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Trademarks For Open Source Projects?

Cliff posted more than 13 years ago | from the protecting-oneself-from-needless-litigation dept.

The Courts 142

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."

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a *servicemark* (1)

Anonymous Coward | more than 13 years ago | (#426286)

IANAL, however, you SHOULD qualify for a *servicemark* which is exactally the same as a trademark, except for a product that engages in no commerce...

So this is right and SSH is wrong??? (1)

Anonymous Coward | more than 13 years ago | (#426287)

Wait a minute here... /. gets in a tizzy about SSH complaining about OpenSSH; but they want to be able to use the same law against a corp.

Hmmm... that seems a bit two-faced, I'm against it when it favors the company, but I'm for it when it is against a company. What's it going to be? If OpenSSH isn't be a problem for SSH, then nobody can bitch when a company makes a product and names it samba2. If people wan't to prevent a company from advertising a commercialy named "samba2" product, then OpenSSH will probably need to make some consessions to the SSH guys.

Why? (1)

pb (1020) | more than 13 years ago | (#426288)

Why can't one of you (or someone you trust) trademark it?

I'm not too familiar with the law, but I know I've seen trademarks for such projects.

"Linux is a trademark of Linus Torvalds"
---
pb Reply or e-mail; don't vaguely moderate [ncsu.edu] .

Easy (1)

Hallow (2706) | more than 13 years ago | (#426290)

Just get your product shipped with a commercial
Linux distribution. Boom, you're product is in
commerce. ;)

Always search for trademarks when naming a product (1)

yelvington (8169) | more than 13 years ago | (#426291)

It doesn't make any difference whether the product is open source or closed source; you should always search for trademark issues before naming a product. Two steps:

1. Use the US Patent and Trademark search engine at http://www.uspto.gov/. There may be similar resources in other countries.

2. Do a Web search. This is not a substitute for the search of registered trademarks, but it may help you avoid other bonehead maneuvers.

Regardless of whether you think patent and trademark laws are being abused by corporate interests, et cetera, you should perform these steps out of respect for your potential users. Well-chosen names will help people find your (free or not) product.

Re:Cheapest solution (1)

RocketScientist (15198) | more than 13 years ago | (#426292)

Maybe just name it "ALL YOUR BASE ARE BELONG TO US"

Asymetry (1)

drfrank (16371) | more than 13 years ago | (#426294)

This is weird: You have to use your product commercially in order to get a trade mark, but even if you're using a name non-commercially you can be forced to stop using it.

We need bugtraq for our legal system.

Re:Don't be too sure... (1)

spunkypimp (17324) | more than 13 years ago | (#426295)

Actually, McDonald's tried to get him to change his name, at which point he pointed out that his restaurant had existed before McDonald's establisehd their first restaurant in Scotland (He was Scottish). He then threatened to force McDonald's to change the name of all of their restaurants in Scotland. Funny enough, McDonald's left him alone after that.

Re:Cheapest solution (1)

jslag (21657) | more than 13 years ago | (#426297)

Need to know your video games for that one


What was the original? I saw the "remix" linked to from blue's (which was hella funny) but don't know what the original was...

One solution! :-) (1)

bradfitz (23252) | more than 13 years ago | (#426298)

Just think of a dumbass name that no real company would try and use.... Ximian [ximian.com] , LoserJabber [sourceforge.net] , Pygmy [sourceforge.net] , Knoqueror [kde.org] , hell -- anything with a K, G, Gnu, or GTK at the beginning... like gtktalog [sourceforge.net] . Or anything with an annoying mix of capital and lower-case letters: SQmaiL [sourceforge.net] .

I mean, seriously... if you're writing open-source software and don't have a dumb/geeky/clever name for it, how good can it be, ya know? :-)

Linux(tm)? (1)

p3d0 (42270) | more than 13 years ago | (#426301)

Well, what did Linus do to trademark "Linux"? Presumably he faced the same issues.
--
Patrick Doyle

Easy! Just pick a name that no-one else would want (1)

limako (45118) | more than 13 years ago | (#426302)

How about calling your project MAGGOT or A--HOLE?

What's the conflict? (1)

droleary (47999) | more than 13 years ago | (#426303)

... 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 ...

No it isn't. What conflict have they demonstrated? What evidence of marketplace confusion is there? They can certainly request you change your name, but that doesn't mean they are on any solid legal ground in doing so (IANAL, of course). A company did a similar thing to my company, and we politely explained that use of the word in question did not violate their trademark but they were welcome to continue legal proceedings. They wisely didn't.

Looking at the ListSTAR trademark in question, an argument could be made that Listar is not "for use on personal computers". Your software clearly isn't intended to even be run on Macintosh computers. Their whole issue seems to be the use of the word "list" (feature description) in the name of the software, which I don't think will prove to be sufficient if challenged. The marks themselves are not particularly similar, and I can't imagine how the marketplace confusion would be exist. Politely decline their request based on that reasonable argument and it's unlikely they'll continue. They took the action necessary on what might be a possible IP infringement and you've demonstrated that it wasn't; case closed.

Re:fp (1)

kahuna720 (56586) | more than 13 years ago | (#426304)

Actually sir, while I have a great deal of respect for your product and overall body of work here, I must confess that each "props to all dead homiez" fp is gained the old fashioned way, through the nebulous workings of the Force (as well as conventional advanced weaponry and tactics--broadband, knowledge of /. editor posting patterns, etc.) plus the magical powers bestowed upon all who have a low user ID.

Props to you and the Bone-O-Rama massive however, as well as Ida, Katy, Jamie S (my babe), French Toast, Bob Abooey, Huge ASCII FP Guy, and all the first posters [slashdot.org] keepin this schitt real in this new century. Do not dismiss us out of hand, for FP is the arena where Science and Art convene!!!

