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Coming Up Next

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Shane Curcuru

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Practical Trademark Law

For Your Project

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Practical Trademark Law

For Your Project

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Punderthings Consulting

@ShaneCurcuru

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Intro: Founder of Punderthings Consulting, where I can help you figure out FOSS organizational and branding-related issues like this talk. I’m also currently Vice Chairman of the Apache Software Foundation, and in the past served as Vice President, Brand Management for all Apache projects.


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Topics

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2. Trademark law topics

1. Practical advice

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??? While trademark law is important, what’s most important for open source projects and foundations is the practical advice you can effectively use to help protect your reputation. So we’re going to start with some practical tips first, then cover just a little bit of legal definitions around trademarks.


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Practical Advice

  • Use Consistent Trademarks
  • Organizational Reputation
  • Community Policing
  • Registration As Insurance
  • Don’t Go To Court

??? There are a lot of practical factors that affect how trademarks work - or don’t work - for open source projects. Especially in volunteer-led organizations, these practical steps are just as important to do, and are far easier to implement and use to defend your trademarks than paying for lawyers (in most cases).


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Use trademarks consistently, and mark™ them® ]

??? This is an important and very simple step to take: treat your trademarks as trademarks.

Use them consistently, as adjectives, and mark with appropriate symbols. In first-to-use countries, this stakes your claim to the trademark even without registration. But everywhere, this alerts readers and users that you believe your product names are trademarks, and should be used with respect.

Ensuring that any official communications from your organization treat your names as trademarks to be respected is both a big social force, requesting respect from others - and, in first-to-use countries is an important indicator of your common law rights.

Another easy thing to do is to publish a trademark use policy. There are several examples, including the Model Trademark Guidelines policy that’s open source and written to be a drop-in policy for any FOSS project.

Open source means freely giving away the code - but it does not mean sharing your name, your marks, and your reputation.


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How strong is your organization’s reputation in the ecosystem? ]

???

Most trademark issues are solved with either private negotiation, or public shaming - not in court. But effectiveness here depends on the reputation your organization has in the world.

Obvious: how well known are you to commercial companies who might try to steal or profit off of your brands?

Unobvious: how well known are you in developer circles? Do you have contributors who work at $BigCo and can lobby them internally to help respect your trademark? While it takes social effort, leveraging contributors who work at an infringer is an important way to prevent or stop infringements.

Apache has a huge reputation - I don’t worry about going to court; we have other tools, like exclusion from project management committees. But smaller organizations in terms of their brand reach and respect need to consider different aspects. Even so, most commercial entites will understand the impact to them of bad press if they’re seen as abusing a poor little FOSS project, so it’s still an important tool.


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How organized is your community at reporting infringements? ]

???

The difficulty in solving trademark infringements goes up geometrically or exponentially, depending on market. Early detection is critical in discovering issues with others mis-using your trademarks.

How active and organized is your community? If some new VC hotshot company started selling management add ons to your product using your trademarks, how long would it take until your project leadership heard about the issue and could start taking action? Just as importantly, do you have the trademark knowledge to understand what the actaul issue is and how to approach it?

Your organizational capacity is a key factor here too: once you hear about an infringement or issue, how long will it take you to respond, and how organized and efficient can you be in that response? The ASF has a clear process, a volunteer VP Brand Management, and expert counsel on retainer - and it’s still an organizational coordination issue to handle all our cases.


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Registrations are like insurance: you don’t need one - until you do (and then it’s too late). ]

???

Registrations are like an insurance policy that takes a while to put in force. The main issue is that once you find an infringement, it’s too late to start the registration process.

Registrations - once granted! - are a very strong defense of your mark… in the country they’re registered. Once you have a granted registration, it’s very hard for anyone else to take it away from you, meaning you can at least preserve your use of the mark in those countries. However it’s not a complete shield: agressive attackers in another country can still try to co-opt your brand. As an exaemple, China as a first-to-file country has a growing market for trademark squatters and scams; you might buy an iWatch in China, but it’s not from Apple, because a squatter filed there first.

If you’re serious about defending your trademarks, planning budget and organizational effort to get at least one or two or three registrations in key markets is a very worthwhile effort. An important focus is the countries where your project is likely to find future contributors to the project.

But don’t stress too much about registrations if you’re not big enough / don’t have the cash.


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If you end up in court, you’ve already lost too much volunteer energy and money. ]

???

