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The Courts Government News

Trademarks For Open Source Projects? 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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Trademarks for Small Open Source Projects?

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  • by Anonymous Coward
    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...
  • by Anonymous Coward
    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.
  • by pb ( 1020 )
    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 [].
  • Sending a CD bearing the mark to someone across the country should pass for commerce.

    Would it coount if someone else sold it? Say if put it on an open source cd?

  • by Hallow ( 2706 )
    Just get your product shipped with a commercial
    Linux distribution. Boom, you're product is in
    commerce. ;)
  • 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 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.

  • Maybe just name it "ALL YOUR BASE ARE BELONG TO US"
  • You can encorporate here for $75. And the Delaware Chancery Court processes this kind of stuff faster than any other court in the nation, if not in the world.

    Remember the old "Get Smart" TV series? KAOS was incorporated in Delaware, for tax purposes.

  • 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.
  • 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.
  • > Come up with a name no one would want.
    • CrapWare

  • 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...

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

    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? :-)

  • Look up the meanings of "trade" and "commerce". Then you'll understand better what a trade-mark is.
  • I'm pretty sure that's a myth. It's so easy to fake that courts don't pay any attention.
    Patrick Doyle
  • Well, what did Linus do to trademark "Linux"? Presumably he faced the same issues.
    Patrick Doyle
  • How about calling your project MAGGOT or A--HOLE?
  • ... 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.

  • 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 [] 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!!!

  • 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?

  • 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!
  • 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.
  • 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.
  • How about the following project names?

    LNL (LisTAR is not ListSTAR)

    My take on other borderline project names

    SlashDash, sorry /.
  • Anal. I Anal.

    Just like the law.

    Not a lawyer, and proud of it.

    "Everything you know is wrong. (And stupid.)"
  • True, but they can overlap.

    If you copyright(left) a piece of software as BestMailer that is a mail list server and then a company tries to TM BestMailer and they make all kinds of mail software, they can't make you change your name b/c you have copywrite.

    The biggest drawback I can see for this immediatly is if you make multiple softwares. Then you don't have a TM under which you release everything.

    IANAL, of course - I agree with The Bard.
  • 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).
  • 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.
  • 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 [].

  • 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.

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

    Somenone else trademarked Linux and started sending out cease-and-desist letters to Linux companies. Some even paid, but I think Linus, and the EFF got together a challenge. That was pretty harsh though.

  • I suppose "listarine" is out.
  • IANAL, but I believe you could use a service mark; it doesn't require you to sell anything tangible. It is undeniable that you are offering a service.
  • 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.
  • Uh-oh.

    Better calm down, or...


    Teehee! Sorry, I actually remember that game, so I had to laugh when I saw the references. It's a sort of cult thing now, I guess.

  • 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.

  • I believe Microsoft has provided the option to buy IE. I think I have seen a retail package of IE before, and you probably can request that they send you a CD of IE for a cost. Xiadix
  • by Anonymous Coward
    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 [] as compared to Chilliware's Mohawk. [] Theirs is $79.95... Mine is free. ;>

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

  • 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.
  • Just pick a name with "fuck" in it.


  • 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.

  • 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?
  • 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 [] has trademarks on AbiWord and related Abi prefixed products. SourceGear makes the trademarks available [] 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).

  • "If Microsoft was ever completely successful in eliminating competing browsers, you could bet that they would start charging for IE on non-Windows platforms."

    If they were ever completely successful in eliminating competing browsers why would they continue to provide it for Windows for free?

    That whole "the browser is an integral part of the operating system" argument would fly right out the (you'll pardon the expression) window the instant that they thought that they could make more money the other way.

  • Does that hold true for that other unscrupulous outfit as well? The one over in Blue Cove?
  • 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.
  • Of course, there's also the option of using unflattering or offensive names like:
    • Junk
    • Crap
    • Bunk
    • WillBreakAsSoonAsYouGetIt
    • Scum
    • Crud
    etc. This has the nice added bonus of being a slap in the face to all the commercial products with advertisers scratching their heads trying to come up with "catchy" names and jingles for them. While you're at it, make your offensive name be a recursive acronym too:
    • Software
    • haplessly
    • iilluminating
    • turds
    For, say, a spam filter.


  • 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.
  • While this is an interesting question to pose here, you're asking the wrong people.

    Talk to a lawyer!!

  • 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.

  • O.K., perhaps I should have said in current versions of Windows... Starting with Windows 98 customers were forced to pay for IE as part of Windows.

  • Here is the procedure for creating a Trademark Stick (TM)(Pat. Pend.)

    Acquire a cylindrical object approximately 1 meter long and between 2.5 and 10 centimeters in diameter.