Re:Copyrights...BAH! (1)

CaptSwifty (61835) | more than 13 years ago | (#426305)

Just a thought, but couldn't you mail an empty, UNSEALED envelope, and then 10 years down the line, after someone else came up with a profitable idea, write a letter and stick it in the envelope and seal it. Then take them to court, claiming that you thought of it first?

That's a specious argument (1)

Cuthalion (65550) | more than 13 years ago | (#426306)

And as for other platforms, the Mac and Solaris versions of IE might be free now, but there is no guarantee that will last forever. If Microsoft was ever completely successful in eliminating competing browsers, you could bet that they would start charging for IE on non-Windows platforms.

And from a legal perspective "I would charge for it if I could" is good enough to make the change from a free product to a commercial one? Well, then small groups of people working on non-commercial entities CAN hold trademarks!

lalala la la laaaa (1)

Bastian (66383) | more than 13 years ago | (#426307)

The answer's in the story, kids.

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.

Re:Advertising (1)

Bastian (66383) | more than 13 years ago | (#426308)

I don't know about you, but if I saw that happening, I'd go and grab the source, remove all the advertisements, and redistribute it. Even if it were stuff for other OSS projects, I'd probably still do it just because adverts are annoying.

IANAL (1)

Jace of Fuse! (72042) | more than 13 years ago | (#426310)

Anal. I Anal.

Just like the law.

Not a lawyer, and proud of it.

"Everything you know is wrong. (And stupid.)"

You don't have to be have TRADE for a copywrite (1)

Tymanthius (75808) | more than 13 years ago | (#426312)

At least I don't think so - if I write a book, but don't sell it, I can copywrite it. So just copywrite the name & then you can let anyone use it you want.

Should work just fine.

That, or copyleft it (should work about the same, but nobody's tested it in court, I think).

Because that's the way trademark laws are written. (1)

mithrandr (78986) | more than 13 years ago | (#426313)

Trademarks are intended to prevent confusion among competing businesses. For example, say I have a successful company trademarked Foo. Someone comes along and decides to create a company that competes with me called Fu. If I can prove that because of the confusion between his name and mine, I am losing business, and because my company is trademarked, I have legal grounds to dispute Fu for trademark infringement. This does not apply to people that do not make a profit, as you can not show lost profits to competitors with similar names. However, if a trademarked business can show that it is losing profits to a competitor, whether the competitor's product is free or not, the competitor would be in violation of the trademark.

As always, IANAL, most of this stuff was picked up from reading about the recent SSH/OpenSecSH debate.

Locate a Lawyer (1)

rebill (87977) | more than 13 years ago | (#426314)

Every company that I have worked for has had someone perform a trademark search when they were contemplating releasing a new product. Some ideas would come back in tatters, while others were wide open.

This task is typically performed by a lawyer, although you can pare down some things by checking for the trademark you want at the U.S. Patent and Trademark Office [uspto.gov] .

Trademarks and commerce... (1)

twivel (89696) | more than 13 years ago | (#426315)

Prior art should apply to trademarks as well as they do to patents. It's sad to see the exclusive about trademarks and commercial use. Isn't it the responsibility of the trademark holder to search out confusing names like this during the process of getting a trademark?

In any event, the silly rule about using it for commercial purposes should not apply to protecting a name.
--
Twivel

ANY Commercial USE (1)

dorzak (142233) | more than 13 years ago | (#426319)

It doesn't matter what commercial use? Put a store on the project page that sells project buttons. They can sell at cost. Heck, you just have to try and sell them. You then have commercial use.

In order to recieve trademark... (1)

11390036 (158863) | more than 13 years ago | (#426321)

The trademark in question must be used in commerce.

Do whatever you can to associate your name with money somehow.

A support contract would be my reccomendation; it could even be a start at generating revenues from this project.

Prior use considerations? (1)

Phronesis (175966) | more than 13 years ago | (#426324)

IANAL, but my understanding is that if you can establish prior use, nobody can subsequently make you stop using a name. What you can't do without a valid trademark is to prevent someone else from using the mark.

If you're interested in preventing others from using your mark, then even if you're making free software, you may want to ask a lawyer whether advertising paid support or consulting services for your product or selling books about the product would constitute enough of a commercial interest to garner trademark protection.

Remember that you get a fair bit of trademark protection just by using the term in commerce, even if you don't register with the PTO.

Re:Cheapest solution (1)

gnugnugnu (178215) | more than 13 years ago | (#426325)

I always thought XP was short for Cross Platform, which make "Windows XP" the most f...ing riduculous name ever to come out of Microsoft.

*WinCE* was a pretty unfortunate name though. Of course as previous Slashdot threads have suggested they cannot copyright an Acronym only the "WindowsXP" one word combination, not that will prevent the inevitable frivoulous lawsuits.

"Windows combines CE ME NT, to provide their most solid OS yet, WARNING: May take considerable time to dry."

Re:Trademark infringement, but whose brand equity? (1)

steveargonman (183377) | more than 13 years ago | (#426327)

It seems to me this whole trademark/copyright stuff is getting way way way way out of control and extremely out of hand. I agree these copyright holders/trademark holders have legit claims to some extent, but lately it's getting silly. At the rate it's going, it's getting dangerous..

Trademark grant requires no prior use... (1)

justin sane (185041) | more than 13 years ago | (#426328)

If afreeware product came first and was well-known in the industry, a commercial company's application to register a similar mark would most likely be denied on those grounds. Applicants can appeal, but I have seen applications that have been denied for this very reason. There are many marks, the Cathoic Church for an example, that are not trademarked and are not owned by a commercial entity (yeah okay that's debateable but not by me and not here ;-) yet no commercial enitity could register because of prior use. In the case at hand though, the mark was already commercially registered--different fact pattern.

