st NOR doc. 4,
`
`Discovery Dep. at Q 84-87; Hemenway 8:5-20; Terharr 39:18-25; Freeman 31:11-91]
`
`3 In between “Rajneesh Foundation Europe” and “Osho International Foundation," OIF also used the name Neo-
`Sannyas International Foundation. [Steeg 9: 19-25]
`
`canons] 1040155
`
`13
`
`

`
`Nonetheless, OIF entered itself as copyright “claimant” by way of a purported “assignment” in
`
`the copyright application forms and recorded a number of documents with the Copyright Offi-ce
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`that OIF claims constitute the assignment. [Steeg SS 1 :21-5 53:3 and Exhibits 3 and 86]
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`The documents on file with the Copyright Office, however, do not convey any ownership
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`interest in Osho’s works to OIF, nor does any other document produced by OIF.
`
`[Steeg Exhibits
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`3 and 86] The document that OIF’s director claimed during his testimony deposition to be the
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`document that assigns Osho’s copyrights to OIF turns out to be nothing_ more than a self-serving
`
`cover sheet he,
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`hz'm.se._lfi prepared and filed with the Copyright Office claiming that an
`
`assigmnent of rights had taken place and a photocopy of a conditional J agreement to an
`
`India center purportedly from Osho to publish some of Osho’s works.
`
`[Steeg 5S1:2l—5S3:3, and
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`Exhibits and 86] Moreover, the record reveals that OIF is not the only entity to have claimed to
`
`own all of the copyrights in all of Osho’s works. At least two entities located in India (who OIF
`
`has never claimed were its predecessors in ‘copyright ownership) have also claimed ownership in
`
`Osho’s works. For example, in a September 25, 1987 publication called the Rajneesh Times, an
`
`entity name Rajneeshdham claimed that “all photographs and text of Bhagwah Shree
`
`Rajneeshame copyrighted by Rajneeshdham.”
`
`[Friends’ 4th NOR doc 8 (at p. 2)].
`
`Tao
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`Publishing has also claimed to own the same—-- “all photographs and text of Osho are
`
`copyrighted by Osho Publishing Pvt. Ltd.” [Steeg Ex. 45 (at p. 2) Friends’ 4th NOR doc. 6 (at p.
`
`2)]. Thus, there are numerous claimants who have tried to gab a piece of the Osho commercial
`
`opportunity for themselves in derogation of the rights of others who had ‘dedicated themselves to
`
`fieely spreading 0sho’s teachings.
`
`Like the copyright registrations, the trademark registrations that OIF filed in the U.S. also
`
`were not for any marks that OIF had itself coined or adopted as first user. [OlF’s lst NOR doc 4,
`
`Discovery Dep. of Keerti at Q. ll-28] Rather, OIF has filed applications for “Osho” for goods
`
`-CHG0l\3l 1040165
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`14
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`

`
`and services that had already been used by many others in a descriptive and nominative fashion
`
`as common parts of the Osho movement --- books, “providing religion and philosophy” via
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`various mediums, and “educational "services, namely, conducting individual sessions, workshops,
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`retreats, seminars, groups’.-’-’
`
`[See Reg. Nos. 1,815,840; 2,174,607; 2,180,173 and Serial No.
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`75,683,097]
`
`In some cases, OIF’s applications combine the term Osho with common words
`
`descriptive of things within the Osho movement (e.g. “active meditations”), but OIF has
`
`confirmed that it is really only the word “Osho” for which it is seeking exclusive rights through
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`registration, acknowledging “OlF’s willingness, if required by the T.T.A.B., to disclaim any non-
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`OSHO portion of these compound marks that OIF has not already disclaimed.”
`
`[See OIF’s
`
`Memorandum ‘of Law In Support of Osho International Foundation’s Motion For Summary
`
`Judgment at p. 5-6, fn. 3]
`
`The specifics of OIF’s United States applications and registrations that are the subject of
`
`this consolidated action, are as follows:
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`
`
`
`
`Goodsfservices
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`
`
`
`
`
`
`
`
`
`
`
`
`
`Date Filed I
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`Re 'stered
`Filed: 1-7-92
`Education books and printed
`
`Registered: 1-1 1-
`teaching materials in the field of
`
`94
`religion and philosophy
`Filed: 3-17-97
`Providing religion, philosophy and
`Registered: 7-21-
`science information via a global
`98
`computer network
`Filed: 3-17-97
`Prerecorded audio and video tapes
`Registered: 8-1 1-
`in the field of religion, philosophy
`98
`and science
`Filed: 12-12-97
`Books and printed materials for
`
`Registered: 2-29-
`education purpose in the filed of
`
`
`00
`reli ,-_ 'on and hilosohy
`
`Filed: 4-15-99
`Educational services, namely,
`
`conducting individual sessions,
`
`workshops, retreats, seminars,
`groups, course training in the field
`of the teachings of the Mystic
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`
`
`
`
`
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`CHGOl\3lI040l6.5
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`'
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`15
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`
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`Mark
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`OSHO
`
`OSHO
`
`OSHO
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`Serial/Reg.
`o.
`N
`Reg.
`#1815840
`
`Reg.
`#21 74607
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`Reg.
`#2 1 801 73
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`OSHO
`REBALANCING
`
`Reg.
`#2322901
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`OSHO
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`Ser.
`#75683097
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`

`
`OSHO ACTIVE
`MEDITATIONS
`(disclaiming “active
`mediations”)
`
`OSHO
`KUNDALINI
`MEDITATIONS
`(disclaiming
`“