Raise your hand if your organization has a trademark lawyer on retainer. OK, now keep your hand raised if you have the budget to pay your lawyer for a week of work. OK, now keep your hand raised if you also have the volunteer leadership capacity to manage the process of preparing for a lawsuit. Most of us couldn’t do that effectively.

For most of us, if a trademark infringement has gone to court, it’s too late. Trademark lawsuits are complicated, expensive, and not at all a good thing. Unless you’re a Linux Foundation project, you almost certainly have neither the cash nor the organizational capacity to manage a real lawsuit, nor the patience to see it through to conclusion.

The real point here is re-setting your mindset for effective ways to fix infringements:

  • Early detection (your community)
  • Private negotiation - always contact infringers in private first - this allows them to fix the issue while saving face. Many infringements are not intentional, really.
  • Public shaming, based on reputational strength. If you’re an Apache or an Eclipse, you have the reputation to put out a press release calling an infringer a bad actor in the FOSS space - and that will really hurt any software-making company. Also consider how you can influence developer communities (as we’ve seen recently with some high-power license change fails in the court of developer opinion)
  • Cease and Desist letters, and other simple threats from your lawyers are also useful, especially in conjunction with public shaming. Corporate legal departments don’t like getting these.

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Trademark Topics


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Avoid Court


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Avoid Court

  • Trademark lawsuits are very messy
  • Should never get there with open source
  • Address infringements politely, as a business contact
  • Have lawyers send C&D only if discussion doesn’t work

??? Policing improper use of your trademarks should be a business decision when working with any open source group. Start with a stern but friendly business letter laying out the situation. Be patient - open source communities are decentralized and may be slower (or more passionate) to respond. Only if a discussion fails should you send a C&D letter.

Similarly, if someone contacts you with a complaint about your use of their trademarks, pay attention. Discuss it first, don’t let it get to the point where their lawyers send you a C&D.

Companies and FOSS Foundations with a strong reputation will rarely if ever need to resort to lawyers - if you truly have a trademark claim, other groups will give in. They feel the risk of lawyers too.

The unknown and risk here is that open source communities have different governance and response mechanisms - ones that are less organized and typically slower than commercial legal and management processes. Be aware you need to communicate with, and possibly take longer to discuss, these kinds of issues if you’re talking to open source people.


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Back To Topic List Continue Onward: Definitions

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Trademarks Defined


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What Are Trademarks?

  • A trademark is the legal instantiation of your brand
  • It is the specific name or logo a consumer (user of software) associates with a specific software offering or program (goods)
  • Trademarks legally describe the goods as an adjective
  • I buy Kleenex® brand tissues
  • The jQuery® Javascript® Library is faster than the TeeScript™ framework
  • But we often skip proper usage of trademarks
  • We’re running Hadoop jobs in Docker/Moby

.footnote.code[https://www.apache.org/foundation/marks/guide]

??? While this may seem obvious, it’s important to understand that legally, trademarks are the specific and consistent name of the goods you’re providing. While the overall effect of your brand has some bearing on how consumers perceive your products, only the actual trademarks are protectable by law, and only within the limits of trademark law in each country you work in.

If you want others to take your trademarks seriously, you need to use them properly in any major webpages or advertising. You don’t have to add ™ and ® everywhere, just in landing pages and headers.


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Trademarks Protect Consumers

  • Trademarks work by preventing consumer confusion as to the producer or source of goods
  • Trademarks protect consumers by giving them consistency in quality and functionality from a single brand
  • Imagine your trademarks through the eyes of a new customer or contributor

??? While we may see trademarks as protecting our reputation as producers of high quality products, the real purpose of trademarks is protecting consumers. Consistent trademarks allow consumers a simpler decision process by ensuring that they get the the type, quality, and kind of product they expect when shopping for a brand, because they know it’s from a consistent vendor.

While an experienced team knows what they mean when they’re running Hadoop, the question for trademarks is: is that obvious to someone new to the team? Obvious to someone outside the company? New to the technology?

Any time you evaluate a trademark use or misuse, or consider using an open source brand in your marketing, you look at see the overall branding and use from the eyes of a newcomer - you, as an expert in your system, already know what should be expected. Newcomers only know what’s on the web or in advertising.


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Projects versus Products

  • Trademarks vs. Brands
  • Brands include many elements – names, logos, look and feel, marketing – some of which may be specific trademarks that signify your product or service
  • Software stacks are complicated assemblies of multiple products from various vendors or projects

??? As software becomes more modular and componentized, it’s not always clear what specific name would be considered a legal trademark. In the legal realm, the trademark is the only thing that a vendor or open source project can defend from infringement, so it’s important to be clear and precise about what the trademark (the name) is, and what it refers to (the product).

