Podling Name Search Guide
Introduction
DISCLAIMER: This guide is not legal advice or legal opinion: do not use it as a substitute. Its aims are education and information only.
One of the graduation requirements for an incubating project is to check its name for trademark issues. The reason for this requirement is to help prevent possible confusion or legal trouble caused by unsuitable project names. The level of effort that should be spent on this name check depends on the project: the more important you think that trademark protection are to your project, the more effort you should making sure that the project name is protectable in the first place.
The aim of the name search process is to to verify that a name is acceptable and suitable to the project community. The best time for this search is already before the name of a project is decided. For example, if you're having a community vote on proposed project names, it's a good idea to check at least the most popular candidates for suitability before the final vote. Having to rename your project later on is always disruptive, so its a good idea to spend some effort on this as early as possible.
This guide describes a process by which you can establish a pretty solid record of the suitability (or not) of the name of your project. Note that this guide is not a strict requirement for all projects, just a recommended best practice. For example, if you already have an established project name and have verified its suitability earlier, repeating the exercise is not needed for graduation. Please contact the Incubator general mailing list for any questions about the name check.
Meet The Apache Branding Team
Names fall within the responsibilities of the V.P., Brand Management (and team). Please start by reading:
- the Apache Trademark Policy
(which introduces trademarks and outlines our policy); - the Apache Trademark FAQs
(which answers questions asked by downstream consumers); and - the Apache Project Branding Requirements
(which guides PMCs).
For podlings in the Incubator, naming issues are managed co-operatively by the Brand and Incubator communities. Rules for podlings include all branding requirements for PMCs, plus a few extras.
Trademarks
Trademark law is a complex subject. Distinctive differences from other intellectual property laws (such as patent or copyright) mean that intuition or knowledge gained from other areas may not be applicable. The Apache Software Foundation is a US corporation. Developing some understanding of the basic principles of US trademark law is therefore important.
Please read:
- Description of key trademark principles for Apache projects;
- USPTO trademark
- US Trademark Law WikiBook; and
- Passport Without A Visa: Open Source Software Licensing and Trademarks by Tiki Dare and Harvey Anderson in the International Free and Open Source Software Law Review.
Trademarks And The Apache License
Like many open source licenses, the Apache License, Version 2.0 focuses on granting copyright and patent rights to the public. The trademark section permits only very limited trademark rights.
6. Trademarks. This License does not grant permission to use the trade names, trademarks, service marks, or product names of the Licensor, except as required for reasonable and customary use in describing the origin of the Work and reproducing the content of the NOTICE file.
All Apache projects share the Apache License. This issues standard copy and patent rights to downstream consumers. Trademark rights for Apache products are issued and managed independently, beyond the Apache License. This allows Apache communities to use trademark law to protect their reputation and that of the Foundation, within the broader framework provided by the Brand team.
What Makes A Name Good
Good names for commercial products or UNIX utilities have tended to work less well here at Apache.
Many successful Apache project names are memorable, unusual and a little
whimsical.
These qualities also happen to be useful when it comes to securing trademark protection.
Have fun. Be creative.
Podling Suitable Name Search
The remainder of this document describes a recommended process for checking the suitability of a project name. We call this process the suitable name search to avoid potential confusion with phrases like trademark search that have technical meanings in the trademark community. Please be careful with language. In particular:
- avoid using loaded technical legal terms;
- use plain, simple English to describe what you did and what you found;
- avoid speculation; and
- don't offer advice or opinions.
Conducting A Suitable Name Search
A suitable name search has public and private elements. The tracker provides the public record. Incubator best practice evolves over time, documentation lags. The public records of past searches are a primary source of guidance. Review now the records of previous searches, beginning with the most recent then working back.
The public record consists of actions (how you searched) and facts (what your search found). In particular, in all public forums (mailing lists, issue trackers and so on):
- Do not speculate.
- Do not use loaded technical legal language.
- Do not offer
- opinions,
- advice,
- interpretation, or
- analysis.
Use the public lists in the Incubator to ask questions about how the search should be conducted. Once the information is collected and collated, then ask the trademark team to help interpret and analyse these results on the private lists, copying in the PPMC. Finally discuss the results of your investigation on the private PPMC list. Whether a name is suitable or unsuitable (or somewhere in between) should be recorded when the issue is closed.
Eliminate Unsuitable Names
To be suitable, a name needs to be
- judged appropriate by the wider community; and
- unique enough to avoid confusion
Facts and activities performed are recorded for the public. Interpretation and analysis of these facts happens on private mailing lists, the PPMC private in the first instance. Whether the name proved suitable or unsuitable should be entered into the public record but take care to use our language (ethically unsuitable or not unique enough) and to avoid loaded legal terms.
Appropriateness
Some names are not appropriate for open source projects. Acceptability under US Trademark Law is a good base line. This excludes marks that
Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute;
Proposals with inappropriate names are unlikely to pass the initial hustings but spend a few moments considering whether anything has been missed. Check for alternative meanings, perhaps in foreign languages.
Unique Enough Names
The name needs be unique enough to avoid confusion with software that already exists. For the community to be able to protect its reputation for quality and openness, its name needs to unique enough to have potential as a trademark.
But this isn't only about being able to register trademark protection. Ethics also plays a role. Even where a name may offer enough protection, existing adoption of the name by an active community may mean that the choice needs to be eliminated on ethical grounds. There is some judgment involved in this decision. So, involve the wider Incubator community if a name is already used.
How To Collect Evidence Of Uniqueness
To decide whether a potential name is unique enough to be suitable
- Collect evidence about current name usage.
- Record the facts.
- Analyse and interpret these facts; in private with help from the brand team.
- Reach consensus about whether the name is unique enough.
- Record whether the name is suitable.
- If unsuitable then the community should pick a more unique name and repeat this process.
Evidence Of Open Source Adoption
Existing adoption amongst another active open source community may give ethical reasons for eliminating a name. This is an example of a condition with a fractal boundary. Not every name which has been used before need be eliminated as unsuitable but this is an issue which needs to be discussed more widely and a consensus reached with the broad Incubator community.
Look for evidence of existing adoption amongst open source communities by searching well known foundries (for example GitHub and Sourceforge) and the web (use several search engines for example Bing, Google and Yahoo). Review recent records for contemporary details about where to search. Record each search and describe the results.
If the name been used by the same community before it arrived at Apache, that's fine but should be noted in the record.
Evidence Of Registration
A number of online resources exist which may help to discover evidence of competing registered trademarks. Not every trademark is registered. Not every registered trademark is listed in these resources. Even if evidence is found of existing registrations, this does not necessary eliminate the proposed name. Just record the facts. Leave analysis and interpretation to private lists. When a search returns a large number of hits, focus on live registrations related to software.
The foremost online resource is TESS run by USPTO. Before using TESS, please browse the documentation links from USPTO trademark home.
Other resources which allow cheap searches of their databases exist but are often ephemeral. Review the records for the state of this art.
Evidence Of Use On The World Wide Web
Registration of trademark is not required. Rights may also be obtained by use of a mark in commerce.
Use a variety of web search engines (for example, bing, google and yahoo) to survey usage on the world wide web.
- The results returned by a search for the name itself may provide evidence of well known usages of the term.
- The results returned by searching for the name and
softwaremay provide evidence of existing use in trade.