Re:Get a domain name? (1)

sulli (195030) | more than 13 years ago | (#426330)

true ... but also many of these folks fail to defend themselves. Getting, using, and defending aggressively a domain name can't hurt, it seems to me.

Re:Must be used in INTERSTATE COMMERCE (1)

Kinjana (198924) | more than 13 years ago | (#426331)

No -- Putting TM next to a mark is in indication that you are claiming trademark rights in the mark. There is no such thing as a "trademark pending" sort of symbol. The (r) should be used solely for registerd marks, but if you don't want to register a mark you can rely on common law rights of first use and notice (using with the tm symbol) I recently prepared a trademark application for a bank whose dates of first use nearly predeated the civil war. -- Trademark rights are createted by use not by registration Kinj

Re:So this is right and SSH is wrong??? (1)

TooTallFourThinking (206334) | more than 13 years ago | (#426334)

I understand your point but I have a few questions.

Both cases deal with an open sourced project being asked to use another name from a corporation. With this similarity, I don't understand how posting the article on /. is two-faced. Could you explain a little more?

With the OpenSSH vs SSH case, the trademarked name SSH is used witnin the name, OpenSSH. In this case, ListStar is not used in Listar Project. The names are similar, only a two letter difference and what both products offer is comparable.

I agree Samba and Samba2 are very similar and understand enforcing the trademark upon Samba2. It could be analogous to creating a company called Microsoft2. Would OpenMicrosoft be any better?

How close can two products be before they infringe upon each other?

the only law-cost way to protect yourself ... (1)

odin53 (207172) | more than 13 years ago | (#426335)

is to register as a trademark. Without registration, you have some rights, but it's nowhere near as good as a registered trademark.

I wouldn't worry too much about the "use in commerce" bit. If you want to, follow what some people have said and sell a copy of your work. But I don't think it's absolutely necessary. "Non-commercial" uses of trademarks are usually defined as uses in "expressive" forms that aren't a part of a commercial transaction. Non-commercial uses are usually not actionable as infringement, but they're also not trademarkable. In your case -- but of course it's certainly arguable -- I would think that open source projects are less forms of expression and more like regular product development with no fee. (This is why, incidentally, ListSTAR asked you to stop using Listar -- if you weren't "commercially using" Listar, you wouldn't be infringing.) No one ever said that commercial use means that you have to get money for your product.

[disclaimer: this isn't legal advice. I'm only pointing out some information that you might find useful. For legal advice, hire counsel and tell them everything they need to know.]

Re:Get a domain name? (1)

odin53 (207172) | more than 13 years ago | (#426336)

Domain names and trademarks have a weird interaction, so even having, say, listar.org would probably not help. Aside from the Anticybersqatting Act, Trademark Dilution laws tend to cover domain names/trademarks, and the dilution laws are -- to say the least -- big-corporation-oriented.

Clearing up a few points (1)

declana (214275) | more than 13 years ago | (#426337)

A trademark is a word or designation that is distinctive of a persons goods and that is used in a manner that identifies those goods and distinguishes them from the goods of others. A service mark is just a trademark used to identify services as opposed to products. THey follow all the rules below. Goods are items in the stream of commerce which does NOT mean that you have to -sell - a product so long as you use the mark in the marketplace. A project name with a dedicated website and software distributed under the name could easily qualify as use in the marketplace. Trademarks are acquired by use and do not have to be registered, but registration conveys some significant advantages including special damages, attorney's fees and a valid trademark presumption in favor of the registrant. The R (registered) and TM do not have to be used, but again confer certain rights on vigilent users. Keep in mind that similar terms can be used for divergent uses. In other words, you can have Eagle Candy, Eagle Publishing, and Eagle Clothing all coexisting with valid trademarks for different products. Also remember that fanciful marks are highly protectible (Ebay for auctions) and that generic marks are usually unprotected (Auctionblock for auctions). It is not enough to run a rudimentary trademark check on the USPTO website. A trademark house like Thompson and Thompson should be used to check commonlaw trademarks which could pre-empt your use. Remember - registration is NOT a race to the USPTO. A commonlaw use can have certain prior rights. I urge everyone to properly clear marks BEFORE they start using them (XBOX ring any bells?). It is not too exspensive compared to getting slammed for using anothers mark. A small business can expect to pay about $2,000 to clear a trademark properly and the majority of that fee will be the cost of a well-designed trademark search from an accredited firm.

Re:Previous Use (1)

Marcel Waldvogel (219139) | more than 13 years ago | (#426340)

Unfortunately, a casual glance at the two web sites gives the impression that the commercial use of ListSTAR predates the use of Listar. The first third-party review of ListSTAR [liststar.com] seems to be from 1995, with the first "verifyable" review in 1996; whereas Listar seems to have been (developed and) used first [listar.org] in 1997.

While I would like to see open source projects being able to easily block trademark infringement allegiations by referring to "prior art", it doesn't seem to hold here.

-Marcel

PS: IANAL, but isn't the use of the "TM" symbol open widely (i.e., without registering and paying), and just the "(R)" requires these hassles?

Can't we all just get along? (1)

AFCArchvile (221494) | more than 13 years ago | (#426342)

This is a message to all companies: "Live and let open source live."

Re:Advertising (1)

GMontag451 (230904) | more than 13 years ago | (#426344)

That was the whole point of the -noads configure script option comment. That way it would just be a superficial commerciality. And I said other OSS projects so they might be able to cook up some kind of advertising trade agreement or something.