Open source projects use less formal development plans than typical vendors do, and rarely have marketing plans. So the branding and trademarks in open source projects often aren’t as clear as in the commercial world.

Consider the way we talk about “open source projects” in every day life, but that really means two separate things:

  • The community that builds the code and the project
  • The actual software product that comes from the project

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Back To Topic List Continue Onward: Displaying Your Marks

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Displaying Your Own Trademarks


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Be Consistent

  • Use your trademarks as marks:
    • Download Apache® CouchDB® software here
  • Be consistent with the exact marks
  • Use proper ™ and ® symbols

??? Trademark law is a very messy compiler - however there are a bunch of things you can do to improve the strength of your trademarks. Treat your product name and logo as a trademark - with respect. Be consistetn calling it “CouchDB software”, use the exact name the exact same way in major places on your website. Annotate the first and most prominent uses of your trademarks with ™ or ® symbols - definitely on homepages and landing pages, and preferably in all marketing materials.

The same things all apply to logos, but trademark law tends to treat an exact graphic as a trademark - so variations may be technically different trademarks, even though you see them as similar.


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Use In Commerce

  • You must provide actual product/services using the trademark in commerce to be defensible
    • Download Apache® CouchDB® software here
  • Actual use of your mark in commerce with consumers starts establishing rights to the trademark (in US/Canada)
  • Common law rights belong to the producer of goods - just start using ™ on the trademark consistently
  • NOTE: US/Canadian law is first-to-use. First-to-file countries (most others) are different when ownership begins.

??? As trademarks protect consumers, trademarks only have meaning in commerce, when actually doing business or providing software products publicly. Commerce does include products licensed for free, like open source software.

There is no required “claim” for trademarks, other than having a consistent mark for a consistent product, and using the ™ symbol on the trademark you are using. You can (try to) defend your name as soon as you start using it by using your common law rights. Registration is not required (at least in US).

IMPORTANT: Note that many other countries besides the US are strictly first-to-file: there are no real common law rights from unregistered trademarks.


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Have A Trademark Use Policy

  • Post a policy for use of your trademarks
    • Even if it’s legal boilerplate, having a clear policy helps to show your intention
    • Apache projects are covered by the ASF policy
  • Have a policy of how you will use FOSS trademarks - just like developer contributor policy!

.footnote.code[http://modeltrademarkguidelines.org/]

??? In the proprietary world, trademarks are strictly assets to be protected. In the open source world, where sharing and collaborating regularly is the watchword, a more nuanced approach to sharing or policing your marks is needed. MAybe a company wants to promote a community-friendly brand for themselves - you need to let people know that!

Open source projects often want to share trademarks in specific, small ways. If you have a community-focused brand, make it clear what uses might be allowable.

If you use open source brands in any of your marketing or websites, have a policy for how you’ll respect open source project brands. And be sure the marketing department buys in to the policy - this is a recurring problem for many open source projects, where vendors start off behaving well, but slip into infringement of the FOSS brand later.

Keynotes this morning talked about having a policy for how developers can participate in open source - you need to do the same thing for your marketing and sales teams.


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Back To Topic List Continue Onward: Others Using Your Marks

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Others Using Your Marks


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Liklelihood Of Confusion

  • When someone else is using our trademarks, how do we know if it’s OK or not?
  • Likelihood of Confusion test evaluates:
    • Similarity of marks
    • Relatedness of goods or services
    • Sophistication of consumers

??? USPTO: “Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source. Each application is decided on its own facts, and no strict mechanical test exists for determining likelihood of confusion.”

If a new user, wanting to download your widgets mistakenly went to another company’s webpage, might they be confused into buying their widgets instead - that could be infringement. But it depends on the overall effect of how they present their trademarks and what their widgets do.

Remember: Trademarks are about protecting consumers looking for reputable products. You have to see trademarks through a new user’s eye.

Are there any ways we know it’s OK to use a trademark?


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Nominative Use

  • The world is allowed to use your trademark to refer to your product or service
    • Cannot imply sponsorship, affiliation, endorsement
    • Can post negative reviews, benchmarks, tests
    • Can do parody or free non-commercial speech

??? Nominative use is a legal defense by a third party against your claim of infringement of your trademarks.

If consumers are not likely to be confused by this use - i.e. if consumers wouldn’t be led to purchase your trademarked goods from this other user - then it’s probably nominative and not an infringement.