    Said cylindrical object should be made out of hardwood or metal. The heavier the better.

    Affix several strips of cloth tape to one end to ensure a good grip.

    Trademark Stick (TM)(Pat. Pend.) is used to "educate" clueless USPTO employees, lawyers and others who believe it is possible and appropriate to trademark such common words as "the", "an", "it"; state names, like Kentucky (TM), and individual's surnames.

    Any similarity between Trademark Stick (TM)(Pat. Pend.) and Cluestick (TM) are in the mind of the observer and not valid as prior art.

    In return for general good feelings toward ones fellow human beings (except the clueless), /me grants any natural person (not corporations) permanent and non-exclusive right to use the name Trademark Stick (TM)(Pat. Pend.) and manufacture Trademark Stick (TM)(Pat. Pend.) in furtherance of the education of the clueless, or for any purpose whatsoever.

    This exchange of consideration shall be considered a transaction for the purpose of establishing the commerce requirement of the pending Trademark Registration (TM) of this product.

  • 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.


  • How about The Extreme Programming guys.

    How about Roland. My brother has an XP-50.

    XP is way too generic. For one, it has only two letters. There are always a lot of generic things two letters could stand for sensibly. Not so with four or five. I might as well trademark the letter F.

    Then again, common sense doesn't seem to prevail very much lately in matters like this.
  • ...claiming that they violated fedral trademark and copyright laws by creating an "operating system(TM)(R)(C)."

    In related news, MIT's Tech Model Railroad Club filed suit against Microsoft for using their own mark within a legal document used in a suit against the US DOJ.

    An outraged senior member was heard saying, "all they did was throw some fscking parantheses in there. Those bastards won't get away with this."
  • TM is a mark that can be used by anyone to indicate that they consider it a trademark

    Circle R is what you get to put on when you are Federally Registered with the USPTO
  • Better not. If you do Sega will set you up the bomb.
  • 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.
  • 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?

  • 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.
  • 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.


  • Why exactly did Ximian need to change their name to, well, Ximian? From what I understood from the press announcements, they changed it to be "legally defensible". But what was wrong with Helixcode? It seems like a 1pretty unique trademark, and I haven't heard of any other software companies (or biotech companies) that have a similar name.
  • 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.

  • 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.
  • 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.

  • 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.
  • 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.


  • 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.?

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

    Guts of the Pentium 4! []
    Stockphotos []

  • 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
  • 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
  • A trademark "identifies a work in interstate commerce". It is not necessary to register a trademark but doing so provides certain benefits. But if you don't register it, you have to be able to show first use since - with the exception of certain pre-registrations for proposed use - only the first party to use a mark has the right to register it.

    Even if you don't sell the item, you can still register a trademark to identify the item. If one is distributing something it is arguable for these purposes that they are "in commerce" even if the price being charged is zero.

    (These are the rules in the U.S. Some other countries make the first to register a mark the owner even if they never use it.)

    Also, even if two marks are very similar or even the same, there is only a right to exclude another if there is a possibility that people would be confused as to the source of the goods which the mark covers. If there is no possibility of confusion, there is no right to exclude use by someone else in a non-confusing manner

    I believe that Watchtower is a trademark for the free publication given away by the Watchtower Bible and Tract Society, yet the magazines are free. They also issue a magazine called "Awake". The First Church of Christ, Scientist has registered their church seal (they use the (R) symbol by it). So just because one doesn't charge for the item doesn't mean one can't register a trademark for it.

    The biggest issue probably is the $250.00 that it costs to register a trademark in the U.S. If one isn't sure, you could always register the name of the product with your state's trademark office for less; this wouldn't provide federal protection but would provide proof of a date of prior use if the issue ever came up.

    Paul Robinson postmaster@paul.washington.dc(deletethis).us [mailto]

  • Don't ask Slashdot for legal advice. Ask your lawyer.
  • 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. :)
  • That's actually fairly funny but a bit obscure? Need to know your video games for that one.. Made me smile though, thanks.
  • 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 for more information, or contact your local TM attorney.
  • and start using it ... WIPO crapola notwithstanding, a record of using your domain name would probably be good for something.
  • 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.
  • 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 []

    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

  • 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.
  • 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 :)

  • 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

  • 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
  • Hi, everyone. I'm Rachel Blackman, the original designer/author of Listar, and still the lead developer on it. I'd like to make a clarification here. :)

    Neither I nor any other member of the Listar project holds ill-will against MCF for enforcing the trademark. The whole story is simply this:

    When I started writing Listar, it was a replacement for Majordomo specifically for my own machines. I called it 'Listar', the Spanish word for 'list'. It wasn't until a year later that 'ListSTAR' came to my attention, since, well, I don't use Macintoshes. I contacted StarNINE, then the owners of the package, and was told 'ListSTAR is defunct and no longer sold or supported, plus you're under UNIX and we're under Macintosh. Don't stress it.' So, perhaps unwisely, I didn't.