Re:Its a *Trade*mark, hehe (1)

xjimhb (234034) | more than 13 years ago | (#426345)

There is at least one company, Cheapbytes, that sells "Red Hat Linux" on a CD. However, they clearly label it as a "Cheapbytes CD containing the downloadable version of Red Hat Linux" (or something like that), and they add a file or two of their own (a Readme or something). Apparently since you could download and burn it yourself, you can also pay them to perform this service for you as long as they clearly label what you are getting.

Re:Its a *Trade*mark, hehe (1)

xjimhb (234034) | more than 13 years ago | (#426346)

There is at least one company, Cheapbytes, that sells "Red Hat Linux" on a CD. However, they clearly label it as a "Cheapbytes CD containing the downloadable version of Red Hat Linux" (or something like that), and they add a file or two of their own (a Readme or something). Apparently since you could download and burn it yourself, you can also pay them to perform this service for you as long as they clearly label what you are getting.

Why can't we get past the rhetoric? (1)

B14ckH013Sur4 (234255) | more than 13 years ago | (#426347)

It seems to me that words are fscking everything up in the information age. Can someone please hack-up a good mind-reading app so we can start building a neuronet and get past the use of English (or any other language)words?

"Confusingly Similar..." (1)

dex22 (239643) | more than 13 years ago | (#426348)

I've looked at the ListStar trademark, which is: Status: Registered Primary Class: 9 - Computer programs, electrical and scientific apparatus Classes: 9 - Computer programs, electrical and scientific apparatus Goods & Services: COMPUTER SOFTWARE FOR CREATING AND MAINTAINING LIST SERVER MAILING LISTS AND ELECTRONIC MAIL-ON-DEMAND SYSTEMS ALL FOR USE ON PERSONAL COMPUTERS Serial No: 75209386 Reg. No: 2127079 Filed: December 6, 1996 First Use: March 15, 1995 First Commerce: March 15, 1995 Registration January 6, 1998 Obviously the TM was registered in 1996 before the Listar project began, and it covers precisely an area of trade covered by Listar's service/product. Any person who was not aware there are two similar organisations with similar products, though with very different intent, could reasonably confuse the two. So yes, it's a clear TM infringement. Sucky, eh? You just have to register your own name, and sell one copy.

Re:Why not start a trademark trust company? (1)

grammar fascist (239789) | more than 13 years ago | (#426349)

That sounds like a job for the FSF.

It's obviously possible... (1)

leviramsey (248057) | more than 13 years ago | (#426351)

From all pieces of Mandrake (printed) documentation: "Linux (R) is a registered trademark of Linus Torvalds"

Linux is obviously a non-commercial piece of software, so it must be possible.

Re:Why not start a trademark trust company? (1)

tewwetruggur (253319) | more than 13 years ago | (#426352)

Any volunteers? Sounds interesting enough... if anyone else thinks this is plausible, we should see if we can make it happen.

Re:In other news... (1)

MeltyMan (262145) | more than 13 years ago | (#426353)

From the "didn't-we-mention-something-about-them-being- scared" department. :)

Re:Trademarks applicable to non-commercial project (1)

agallagh42 (301559) | more than 13 years ago | (#426354)

Exactly, that's why there can be Infinity the luxury car company, and Infinity the speaker company...

An easy solution (1)

rhenderson (306990) | more than 13 years ago | (#426356)

Okay, I'll send you 20 bucks; you send me receipt and burn of software; you keep a copy of receipt.

You trademark the name. If anyone wants to challenge the new name, I start breaking kneecaps.

Simple enough. One sale is all it takes.

Or even easier: Start your own company, and make each person on the team buy a copy for 1 dollar each.

-"If I wanted your lip, I'd rattle my zipper."-anon.

Strong v. Weak Marks (1)

dissipative_struct (312023) | more than 13 years ago | (#426357)

How you proceed depends on how strong your trademark is. If it's distinctive and fairly unique (Kodak film), and your the first to use it, you can protect it as a strong trademark. If it's general (probably not in your case) it's a "weak" trademark (Al's Car Repair), and although you can't stop other people from using it, they can't stop you either.

If you have a strong trademark and want to protect it, the "Legal Guide for Starting and Running a Small Business" by Fred Steingold (Nolo) suggests:
1. Use your trademark as a proper adjective that describes your product.
2. Always capitalize the first letter of your trademark.
3. If your trademark has been placed on the Federal trademark register, consistently use the (R) symbol (I think other people have already chimed in with advice on what you can do to make it "commercial" and able to get put on the register).
4. Take prompt legal action if other businesses use your trademark without your permission (I'd expect a polite letter, sent certified mail, would be fine. Remember to keep a copy of the letter).

The book also talks about how to search for people who may already be using a mark you wish to use. The Trademark Electronic Search Service can be found on the U.S. Patent and Trademark Office Website [uspto.gov] . This lets you do a "direct hit" search (see if anyone else has registered that exact name). There is also a (pay-per-use) search engine called SAEGIS at www.saegis.com [saegis.com] that can do analytical searches that look for marks with a similar name. I haven't used SAEGIS so I don't know how much they charge, but it may be worth it if you want to make absolutely sure no one else has a similar trademark.

The way the law should be... (1)

caino59 (313096) | more than 13 years ago | (#426358)

Ok..these guys can't trademark a name because they dont't sell their product, so they should be allowed to use whatever name they want.
Why constrict someone (or a group) to this if they can't even trademark a name for themselves? That's basically saying "Piss on you, We won't let you have this name, but someone else can come along, trademark it, use it, and fsck you over."
Is it me, or does that seem completely unfair?

-Caino

Don't touch my .sig there!

Re: Not-for-profit versus nonprofit. (1)

grayhaired (314097) | more than 13 years ago | (#426359)

Nonprofit isn't all that easy to obtain, you have to fall into certain categories to do it. Not-for-profit is a lot easier to attain. I've been employed by hospitals as a researcher in order to give them the kind of research element they needed to add to achieve nonprofit status; that status has tax advantages and so corps want to get it.

