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Trademarks For Open Source Projects?
AilleCat asks: "Recently, the Listar Project was asked to stop using the name 'Listar' because of a trademark conflict with a similar commercial product, ListSTAR, which is understandable, however we've come up with a new name, not to be announced quite yet, until we find out how to protect ourselves from a similar thing happening. Seems in order to hold a trademark, the product needs to be used in commerce. Since we are a small non-commercial free software project (core team of 5 members, and a few other developers), we cannot get a trademark. Someone suggested selling burned copies of the software, but I'm wondering if there are any low-cost ways of protecting ourselves from someone naming a commercial product something similar to our new name, that does a similar thing (like in the case of Listar and ListSTAR) and taking it from us. I wonder how many other Open Source projects are in danger of this happening as well."
To follow up on my own post with some additional information
Trademark is like copyright, you can claim it and use it and that is enough to grant you a good degree of legal protection. Sell, for $1, a copy and support for your open source project to a friend, and voila, you have used it in commerce and can now claim a trademark (tm) and/or service mark (sm).
This is generally enough to have staked your flag in the sand, and if you are the first one using it, it should be fine. Things can get messier if someone is also using the trademark, and you both don't know about each other, but otherwise it is generally "good enough" for most purposes.
If you want more protection, you can register your trademark (R). Registering essentially is the US federal government officially approving and granting you the rights for a 10 year period (renewable indefinately). This costs ~$380/mark to file.
More information at US Trademark Basics
Nicholas C Weaver, Winged Rat Consulting
Test your net with Netalyzr
Either that or you should have the right to insist that they don't use a name whose meaning is mainly derived from a product created by you.
Salocin.com
That sounds like it would hurt.
A journey of a thousand miles starts with a brutal anal raping at airport security
First of all, get the Nolo Press book on trademarks. It will answer most of your questions plus a bunch you haven't thought of yet. You can get your own trademark, but if you have a pro do it, it'll cost about $1k. You do not have to sell your product to get a trademark. Sending a CD bearing the mark to someone across the country should pass for commerce.
They stab it with their steely knives,
But they just can't kill the beast.
In a surprising announcement made today by a Microsoft spokesperson, the software giant said that it was filing a lawsuit against the United States Department of Justice, stating that in many of its legagl documents, the DOJ had forgotten to add "those little (TM) signs" behind Microsoft(TM) product names. "We have counted 53,236 violations until now and are continuing to find more," a lawyer for the company(TM) said. "We are suing for USD50K per violation."
Insiders report that Microsoft(TM) will also be filing suit against Linus Torvalds and "the rest of the dang Open Source movement", claiming that they violated fedral trademark and copyright laws by creating an "operating system(TM)(R)(C)."
Why don't you just sell some advertising for other open source projects, and add a -noads option to the configure script? Wouldn't selling advertisements qualify you to be a commercial venture?
If the guy can't get a trademark because he's not engaging in commerce..then how he can he be infringing someone's trademark? TRADEmark? Get it? If he's not engaging in trade..then why would a company using the name complain?
Something doesn't jive..I think he can get a trademark for his project if he wants..
Any lawyers, law students, etc. help with this... people tent to forget that TM and R are not the same.
Just something to consider.
Hi! This is the Sig, blatantly attached to the end of this comment.
Nobody can stop you from using a name that you have been using since before another company trademarked it.
To make it a bit clearer, if you start using FuzzyMole, then next year a company trademarks that name for, let's say, a sex toy, you can still use it and may, in fact, actually own the trademark without ever having to do anything. The trick is usually proving that you've used the name before in a business transaction, advertising, etc.
Where you'll have to be careful is if you get a company that argues that you have not used the name in a business transaction because you don't sell a product. You'll have to argue that while money isn't being exchanged for your product everyone does get value from developing it.
I recommend that you register as a company just to give you more power.
The global economy is a great thing until you feel it locally.
Said company files for the trademark -- meets commerce requirements. Company immediately opens the codebase, "business" as usual.
This is also handy if inforcement of the trademark is needed in the future, as the company already exists to act as the party being harmed for the complaint. Trademarks not enforced are not held.
Why doesn't someone start a sort of trust company for trademarks for OSS, so that a group can have the advantage of a group that can fight for the trademark's protection without having to waste time that could be better spent coding?
Pay this group a small fee, and they protect the trademark for you. Plus then they could package up the burned CDs needed to qualify as "use in commerce", and the developers wouldn't have to worry.
Is there a reason something like this hasn't been done yet, or a reason it can't be done now?
Also, be sure not to use the words "One" or "Net" in your product. Avoid lowercase vowel prefixes. Definetly don't begin your project with the letter 'J'. Try long phrases or even complete sentences. No one would call something, "Dogs barking wind server outside." Another cool trick is to make up unpernoucable names like:
Someone you trust is one of us.
Just say you will sell support/copies if desired, so that there IS the potential for commerce. That is all you need to say, and you get a trademark.
You WILL have to do some things to protect the trademark, but that should mostly be a straightforward manner of sending a nastygram to anyone else, and just writing an appendix to your open source liscence stating something like "Name X is a trademark of the X Group. Permission is given to use this mark in conjunction with this software, and software which is compatable with the protocols defined by Name X, if this trademark is acknowledegd, etc etc etc".
IANAL, YMMV
Nicholas C Weaver, Winged Rat Consulting
Test your net with Netalyzr
Under Section 45 of the Trademark Act, 15 U.S.C. 1127, defines "commerce" as "all commerce which may lawfully be regulated by Congress." Section 45 defines "use in commerce" as follows:
The term "use in commerce" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this Act, a mark shall be deemed to be in use in commerce--
(1) on goods when--
(a) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
(b) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
From this it should be clear that engaging in some kind of trivial sale solely for the purpose of registering is inadequate. It should also be seen however, that ongoing sales is not required either.
To "use" the new name "in commerce" sufficient for registration providing a web page with the software for download should be sufficient -- and when I download and install the software it displays (or associates) the mark with the software -- this is sufficient to meet the use requirement--
In addition, the sin qua non of trademark rights is use -- If you have a new mark that you want to make yours, and you've confirmed that it's avalable (don't go offering your kodak brand open source project) USE IT! And mark it as such that you are claiming rights Mark(TM) Open sourcde software -- There is no requriement that you register your trademark but there are clear benefits to doing to.
If you have further questions regarding availability and the registration processlet me know --
Kinj