I drive a BMW 3 series, and there’s no easy way for me to talk about how well it handles without calling it a BMW. I can even post good (or bad) reviews about my BMW, and it’s all nominative use. Nominative use is generally a positive defense against any trademark owner’s claim of infringement.

So what’s the opposite of Nominative Use?


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Infringement

  • Unauthorized use of a trademark that is likely to cause consumers to be confused about which vendor is providing the product
  • Other parties providing their products/services using a similar sounding or looking name/logo to yours
  • Infringement is a legal tort, and can be stopped

.footnote.code[https://www.apache.org/foundation/marks/reporting]

??? USPTO: “Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.”

If you see an Apache project brand being infringed - REPORT IT! (link above)

“To prevail on a claim of trademark infringement, a plaintiff must establish that it has a valid mark entitled to protection; and that the defendant used the same or a similar mark in commerce in connection with the sale or advertising of goods or services without the plaintiff’s consent. The plaintiff must also show that defendant’s use of the mark is likely to cause confusion as to the affiliation, connection or association of defendant with plaintiff, or as to the origin, sponsorship, or approval of defendant’s goods, services or commercial activities by plaintiff. See 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005). Thus, “use,” “in commerce,” and “likelihood of confusion” are three distinct elements necessary to establish a trademark infringement claim.” .bqcite[- https://www.law.cornell.edu/wex/trademark_infringement]


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Telling The Difference

  • The line between infringement and non-infringement is rarely obvious
  • Requires careful evaluation when:
    • Software comes in components
    • Software integrates with other software
    • Software is used as part of a service

??? Deciding if someone else’s use of your trademark is a problem is a tricky one - both with software made of components, and when working with open source projects with their wide variety of drivers and personalities

There is no simple rule to say if a trademark use is legally infringing or not. That doesn’t mean you can’t ask some other party to use your brands properly! It just means that your lawyers won’t be able to ensure the other party changes behavior.

Actually, there is a simple rule: SPACEBAR

  • “It depends.”

??? More importantly: what really matters here is: does this use truly harm your business? Lawyers may say that allowing any potential misuse by others is a risk - which is true, to a degree. But the business risk - is there actual confusion? Is the other party harming our sales? - is far more important. Similarly, if you’re dealing with open source projects, be aware of your larger reputation in the community.

Anytime someone asks me if some use is infringing or not, I can say “it depends”.


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Back To Topic List Continue Onward: Registrations

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Trademark ™ Registrations ®


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Registrations Are Insurance

  • Successful grant of registration improves your rights
  • Registration application fairly simple
  • Trademark laws vary significantly by country
    • US is first-to-use; most countries are first-to-file
  • Trademark search is different than registration
  • Registration process takes many months

.footnote.code[https://www.apache.org/foundation/marks/register]

??? Registering trademarks is a way to strengthen your ability to defend your trademark. You apply to register your trademark in any country’s trademark registrar. The registration process includes an examination to see if your mark conflicts with any pre-existing marks, as well as a public notice period that allows others to object to your registration.

A trademark search (not related to google search) is a way to lessen the risk of choosing a new trademark for a product. This legal search will at least tell you if any there are any existing registered (or applied) trademarks that are likely to conflict with your mark. Many open source projects lack the resources or direction to do proper searches or registrations. IMPORTANT: Note that many other countries besides the US are strictly first-to-file: there are no real common law rights from unregistered trademarks. NOTE: There are a lot of details about registrations that you should probably ask your lawyers about. Apache PMCs can request registration of their project name by making a request as above.


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Trademark Registration Classes

  • Registration applications must be in the proper class
    • 9: scientific instruments… and software products
    • 12: vehicles
    • 32: beer, fruit juice, mineral water
    • 33: alcoholic beverages (except beer)
    • 42: services related to computers
  • Trademarks only apply when a consumer might be confused between the products - similar functionality

??? Except for “famous” trademarks, trademarks only apply within similar or related goods - in our cases, either class 9 for software products, or class 42 for services related to computers. While classes aren’t strictly used in the likelihood of confusion test, they do often hint at differences in functionality or user segments.

The key question is: would a new consumer be confused when looking for your SuperThing software product if they saw advertisements for a bit of SuperThing office furniture? Similarly, it’s less likely a consumer looking for a dining room chair would be confused by a similar trademark for a television stand - they have different functionality.

So why would we want to register our trademarks?

International Nice class 9, which we use for software products, technically includes:“Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.”