Grayhaired.

Use "GNU" (2)

Anonymous Coward | more than 13 years ago | (#426365)

Simple: Just ask the Free Software Foundation to be allowed to use GNU in front of your software's name (of couse, change it to something other than "Listar" first). I'm sure they will be more than happy to include your software in their directory as well.

Sounds like Mohawk... (2)

mholve (1101) | more than 13 years ago | (#426366)

Sounds like Mohawk [eunuchs.org] as compared to Chilliware's Mohawk. [chillistore.net] Theirs is $79.95... Mine is free. ;>

Mine came first, and I'm not giving up nuthin...

Re:Its a *Trade*mark, hehe (2)

Zachary Kessin (1372) | more than 13 years ago | (#426367)

Well for Redhat et al Open Source is about trade, but it may not be for you. As for your example Red Hat does have a trademark on the term Red Hat at least as it relates to computer OS's.

You can't sell a CD and call it Red Hat Linux. And you can't sell a CD and call it "Red Hat BSD". Now you can create a BSD distro based around RPM and other free software written by Red Hat.

The basic idea of Trademarks is that when you see a product with a given name or logo you should know that it comes from the people you expect it to. If I go to the store and buy a Red Hat CD I can have confidence it is from Red Hat and not some guy who was burning CD's as a hobby. Similarly when I go to the store and buy a bottle of Pepsi I can know that what I am getting is really Pepsi.

How to be safe from trademark holders (2)

AxelBoldt (1490) | more than 13 years ago | (#426368)

Just pick a name with "fuck" in it.

--

There is no problem so big that... (2)

jd (1658) | more than 13 years ago | (#426369)

it cannot be solved with the adequate application of rapidly combusting material.

However, this can irritate the local cops, so I wouldn't recommend it.

The second alternative is to find a computer lawyer who works on no-win, no-fee, and challange the trademark.

IANAL, but if these people waited to challange you, then they lost their trademark.

Also, you CANNOT trademark words or phrases in common use. (Amstrad tried to trademark the word "Tower". Didn't get far.)

Most important of all, find some lobby group or other vocal organization that can hit them where it hurts - in the chequebook.

Any company is likely to reach a compromise if it finds it's shareprices or profit margins are likely to suffer.

It's ironic, but true, that in the "free market", an ounce of menace is worth a tonne of freedom. You just have to growl loud enough, and they'll back off.

Re:Just say you will sell support/copies if desire (2)

markus (2264) | more than 13 years ago | (#426370)

How come, you cannot register a trademark if you do not intend to make a profit of your software, but the same not-for-profit software can still be in violation of other trademarks?

Also, how can Microsoft claim a trademark on Internet Explorer, if they are giving it away for free?

Trademarks in Open Source aren't a problem (2)

ChaosDiscord (4913) | more than 13 years ago | (#426371)

If the term 'Enlightenment' were trademarked, other Linux people wouldn't be able to use the term 'Enlightenment', although they would be able to distribute the window manager.

Trademark exists to protect consumers from confusion. If I'm distributing a genuine copy of Enlightenment, there isn't anything confusing me about calling it Enlightenment. I can certainly use the term "Microsoft Windows" to describe the system I'm using right now, and if I sell my computer, I can say "Comes with a licensed copy of Microsoft Windows" (assuming it actually does). You can use a trademark all you want to describe the product or service the trademark applies to. If I buy a new copy of Windows and don't open it, I can print up advertisements that I'm selling a copy of Microsoft Windows. As long as there is no possibility for confusion between the product or service the trademark applies to and something unrelated, everything is fine.

This situation has actually come up. SourceGear [sourcegear.com] has trademarks on AbiWord and related Abi prefixed products. SourceGear makes the trademarks available [abisource.com] under certain terms. If I want to fork AbiWord and not agree to those terms, I have to give it a new name. If I didn't change the name, there might be confusion between my AbiWord and SourceGear's AbiWord. I can describe it as "Based on AbiWord," so long as I'm careful to not imply that my product is AbiWord (that is a grey area, however).

How to make a trademark stick (2)

hpa (7948) | more than 13 years ago | (#426374)

For the trademark to have been "used in commerce", there has to have been ONE well-documented transaction using the name. Sell ONE copy of your CD to someone outside the group (not a relative), make sure you get a receipt, and now you have used your trademark in commerce. This is done all the time.

What about support? (2)

Carbonate (13973) | more than 13 years ago | (#426376)

I know that there are a lot of projects that provide support services for their product for a consulting fee. This would certainly provide some revenue and would get you the trademark you need.

Re:Just say you will sell support/copies if desire (2)

SoftwareJanitor (15983) | more than 13 years ago | (#426378)

Also, how can Microsoft claim a trademark on Internet Explorer, if they are giving it away for free?

Well, the Windows version of IE isn't really free, it is included in the price of Windows. It is kinda like saying the ashtray in a new Ford Explorer is free. It isn't, you pay for it when you buy the truck, and you can't buy the truck without the ashtray. Not a perfect analogy because if you lose or break the ashtray in a truck you'd have to pay for a replacement, but the cost of replicating software (download) compared to making a physical object is the difference.

And as for other platforms, the Mac and Solaris versions of IE might be free now, but there is no guarantee that will last forever. If Microsoft was ever completely successful in eliminating competing browsers, you could bet that they would start charging for IE on non-Windows platforms.

Re:Trademarks and commerce... (2)

Izaak (31329) | more than 13 years ago | (#426381)

Isn't it the responsibility of the trademark holder to search out confusing names like this during the process of getting a trademark?

