Translation of the book "Social Architecture": Trademarks for open source projects

Trade marks. What are they, do you need them and how much does it cost? These questions often arise when building an open source project. Trademarks may be the key that will protect the project from unscrupulous people. Although there is little to advise. Therefore, here is my guide to the use of trademarks in the open source project. This is practical advice, not legal, because I'm definitely not your attorney.

Little about brands

First definition. A trademark is a name, phrase, logo or specific color (“tag”) that you use for business (“trade”). The mere use of a mark for a certain amount of time creates a trademark. But, as with any other property, the devil is in the rights and obligations associated with it. The question is always the same: if you come to the judge with a complaint, what requirements for evidence will he demand or expect from you?

It doesn’t matter whether it’s a criminal or a civil case, it always comes down to convincing one or more people. If you ever go to court, keep that in mind. The facts of the case, and each side knows them, is not important. What matters is how these facts have been documented and will be presented.

Let's look back a little and ask why the courts are generally worried about protecting their brands. Firstly, to protect consumers from dishonest sales tactics. Selling garbage is not a crime in itself, if minimum health and safety standards are not violated. However, the sale of garbage under the guise of something more expensive, known is a crime. Secondly, trademarks allow companies to stand out and prevent unfair competition. Therefore, a trademark judge in a breach of a trademark will ask: “Was there an intention to deceive the consumer? A reasonable consumer would be misled? ”And then the judge will ask:“ Who owns the trademark and how can he prove it? ”. And although the very fact of using a mark is this evidence (according to the so-called common law system), it can be difficult to establish. For example, company A opens a chain of restaurants. Company B opens a competing restaurant chain using the same colors and similar name. It is clear that B is making money by investing A in advertising, reputation. However, when A is seeking judicial review of the case, B submits to the court a document in which the plans for the development of the restaurant chain are indicated, starting a year before A appears on the scene. How can a judge figure out which of them is lying?
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In extremely clear cases, you can convince the judge that the copycat is deceiving consumers and stealing your good name. However, the risk of injury is still high. It is also expensive for courts to work with these suits. Judges may simply refuse to consider them.

Therefore, many countries provide the opportunity to register your trademark for a fee. Registration allows you to get a dated document that confirms your claim to the trademark. The institution dealing with this issue is looking at the archive for previously filed applications for trademarks in this area. Before you approve registration, it publishes your application and gives others time to challenge it. After the search and in the absence of claims, the registration of your trademark in court will serve as convincing evidence.

However, things are not so simple. A competitor may still claim that his trademark in accordance with the general law prevails over your registered. In a dispute, he may indicate that your trademark does not reflect your “good” intentions (your goodwill). Often it is represented as follows: “if you do not use your trademark, then you lose it”, which is not entirely accurate. As a trademark holder, you cannot maintain order throughout the world. However, you are expected to honestly answer the judge's question: “Do you use your trademark and suffer losses from unfair competition?”.

Finally, the courts believe that trademarks should correspond to market segments. Therefore, you can have "XYZ Auto" and "XYZ Textiles", without any confusion in the market. When you register a trademark, you must explain to which “class” it belongs. You probably want to specify an international class 9, which gets everything that picks up (emits tone-modulated signals).

Where and how to register a trademark

If you are a large enough organization and you need to register in different countries, then you can certainly afford the lawyers specializing in this. For everyone else, this is like buying a domain name. It is clear that there are hundreds of domain zones. However, for our core business, we still want .com.

Similarly with trademarks. If you decide to register, do it first in the US (via the USPTO). It is cheap and easy. Then, over time, you can register in the EU (through OHIM), if you think that your project is worth it.

The cost of registration in the United States hovers around $ 1,500, depending on the lawyer you choose. You can choose it online. They will ask you for details regarding the trademark, evidence of its use, the name and address of the registrant and credit card details. The procedure takes six months. After nine years (but before the expiry of ten years), you can update the trademark.

Getting registration in the US will speed up this process in other countries if you come to this later. There is a small risk that a troll will register your trademark in another country, effectively removing you from doing business under that name there.

Yet, before registering, ask yourself: “What is the probability that someone will steal my name or logo?” If it’s low, don’t worry. If high, then "what is the probability that a rogue will go to court with this?" If low again - do not worry again.

Instead of registering, you can try to increase its visibility. Those. Let it be listed on your website and on documents. “Z, Y, and Z are trademarks of I Corporation.” This will scare off potential fraudsters, strengthen your position, if it comes to court, simplify registration, if and when it reaches.

How to strengthen your brand

Registered it or not, you can strengthen it by telling the other party in writing "stop immediately or ...". If they do not stop, you continue repeating the warnings along with the initial claims for compensation for the damage. If they do not stop, keep records of the damage they have inflicted, and when its value looks impressive, go to court with this.

Most will stop right away. The problem is with those who are knowledgeable about the laws relating to trademarks, and which lawyers cheaply cost and enjoy lawsuits.

If you are confronted with such a company, and your brand is not registered, then you just have to lay down arms and change the name. The risks are too high that you will lose and will have to pay high court fees and compensation for damages. Judges are not always right.

If your trademark has been registered by you, then you need to continue the fight and demand compensation. You will win if you follow the basic rules (you are still using the brand, the damage is real). Is it worth mentioning that any case should be considered in the country of registration? A Belgian court will not accept paper from the USPTO.

Trademarks for open source projects

There is often a misconception regarding open source projects: if the code is open, then it is not an object of property and has no value. Quite the contrary: successful projects cost quite a lot and belong to many. How does a trademark reflect this and protect value?

It is about authenticity and reputation. If you upload a data package called "XYZ v2.0", then you can expect that the data is compatible, everything will work, that there will be no Trojans or advertising, because it is from the same command as "XYZ v1.0".

If the joint project does not have a registered name, then anyone can fork it, repack and use the same name. Imagine competing, incompatible versions of Linux.

It happens that when a person or company decides to register a name as a trademark, these incompatible forks already exist. However, they cannot use your trademark. If they do so, then we return, see above about the damage.

This happened to me at least once in my own projects, and then, using a trademark, I was able to eliminate incompatible forks and punish offenders. The trademark law is so clear that we can say that your statement about its violation against the malefactors will end 99% of the scam cases. Obtaining a registration number will end up with the remaining 99% of cases. In such serious projects as ZeroMQ you will have three or four brands that you want to register in the period from five to ten years. Register only if it is worth it. Those. those brands that you are willing to defend in court. Consider that in the worst case, you can spend ten or twenty times more than the cost of registering to protect a trademark. Maybe you will return the money, but maybe not.

I hope this summary has helped you understand the issue of trademarks and their use (or not use) in open source projects, as well as how you can protect yourself from other people's accusations of using their trademarks (hint: ask them to provide a registration number ).

To be continued...

Translation of the book "Social Architecture":

• Preface. Crowd wisdom
• Chapter 1. Toolkit
• Chapter 2
  - Emotional burnout of volunteers
  - How to capture / protect an open-source project
  - The myth of individual intelligence
• Chapter 3
  - ZeroMQ Community
  - Psychology of software architecture
  - Importance of contracts
  - 4 steps to a self-governing community
• Chapter 5
  - Design, development, innovation
  - Stratagem for success open source projects
• Chapter 6. Living Systems

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