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Registration Prevents Many Problems

  • After your registration is granted, switch ™ to ®
  • In open source, ® is often enough to deter infringers - both before, and after problems arise
  • Many vendors do trademark searches of registrations before rolling out a new brand - ensures they don’t start conflicting
  • Vendors also respect ® when an open source project complains about misuse & respond quickly

.footnote.code[https://www.apache.org/foundation/marks/register]

??? Simply having the ® means that business leaders will often back off from misuses of a mark without a conflict. Even if it does get to the lawyers, they usually will advise that contesting a registered mark that you hold is very difficult, and is not worth the money, time, and cost to fight you.

Registration is the cheapest insurance for being able to keep your brand you can get, at least in the US (only $250 fee if you file directly - plus any of your own lawyer’s costs)

There are some other legal benefits of registration - most of which you’ll never care about. What’s important, especially for open source projects, is that it makes policing use of your mark much simpler.

But if we register, don’t we have to do more work?


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Back To Topic List Continue Onward: Misunderstood Topics

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Misunderstood Trademark Topics


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Misunderstood: But It’s Open Source!

  • Open source licenses are copyright licenses
  • Rights not mentioned in a license are not granted
  • GPL v2
  • “Activities other than copying, distribution and modification are not covered by this License; they are outside its scope.”
  • Apache v2
  • “6. This License does not grant permission to use the trade names, trademarks, service marks, or product names…”

??? But it’s open source, I hear you cry! I can use it all!

No. It’s a very common misconception - trademark rights are not conveyed by any OSI-approved open source license. As any lawyer will tell you, they are copyright licenses - which does not include any trademark, patent, or other rights at all. Note that some licenses do come with a specific and limited patent grant - but not all. This point is obvious to every lawyer, and often comes as a surprise to most non-lawyers.


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Misunderstood: Duty To Police

“…trademark is a property right that an owner has a duty to police.”

  • There’s no specific law or process
  • In real life: not a big issue for open source
  • Using your own trademarks consistently is just as important as policing activities

.footnote.code[https://www.apache.org/foundation/marks/pmcs]

??? If you talk to your lawyers, they’ll warn you in dire tones about all the risks you take of abandonment unless you vigorously shoot down any and all infringers of your marks.

In real life - at least in the fast moving software world - this isn’t an issue for open source projects. The risk is only if someone else actively contests your trademark. As long as you are still using the mark in commerce and have shown some sort of policy or action you’ve taken to police your mark, you have a good defense.

This does not mean you can ignore obvious infringements - if for no other reason than the direct impact to your reputation and draw away from your user or contributor base. In most cases, the reputation behind a project as a whole is more important than the legal trademark.


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Misunderstood: First-to-File, First-to-Use

First To File

United States, Canada, India, Australia, 20+ other countries

First To Use

China, EU, Russia, most of the rest of the world

??? Trademark law varies by country. If the US, Canada, India, Australia is your primary market, then definitely start using the ™ symbol and gain those common law rights. If your primary market is the EU and rest of the world, then it’s all about if you want the hassle of applying for a registration.

Any more detailed advice needs to come from your lawyer; this is a complicated topic, especially in China, where there are a great number of trademark scams and squatters.


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Game: Spot The Lawyers

??? Let’s play a game - I call it Spot the Laywers. This game lets us see who in the room is a lawyer, because they will visibly twitch when I reveal the next slides with all-too-common misconceptions about trademarks!

.left-column[ Trademarks are just like… ]

.right-column[ copyrights! ]

.right-column[ When you register either one, you can win more compensation in an infringement lawsuit ]


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Spot The Lawyers, Round 2

.left-column[ Trademarks are also just like… ]

.right-column[ patents! ]

.right-column[ They both have to have a function: patents do things, trademarks have value only when used in commerce ]

??? No - not really - trademarks really aren’t like copyright or patents! But non-laywers often get confused with the concepts, especially between trademarks and copyrights.


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Back To Topic List Continue Onward: Resources

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FOSS Trademark Resources

  • Key resources for understanding trademarks and FOSS
    • https://opensourcebranding.org/
  • Example trademark policy for open source projects
    • http://modeltrademarkguidelines.org/
  • Legal overview of trademarks and open source
    • http://fossmarks.org/
  • Laundry list of other useful FOSS trademark sites
    • http://www.apache.org/foundation/marks/resources#other

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Thank You & Questions!

.right-column[ @ShaneCurcuru

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https://shanecurcuru.github.io/slides/ ]

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