Yes, and fortunately you can search the pto's database for free on the web. Then after submitting your trademark request, it will be reviewed by someone at the pto, and they might respond with their own assesment of possible conflicts and a request for clarification of the trademark's area applicability. I just received such a request regarding my skilltrek trademark. The reviewer also included some useful suggestions on how to narrow the scope of the trademark's description and thus aviod potential challanges or confusion with other similar trademarks.

In regards to how you get a trademark for a non-commericial open source project, I suggest this: Sell CDs with the software and documentation, and use the revenues to cover the ~$350 trademark filing fee and operational costs of the website.

Thad

Re:Cheapest solution (2)

Cuthalion (65550) | more than 13 years ago | (#426385)

Better not. If you do Sega will set you up the bomb.

Re:Get a domain name? (2)

Bastian (66383) | more than 13 years ago | (#426386)

Considering people who use their surnames as domain names have ended up in lawsuits with firms of the same name, I doubt it'd be good for anything.

I'll help... (2)

rkent (73434) | more than 13 years ago | (#426387)

Someone suggested selling burned copies of the software, but I'm wondering if there are any low-cost ways of protecting ourselves ...

Um... just burn a copy, and I'll buy one for a few bucks (then it's used in commerce). Anyone else?

Trademarks applicable to non-commercial projects? (2)

Fnordulicious (85996) | more than 13 years ago | (#426388)

I had no idea that a trademark was applicable to something which was non-commercial. For example, somone has trademarked my last name. But it's my last name and I'm not a commercial entity so there's no conflict. I'm allowed to use my name whenever I want to. Including putting it on any software that I write, or businesses that I run.

Also, keep in mind that a trademark only applies to something which is *similar in functionality* or *similar in commercial venue*. IOW, if you have a name which is similar to an existing trademark, but your name refers to some open source text editor and the trademark refers to some fossil-fuel refining equipment then there's no sort of infringement. The idea about infringement is that it has to be difficult for a stupid inbred American with an IQ of 80 to mistake not only because the names are similar but also because the functionality or application is similar.

Re:Use "GNU" (2)

technomancerX (86975) | more than 13 years ago | (#426389)

GNU will only take in works if the author(s) assign the copyright for the work to the FSF. This doesn't matter to a lot of people, but some authors prefer to hold their own copyrights.

.technomancer

Copyright is not Trademark! (2)

Nonesuch (90847) | more than 13 years ago | (#426391)

Disclaimer: IANAL, I just hang out with one.

There is a distinct difference between 'copyright' and 'trademark'. You cannot claim a copyright to a name, you claim copyright on a 'work', such as Linux, or a book, or a poem.

Trademark is protection for a name, symbol, or other 'mark' used in trade. Thus the restriction that a trademark must be 'used in commerce' to be valid (registerable).

In U.S. law, your copyright protections are automatic, and do not need to be registered. Trademarks generally need to be registered, and with the exception of 'famous marks' (IBM, Porsche, Microsoft, etc), are limited to a specific market.

For example, it is possible for 'listar' the mailing list software to co-exist with 'listar' the toothpaste for cigar smokers, and not have a trademark violation. But because 'Microsoft' is a famous mark, if you decided to make small chewy cookies as 'Microsoft bakery', then Microsoft the mega-software company has a case against you.

which problem do you want to solve? (2)

drfireman (101623) | more than 13 years ago | (#426392)

I recently spent some time trying to figure out if I needed a trademark for a tiny company I was starting up. (Eventually I gave up and named my company after myself.) In the process of looking into it, it became apparent that I had to worry not only about the desired name already being trademarked, but also whether or not it was in use without having been registered with the USPTO or any state -- that is, whether or not it was a common law trademark. Unless an actual lawyer cares to contradict me, I think this implies that holding a common law trademark is in some cases sufficient to prevent a confusable business from trademarking your name. I'd imagine in practice companies with big fat lawyers get just about whatever they want, but that's just a guess.

I guess my point here is that if your goal is to prevent some other company from stealing your name, there may be avenues simpler than getting your own trademark registered. Of course figuring out how to do this effectively would likely require the expensive services of an IP lawyer. The punch line is that the reason I never registered my own trademark is that even superficial consultation would have wiped out my profits and then some. So although consulting an IP lawyer is probably the right thing to do, it's not always an option for a freeware development team.

Re:ListStar was there first (2)

nlvp (115149) | more than 13 years ago | (#426393)

Agreed, but in principle, given the facts in the article, it would be possible for a new product to come and take a previously used name just because that name was not used commercially.

Whilst in this case the name was in use before the "free" project decided to use it, in general, this problem would exist if a trademark is not recognised as such until commercial use is made of the name.

Trademark Response (2)

NatZi (119253) | more than 13 years ago | (#426394)

I applied for a trademark in mid-1997 and am still awaiting final approval. The trademark process is very interesting, is quite complex, and does take quite some time.

Many people confuse trademarks and patents. A trademark or servicemark is simply a means of identifying a specific product. There is nothing nefarious or even anti-competative about most trademarks (exceptions ignored). The trademark truly does protect consumers from unscrupulous people who attempt to pass-off inferior products or services using a well known brand name.

