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?
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.
But, yes, you can trademark open source software even if you aren't charging for it. (IANAL)
actively asserted and defended in order to have legal meaning.
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.
I suppose that might open the door to the party making wider use of the trademarked term though.
>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.
I just got our "ribbon copy" (with the gold seal) yesterday!
Unfortunately for small projects registering a trademark is just not feasible. I have considered going from actual open source to source available though.
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...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.
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.
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.
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?
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.
Did we crash their server?