Trademark Decisions

Sun, 1 Feb 2015

The United Stated Patent and Trademark Office (USPTO) defines a trademark as "words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods." This sounds easy enough but it can sometimes be difficult to identfy all of the trademarks someone might have. McDonald's is a good example: Its first trademark registration was in 1961 but their giant yellow "M" was not registered as a trademark until 1968.

Free software projects may not always think of it, but they have trademarks. Some are intentional, like names and logos. Some are accidental - brought about merely by common reference or familiar association. In both cases, proper trademark management is important. Free software projects need to figure out what what sort of trademark policy they want to have and what level is apprpriate for them.

In the United States, there are three levels of trademarks:

Common Law Trademarks

In this case the trademark isn't registered with the USPTO. Typically, the first person to use the mark in commerce is the one who gets the trademark. You just add the ™ symbol. This serves as a notice to others that you claim a trademark. Keep in mind that common law trademarks only apply to a specific geographic location, such as your city or county but would be enforceable in courts in that area.

State Level Trademarks

In some cases it may be more appropriate to register the trademarks at the state level. This can be done by applying for a trademark with your state. Keep in mind that this only applies to the state its registered with.

Federal Level Trademarks

These are registered with the USPTO and in this case you add the ® symbol. It covers all 50 states. Obtaining federal trademark registration can be a lengthy and complicated process, though, but once you are done it gives you more standing for trademark enforcement and it will be much easier to prevent infringement. Additionally, if you want to register the trademark in other countries, registering it in U.S. is a prerequisite.

Trademarks are an important factor in a free software project. As people modify and use the software in different ways and people begin to associate the marks with the project, your reputation is on the line. It's important to consider what sort of things you do and don't want and draft a trademark policy accordingly. A good place to start is CollabMark.