Also, a trademark does not globally restrict use. For example, when filing a trademark, the mark must be filed for a class of services and is ONLY grated for the class in which it was filed. There are literally thousands of these classes. Also, the mark granted is usually just for the illustrated appearance unless the mark is a strong mark. For example, I may file a trademark for my fooBar candy bar. The mark may be denied? Why? fooBar is relatively common and, therefore, a weak mark. If, however, I filed a mark for my fooBar logo (not just the text fooBar), the mark might be granted. Confusing? You bet. Trademark law is extremely complex. Even if I file a trademark for fooBar candy, I will need to select a class of services. This is consistent with the purpose of a trademark -- to identify specific services. I might select a food product -- confections class. Two years later, a different company files a trademark for fooBar Software. Nothing I can do as long as they do not use my logo or a similar facsimile thereof. There is nothing unique about fooBar. If you want to protect a text and logo, then you must elect a strong trademark. These trademarks are where we get Itanium(TM), Athalon(TM), etc. or unique names. Again, back to the purpose of trademarks -- identifying services and preventing consumer confusion. Trademarks are not like patents -- where patents restrict and stifle ideas. My only reservation about trademarks is that large companies seemingly have an advantage for filings. This does make some sense if a trademark is only to protect an investment in building brand awareness but can serverly impede new companies from developing a viable brand and receiving a trademark.

It's Not THAT Hard (2)

MyopicProwls (122482) | more than 13 years ago | (#426395)

No, no. Trademark is a publicity thing, OR a registration thing. First of all, if your project has any money whatsoever, you can officially register your name as a trademark. The actual registration is pretty cheap, though you may have to pay a lawyer if the paperwork gets too hairy.

The other way to establish a trademark is through public use. Many of you may remember that McDonald's got in a big fight with a little girl and her father who had registered the trademark "Nothing But Net" some time before all those McDonald's commercials. The problem was that the little girl (who technically held the trademark) had never used it in a very public fashion; but McDonald's had never tried to register the trademark.

So what I'd do is check to see if there is an official trademark on the name you want to use. If there is, find another; you're probably out of luck. If there isn't, just make sure you throw up a dated web page showing that you are using the name publically as of some certain date. The publicity aspect of trademark protection is thus granted, and you should be fine.

Needless to say, IANAL.

MyopicProwls

Re:Cheapest solution (2)

MikeTheYak (123496) | more than 13 years ago | (#426396)

XP oh wait a sec. That's taken

Laugh if you like, but is Microsoft going to give Mozilla flak for having XPToolkit, XPApps, XPCOM, etc.?

Service Mark? (2)

tcd004 (134130) | more than 13 years ago | (#426397)

Consider a service mark. Perhaps you can classify your company a providing a servcie, rather than a trademark...

tcd004
Guts of the Pentium 4! [lostbrain.com]
Stockphotos [lostbrain.com]

Re:Its a *Trade*mark, hehe (2)

elegant7x (142766) | more than 13 years ago | (#426398)

It doesn't matter anyway, what I mean to ask is what would happen if a Linux company created an Open Source project, and made the code free, but trademarked the name? In the world of brand names and so on, that could give them quite an advantage. It would also be an affront to the spirit of Open Source and Free Software.

Yeh, that would be terrible, It would be Linus trade marking "Linux" or something. Oh wait, he did...

Amber Yuan 2k A.D

Re:Cheapest solution (2)

elegant7x (142766) | more than 13 years ago | (#426399)

That seems to be the approach taken by the Gnu's HURD kernel. It sounds like a combination of "Hurl" and "Turd"

Amber Yuan 2k A.D

wrong forum (2)

hchubbard (159765) | more than 13 years ago | (#426401)

Don't ask Slashdot for legal advice. Ask your lawyer.

How to be a commercial enity... (2)

SquadBoy (167263) | more than 13 years ago | (#426402)

Are you sure you have to sell something to do a trademark? Does not sound right to me but working on that assumption and for some reason you dont want to burn CDs set up a SSL server somewhere put copies of all your stuff on it and charge people to get access to it and download from it. Of course all of it would be there in the public archive but you would be trying to sell access to your for_pay server and would be a commercial enity. In few of the fact that this , for obvious reasons, would be a low volume site and you would maybe not *really* care if people got access to it it should be cheap and easy to maintain. :)

Re:Cheapest solution (2)

_ganja_ (179968) | more than 13 years ago | (#426403)

That's actually fairly funny but a bit obscure? Need to know your video games for that one.. Made me smile though, thanks.

Intent-to-use mark (2)

TechLawyer (182030) | more than 13 years ago | (#426404)

You can apply for a trademark if you simply have an intent to use it. Don't make token sales to attempt to establish use! They're a pain to do, and courts routinely dismiss them as shams. Visit the USPTO web site at www.uspto.gov for more information, or contact your local TM attorney.

Get a domain name? (2)

sulli (195030) | more than 13 years ago | (#426405)

and start using it ... WIPO crapola notwithstanding, a record of using your domain name would probably be good for something.

Must be used in INTERSTATE COMMERCE (2)

DickBreath (207180) | more than 13 years ago | (#426406)

Seems in order to hold a trademark, the product needs to be used in commerce.

It must be used in interstate commerce in order to get a trademark.

The (tm) just means you've applied for the trademark. It takes ages to actually get one. Once you get it, you use the circle-R.

AFAIK, there is nothing official about the (tm), it merely alerts others that you have applied for registered trademark.

Reminds me of when, after years of actual interstate commerce (back in the mid 80's) the first company I worked for finally was granted a trademark. It impressed upon me how long and hard it is to get one.

Seems like the system works in favor of corporations and against us. But I suppose if just anyone could apply for trademarks all the good ones would be taken, and there would be a lot of potential for abuse, like trademark-squatting, etc. Sorta reminds me of the problems with another naming system we all know about. Hmmm, maybe only corporations should be allowed to apply for domain names? Yeah! That's it! Better write our congresscritters.


Those who can, do. Those who cannot, get their MCSE.

Re:Just say you will sell support/copies if desire (2)

skoda (211470) | more than 13 years ago | (#426407)

I believe your comments about the gaining and use of a Trademark are somewhat inaccurate.