    Fast-forward two years, to when a company named MCF Software bought ListSTAR from the remains of StarNINE. The product is now revived and thus no longer defunct, and Listar (which can run on the FreeBSD-based MacOS X, where ListSTAR does not) is suddenly both a threat to the trademark and a potential source of confusion. Faroukh Irani of MCF contacted the Listar project politely about the name change and didn't get lawyers involved at all. He handled it very nicely, and should be commended for that. Nor is he in the wrong to enforce his trademark; this wasn't a case of 'the little guy' getting stomped on, this was a case of an unfortunate case where the situation changed and not to the benefit of the Open Source project.

    That said, we have gone and picked another (not yet announced) name, and we want to trademark that to prevent future confusion. Our problem is that in looking into that, we've found that it is very hard to trademark something - enforcably - which is not used in commercial trade.

    People say 'Linux is trademarked by Torvalds', but that's not entirely true. From what I've found in my poking around, SSC (who publish Linux Journal) and RedHat - both of whom use 'Linux' in commercial trade - obtained the trademark on behalf of Torvalds.

    It seems like trademark law is biased against free and open projects, probably largely due to ignorance and outdated laws. The question here is simply... has anyone ever really looked into trademarking an OpenSource project in an enforcable way?

    I have no problem with changing the name of this mailing list package now, over the ListSTAR dispute, but I have a great deal of trouble with the idea that I could have the name stolen out from under me again in another three years if someone decides they like it for their own commercial project. Hence the desire to obtain a legal trademark on it. :)


  • The gym I used to belong to in Pennsylvania was called "Fitness Factory" and I knew the owner quite well.

    He had had legal problems several years after founding. He had ordered some business cards for himself and some of the mangement/sales staff with the gym name printed on them, to be delivered to his house. Well, the package of business cards broke open in transit, and the USPS delivery man saw the name of the gym on the cards and took it upon himself to just drop the cards off at the gym which was not far off of his route.

    The problem was, the gym he dropped the cards at was "_the_ Fitness Factory." Different gym, almost same name. The major problem? The other gym was owned by a LAWYER.

    This lawyer took great exception to finding out that someone had a gym by almost the same name as his and took my friend straight to court(why not, he was his own pro-bono counsel).

    These two gyms were separated by about 40 miles and oddly enough, they had both registered their names the very same week several years before, the lawyer's registration preceded my gym's manager by only 3 days.

    The judge ruled that
    1) the names were even though similar, they were in fact different (the Fitness Factory vs. Fitness Factory)
    2) both entities had registered their name in good faith
    3) they were far enough apart to be non-competing and therefor there was no consequence to the other gym existing

    My gym owner got to keep the name, but only after 20 some thousand dollars in legal expenses.

    At least the lawyer wasn't seeking damages at a jury trial! Juries are always such suckers for hard luck sob stories when it comes to tort settlements.
  • by nweaver ( 113078 ) on Friday February 16, 2001 @10:45AM (#426414) Homepage

    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 []

  • by nlvp ( 115149 ) on Friday February 16, 2001 @10:04AM (#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.

  • by _ganja_ ( 179968 ) on Friday February 16, 2001 @10:45AM (#426416) Homepage
    regfistered ???

    That sounds like it would hurt.

  • by owlmeat ( 197799 ) on Friday February 16, 2001 @10:15AM (#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.
  • by haukex ( 229058 ) on Friday February 16, 2001 @10:19AM (#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)."
  • by GMontag451 ( 230904 ) on Friday February 16, 2001 @10:05AM (#426419) Homepage
    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?
  • by Dr. Awktagon ( 233360 ) on Friday February 16, 2001 @02:03PM (#426420) Homepage

    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..

  • by tewwetruggur ( 253319 ) on Friday February 16, 2001 @10:32AM (#426421) Homepage
    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.

  • by digidave ( 259925 ) on Friday February 16, 2001 @10:09AM (#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.

  • by chalsall ( 185 ) on Friday February 16, 2001 @10:08AM (#426423) Homepage
    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.

  • by EvlG ( 24576 ) on Friday February 16, 2001 @10:29AM (#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?
  • by selectspec ( 74651 ) on Friday February 16, 2001 @10:15AM (#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
  • by nweaver ( 113078 ) on Friday February 16, 2001 @10:07AM (#426426) Homepage

    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".


    Nicholas C Weaver, Winged Rat Consulting []
  • by Kinjana ( 198924 ) on Friday February 16, 2001 @11:32AM (#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 --


The absent ones are always at fault.