Why trademark Open Source software | Hacker News Reader

Why trademark Open Source software

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79 pointssamtuke43 comments

I made a walkthrough on cheaply registering a trademark without an attorney. It’s a couple years old now and the rules and processes may have changed. But for what it’s worth. https://github.com/tidwall/uspto-trademark

Here's the problem. The article does not say what you have to do to trademark something, but it does point to an article on a law firm site: https://www.legalteamusa.net/trademark-law-first-to-use-v-fi.... The site says that you get trademark rights once you "use the mark in commerce". It then goes on to suggest that "use in commerce" means an actual sale. There's more here: https://www.cohnlg.com/trademark-use-in-commerce-heres-how-i...

So, what does this mean in an open source context? How can you meet the "use in commerce" requirement if you never actually offer anything for sale?

This is a good read about trademarks in a FOSS context: https://fossmarks.org/

But, yes, you can trademark open source software even if you aren't charging for it. (IANAL)

Thanks. So far as I can tell, that site does not address the "use in commerce" question.

The traditional meaning does seem to involve sales and many law firms seem to still use that definition. However, trademarks are widely used for upstream open source projects. Here's Google's take on the "use in commerce" phrase: https://google.github.io/opencasebook/trademarks/

ADDED: The disconnect isn't really that surprising. Historically, why would you trademark something if you had no intention of selling it? How would it even get broadly distributed if you were just giving something away? Obviously, those conditions don't necessarily apply today even though you have the same issues of confusing different goods and services that have always existed. As for the law firms, it's mostly an argument that if you want an IP lawyer in an open source context, you probably want one who actually has experience in the area.

Good catch. To quote them: "the court rejected the argument that the lack of direct profit from releasing software under the GNU General Public License rendered the original Coolmail name unenforceable as a trademark, holding that distributing software for end-users over the Internet satisfies the “use in commerce” requirement."

Wikipedia doesn't make sales, but they still own their trademark.

"Use in commerce" is more about, are you actually making things with it, are you publishing those things, are there people interacting with your product under that name, etc. The fact that most commerce involves money changing hands is incidental.

I can answer this. You do indeed have to offer the product "for sale," even if it's free. To get our trademark[0] for downloadable (free) software, we had to prove that we were advertising and offering the product for download and that someone did, indeed download it. Has to be across state lines, too!

For the apparel trademarks (hats, t-shirts) we had to show the proof that the clothing sales website was up to the public and prove with a transaction and photo of the finished clothing that we were, indeed, selling trademarked hats and shirts and producing finished goods. You even have to show clothing labels with your trademark on it or you won't get apparel marks for your software -- so no protection for your logo on swag.

Our hosted product is in a different trademark class because the USPTO considers downloaded software to be a product and hosted software to be a service. To prove use in commerce in the service class we had to offer the product (that one costs money, lol) for sale, prove a real transaction took place across state lines, and prove that the customer had taken delivery (welcome email, etc.)

It's quite a process but, as our trademark attorney (we used Tradmarkia) said, if you don't do all this your mark with either be denied by the USPTO, accepted and then challenged later by them, or contested by another applicant.

[0] https://trademark.trademarkia.com/m-88979084.html

I think its important to understand what you are also getting into with a trademark. They mention:

    actively asserted and defended in order to have legal meaning.

This is a critical piece of owning a trademark. It must be defended which means that you have to issue cease and desist letters, normally engaging an attorney to do so, or else you risk losing your trademark altogether or it becoming genericized, i.e. 'Kleenex': https://en.wikipedia.org/wiki/Generic_trademark

Only in 0.000001% of cases when your product is a massive hit.

>A generic trademark, also known as a genericized trademark or proprietary eponym, is a trademark or brand name that, because of its popularity or significance, has become the generic term for, or synonymous with, a general class of product or service.

This is often repeated, but misguided: https://www.eff.org/deeplinks/2013/11/trademark-law-does-not...

Genericides do occur, but they are rather exceptional, and you generally can't do much about it (imagine the public starting to talk of dashboards as grafanas).

Cease-and-desists should probably be reserbed for severe missuse, such as a competitor selling their product as yours, etc.

Even if it were really that easy to fall prey to the genericide rules, couldn't companies fulfill the enforcement obligations more amicably by asking for a nominal fee?

I suppose that might open the door to the party making wider use of the trademarked term though.

On this topic, can someone explain how Elasticsearch got f*cked by AWS which is using their name for their competing hosted ES service?

They may have to change it now since the fork, but before there was no problem since they were not trying to deceive customers, they were running elastic search.

You can sell a Honda with after market parts and still say its a Honda. You just can't sell a Kia and call it a Porsche trying to trick people.

This is spot-on! It took a year to get our trademarks for our open source software, including negotiating with another claimant and waiting for yet another potential claimant to drop out of the race. It was not fun or cheap but totally worth it.

I just got our "ribbon copy" (with the gold seal) yesterday!

Fully agree. Some distros are packaging my software with bad patches constantly and then ignore requests to rename the package to make it clear that it's a fork.

Unfortunately for small projects registering a trademark is just not feasible. I have considered going from actual open source to source available though.

