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."

Comments

Incorporate

[chalsall]

Form a tiny non-profit company. Incorporation is simple and cheap. Lawyers are not required (although advised.) IANAL.

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 not start a trademark trust company?

[EvlG]

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?

Cheapest solution

[selectspec]

Come up with a name no one would want. e.g.

• Snaglefootsnout
• Farfenuglenotter
• XP oh wait a sec. That's taken

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:

• Ythnp
• Hprwns
• oiuoiia

Just say you will sell support/copies if desired

[nweaver]

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

Let me clear up some of this --

[Kinjana]

First IAAL -- note the missing "N"

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