Subject: Re: GPL and trademarks and brandnames...
From: "William C. Cheng" <william@cs.umd.edu>
Date: Sat, 07 Nov 1998 09:31:04 -0500

Russell Nelson <nelson@crynwr.com> wrote:
  | William C. Cheng writes:
  |  > I see.  It's a little bit tricky now because my company is in the process
  |  > of acquiring the trademark.  May be we should wait until we get it
  |  > before we make a GPL'ed release.  Thanks!
  | 
  | In the U.S., you acquire trademark rights by engaging in commerce
  | using the mark.  The PTO is just a registry, and defers all
  | conflicting claims to the courts.  You can pre-register a mark with
  | the intent to use it, but you have no right to defend that mark until
  | you've actually used it.  And even then someone else can come along
  | and claim prior rights.  A registered trademark (R) is only slightly
  | better than a common-law trademark (tm).  All it means is that the
  | mark is presumed to be unique and valid.  Someone could still come
  | along and prove a prior claim.
  | 
  | Basically, if you claim a trademark and you're engaging in trade, you
  | have a trademark.  Not clear to me (translation: consult a highly-paid
  | trademark lawyer) how this interacts with gratis software, where there
  | is usually no consideration paid.  You'd have to consult the case law
  | to see if gratis software qualifies for trademark protection.  I know
  | of none.  That doesn't mean it doesn't exist, merely that I've never
  | heard of anyone defending a trademark on gratis software.

Thanks for the info.  I'll discuss this with our laywer next time we meet.

We have sold copies of the software under a non-GPL license (but under the
same name) across state lines.  If we GPL our code, we will also be selling
it.  So we won't be defending a trademark on gratis software.
--
Bill Cheng // bill.cheng@acm.org <URL:http://bourbon.cs.umd.edu:8001/william/>