Issues like these are really what make me feel so bummed about open source. I can see it's enormous impact in the 90s quelling a lot of corporate greed, but now it's to the point that nobody respects the work put in anymore.

GPLv3 allows adding a clause that would force them to change the name if they make changes. If they do it anyway they're in violation of the license, no trademark required.

Do you happen to have a link with more info on how such a clause would look like? That sounds really interesting.

I do not, but I bet you could find a bigger project that has a such a clause and ask them if you could copy it.

Thanks, I did find an example here:

> The Coppermine Dev Team requires as additional term of the license Coppermine comes with that modified versions of Coppermine conveyed to others should be marked in a reasonable way. Modified versions mustn't be conveyed to others under the same name as the original Coppermine release. Package name, source code and the output generated by the modified version should make it obvious for potential users that the modified version and the original Coppermine version that the modified version is based upon differ.

https://coppermine-gallery.net/docs/curr/en/copyrights.htm#c...

and a PDF talking a bit more about section 7 here: http://www.mmmtechlaw.com/wp-content/uploads/2014/03/PLI-Ope...

So I think i understand this a bit better now. Maybe this helps someone else too.

(raw GPL legalese is difficult for me to fully parse not being a native speaker)

For those asking, it's in section seven, additional clauses:

  Notwithstanding any other provision of this License, for material
  you add to a covered work, you may (if authorized by the copyright
  holders of that material) supplement the terms of this License with
  terms:

  [...]

  c) Prohibiting misrepresentation of the origin of that material,
  or requiring that modified versions of such material be marked in
  reasonable ways as different from the original version; or...

This is (part of) why I use the zlib license.

zlib doesn't require renaming the software, just not claiming you wrote the original version and if you distribute a modified version of the source code (but nothing about the binaries!) you must make it clear the code was modified.

Can anyone recommend articles that focus more on past examples of bad behavior, and that motivate each abstract principle with examples of behavior that principle aims to guide. This article and the articles linked seem very vague. Maybe some legal literature?

Yep, years ago I was loosely involved (as a Koha developer working for one of the organisations involved) in this: https://www.rnz.co.nz/news/national/230631/koha-trademark-ca...

It was a lot of work by a lot of people involved to get the right conclusion, which (in 20/20 hindsight) could perhaps have been avoided by doing it "right" in the first place.

I can't view the article (seeing "Error establishing a database connection"). But isn't trademark prohibitively expensive and (traditionally) applies to just one country?

Some trademarks (like those for EU) cover all member states.

Getting "global protection" for your trademark is expensive and requires filing in multiple countries. It does rack up both legal and filing fees.

But just a US trademark is not prohibitively expensive... and would mean you would get registered trademark rights that could be enforced in a US court.

The article explains why it's important to trademark, but not how or more importantly if it makes sense for the majority of open source projects. If you need to hire a lawyer over several months to get a trademark, it's probably only possible for companies that also publish open source software.

It can actually be rather cheap (as far as lawyers go). Mine cost about $2k per TM which includes USPTO fees.

It will depend on prior art, how close you are to others, how large the search needs to be, how many classes you are applying for.

Just by starting to use the TM symbol next to words or images you intend to trademark is enough to offer some immediate and free protection (IANL)

I mostly agree with the sentiment of the article and it's fair enough to allow a Free Software project and its maintainers to defend themselves from being misrepresented by using trademarks.

This bit is trickier though:

Neither the terms “Open Source” nor “Free Software” are themselves trademarked, which unfortunately allows anyone to use them to describe anything – companies regularly exploit this to undermine public understanding of the freedoms which the words originally conveyed.

Should those terms have been trademarked in the past? They seem awfully generic and nebulous. Could you have even gotten a trademark for "Open Source" or "Free Software"? Do trademark registrations allow you to be specific about what these two terms mean?

(IANAL) "Free software" I don't think would have ever been granted, but as hard as it is to imagine now: the phrase "open source" didn't always exist, and wasn't coined until 1998. There's a case to be made that the OSI should have pursued trademarking "Open Source" upon their founding in 1998 (I think there's also a pretty good case that trademarking it would have hurt their mission, as businesses might be afraid of using the term).

I recall that they did try, but didn't succeed, because it was consided to be too generic. But can't find a reference for that :\

It seems you are correct https://opensource.org/pressreleases/certified-open-source.p...

I think setting up contributor license agreements (CLA) is a lot more important and valuable than getting a trademark.

We had an open source business without having CLAs in place and it took several months to get everyone who contributed (around 200 people) when we sold our company.

CLA Assistant easily plugs into any Github repository to make this painless.

https://cla-assistant.io/

Error establishing a database connection

Did we crash their server?

Yeah, same for me. They should enable some caching plugin...

https://web.archive.org/web/20210224124603/https://lightmete...

Error establishing a database connection (TM)

https://web.archive.org/web/20210224124603/https://lightmete...

Your cert is self-signed and (my) FireFox blocks the webpage.

Not the OP, but thats strange I'm on Firefox/Android and I'm seeing a valid letsencrypt issued cert.

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