Hacker News Reader

Comment by ccleve | Hacker News Reader

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?

View on HN

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

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.

Reply on news.ycombinator.com