Here's my understanding with relevant quotes from Trademark Basics [uspto.gov]

Trademark is established either via actual use and/or through Federal registration.
Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper application to register a mark...

It's generally a first-come, first-serve process, and trademarks can be held indefinitely.
Generally, the first party who either uses a mark in commerce or files an application in the PTO has the ultimate right to register that mark.

Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms.

For Federal registration one must engage in interstate commerce, or intend on doing so (and not just be capable of doing so, as the previous poster stated).
Furthermore, it must be state-to-state, or US to Foreign-country commerce. Intrastate do not qualify as "interstate commerce" for Trademark purposes.

An applicant may apply for federal registration in three principal ways. (1) An applicant who has already commenced using a mark in commerce may file based on that use (a "use" application). (2) An applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an "intent-to-use" application)....Use of a mark in purely local commerce within a state does not qualify as "use in commerce."...(3) Additionally, under certain international agreements, an applicant from outside the United States may file in the United States

Regarding the notion of a "Trademark Clearing House" as some suggest, I wonder if that might run afoul of this requirement:
The application must be filed in the name of the owner of the mark...

It seems to me that creating, consistently using, and defending a logo for one's endeavors, regardless of commerce, gives you defacto Trademark status.

If you want to Federally register it for further protection, you must sell goods or services from one state to another.

As always, IANAL, just some guy that can read web pages.
-----
D. Fischer

Copyrights...BAH! (2)

MVMonkey (254658) | more than 13 years ago | (#426408)

This may sound pretty stupid to some of you out there, however if you want legal proof that you used the name at a certain time, write a document stating that your company is currently using that name, then send it to yourself through the United States Postal Service. A federally recognized time stamp will be placed on the envelope and as long as the envelope remains sealed you have some proof that you used that name before that specific date.

Its a *Trade*mark, hehe (2)

Lover's Arrival, The (267435) | more than 13 years ago | (#426409)

So we shouldn't be worried if it doesn't work for Open Source projects, which aren't about trade at all. They are about working for the fun of it.

On the other hand, I suppose there are lots of companies like Red Hat and so on, with thier own trademarked Open Sourse projects. Enlightenment, that cool Windows manager, is a Red Hat project, isn't it? I heard that Rasterman was employed by them, or was it VALinux? I forget.

It doesn't matter anyway, what I mean to ask is what would happen if a Linux company created an Open Source project, and made the code free, but trademarked the name? In the world of brand names and so on, that could give them quite an advantage. It would also be an affront to the spirit of Open Source and Free Software.

If the term 'Enlightenment' were trademarked, other Linux people wouldn't be able to use the term 'Enlightenment', although they would be able to distribute the window manager.

Isn't this a loophole in the law? Forgive me if I have got a few things wrong (I know I have, for sure), but please, I am interested :)

Commerce (2)

merlin_jim (302773) | more than 13 years ago | (#426410)

Trademarks are indeed all about commerce. The problem being that what they're used to enforce these days isn't commerce, but brand equity.

Hey all you /.'ers, what do you think about a BrandMark? Branding is exceptionally important these days, even if you're not engaging in commerce. It's important on the OSS level to differentiate between products. It's also important on a personal level. If you build up a brand and promote it, it's kind of like your personal reputation. But if you don't do commerce, ergo can't trademark your brand, then someone else can effectively "steal" your brand by trademarking it.

What we need is an ammendment to the trademark laws that allow brandmarking... reply back and give me some good ideas, then lets write our congressmen...

merlin_jim, the mad computer ninja juggalo

Coca-Cola (2)

PicassoJones (315767) | more than 13 years ago | (#426411)

I'm reminded of an urban legend about Coca-Cola. It says that their trademark includes Coca-Cola gum. In order to keep their trademark, they (keep in mind, this is not true), make a single pack of gum a year, ship it to some small store in New Jersey. Then a Coca-Cola employee walks into the store and buys the pack of gum

It actually costs nothing to claim a trademark... (3)

nweaver (113078) | more than 13 years ago | (#426414)

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 [uspto.gov]


Nicholas C Weaver, Winged Rat Consulting [winged-rat.com]

Trademark infringement, but whose brand equity? (3)

nlvp (115149) | more than 13 years ago | (#426415)

Seems to me that if you created a product first, gave it away free under a certain name, and then someone else comes along and creates a similar product that capitalises on the reputation of yours, and then makes money off it - you ought to be in line for some compensation, seeing as you created the brand equity that's partially driving the sales.

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.

Re:definition of TM vs. circle-R (3)

_ganja_ (179968) | more than 13 years ago | (#426416)

regfistered ???

That sounds like it would hurt.

Re:Trademarks and commerce... (3)

owlmeat (197799) | more than 13 years ago | (#426417)

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.

In other news... (3)

haukex (229058) | more than 13 years ago | (#426418)

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)."

Advertising (3)

GMontag451 (230904) | more than 13 years ago | (#426419)

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?

definition of TM vs. circle-R (3)

tewwetruggur (253319) | more than 13 years ago | (#426421)

I know that there is a differnce between claiming something as a trademark using TM, vs. having a "regfistered trademark", being our buddy, the cirle-R.

Any lawyers, law students, etc. help with this... people tent to forget that TM and R are not the same.

Just something to consider.

Previous Use (3)

digidave (259925) | more than 13 years ago | (#426422)

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.

Incorporate (4)

chalsall (185) | more than 13 years ago | (#426423)

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? (5)

EvlG (24576) | more than 13 years ago | (#426424)

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 (5)

selectspec (74651) | more than 13 years ago | (#426425)

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 (5)

nweaver (113078) | more than 13 years ago | (#426426)

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 [winged-rat.com]

Let me clear up some of this -- (5)

Kinjana (198924) | more than 13 years ago | (#426427)

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

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