Choosing name for open-source project — how to view existing trademarks/names used for other programs? [closed]

I’m trying to choose a good name for a new open-source project. The problem is, there is already so much software in the world that Google search reveals one or more existing programs with every good name I can think of (and there have been several already).

Obviously, names like “Linux” or “Windows” or “Java” or “Excel” are off-limits. But what about names which may have been used by some little-known program? Does it make a difference if the name is trademarked in one or more countries?

In one case, I found that there is a commercial software package marketed by a Canadian company, using a name which I wanted to use. The same name is trademarked in the US, but by a different company. I couldn’t find any evidence that the holder of the trademark is actually marketing software under that name. In Canada, the name is not trademarked.

In other cases, I found several programs all using the same name, some commercial, some university-student research projects. So maybe this is normal in the software industry?

What if I use a name which is not trademarked, and someone else trademarks it later? Could I face legal pressure to stop using it?

Would it help to avoid legal problems if I prefix the name? For example, say I want to call my project “Broomflip”, but other software is already being marketed under that name. If, assuming I am associated with an organization called “Hoplock”, I call it “Hoplock Broomflip”, would that be better?

I’m hoping someone with a good understanding of IP law can shed some light on some or all of the above questions. Of course, personal opinions from those without special legal knowledge are also welcome, but please try to back them up with evidence or relevant references. Anecdotal evidence is welcome.

Somehow, the number of software projects is way bigger than the number of names people can come op with for those projects, especially if you want descriptive, pronounceable names. That makes that it is only natural that there will be multiple projects with the same name.

Having multiple projects with the same or similar names is no problem, as long as people won’t be confusing those projects. Especially if the projects serve different, non overlapping, markets, then it is unlikely that there will be confusion which project is meant by the name “Broomflip”.

With trademarks, the situation is similar, except that the company holding the trademark now has better legal means to put a stop to someone else using their name in a way that could cause confusion as to what the name refers to.

Having trademarked a name also doesn’t mean that nobody else can use that name for any purpose. That depends on how well-known your name is. A name like Coca-Cola can probably not be re-used, because it is too well known, but if you are working in a niche market and have trademarked your product name, then someone else could still use that same name in a completely different context.
Trademarks also don’t work in such a way that you can force a competitor out by just trademarking their name. Then it would be too easy to stifle competition for large companies.

tl;dr: Don’t worry too much about using similar names as existing projects, as long as you don’t cause any confusion amongst users which product/project is meant by the name “Broomflip”.

I think to be on the safe side you need to pay for a name search.

That is what an article from Gamedev.net (http://www.gamedev.net/page/resources/_/business/business-and-law/legal-issues-for-rookie-development-studios-par-r1985)
says:

Trademarks
Trade and service marks, usually both called “trademarks”,
are words, symbols and other things use to identify the source of a
product in commerce. Some little know trademarks are Kodak Yellow and
the sound of a Harley. Both are protected. But usually trademarks are
names and logos. Again, from the PTO:

“A trademark is a word, name, symbol or device which is used in trade
with goods to indicate the source of the goods and to distinguish them
from the goods of others. A servicemark is the same as a trademark
except that it identifies and distinguishes the source of a service
rather than a product. The terms “trademark” and “mark” are commonly
used to refer to both trademarks and servicemarks. “Trademark rights
may be used to prevent others from using a confusingly similar mark,
but not to prevent others from making the same goods or from selling
the same goods or services under a clearly different mark. Trademarks
which are used in interstate or foreign commerce may be registered
with the Patent and Trademark Office. The registration procedure for
trademarks and general information concerning trademarks is described
in a separate pamphlet entitled ‘Basic Facts about Trademarks’.”

Trademarks are associated with a product and are limited to that
particular product type in terms of the scope of protection. So,
Domino Pizza and Domino sugar ad Domino software all get to trademark
the same word because the basic idea around trademark law is to avoid
confusion as to origination in the marketplace. Though it reaches a
point where a trademark becomes what is classified as a “famous” mark
and then the scope of protection expands across product categories.
So, forget the idea of naming your game Coca Cola!

The first thing to do if you are interested in getting a trademark is
to make sure the term you want to TM is not descriptive. For example
you cannot trademark the word “bread” for use with the sale of bread.
It is generic and descriptive. But you can certainly TM the word
“Bread” for a band (oh yeah someone already did that), or even for a
game. You also need to make sure the mark or any close variation is
not already in use. There are companies that do comprehensive name
searches – the charge for a full trademark search is usually from $400
– $1200 depending on the geographic scope – from national to worldwide. Once you determine that the mark is relatively clean,
trademarks are acquired by registering an application with the PTO,
and then waiting and waiting, responding if there is a similar mark or
if the examiner thinks it is too generic, and then, hopefully, get
your TM registered. It takes some time and effort but it is not nearly
as expensive as the patent application process mentioned above.

Not sure how that makes sense, though. You pay $1200 just to find out that you can not use the name you wanted to use?

Seems like they actually are not implicit, so you have to register the trademark to have that kind of protection.

Filed under: softwareengineering - @ 05:26

Thẻ: legal, open-source

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Choosing name for open-source project — how to view existing trademarks/names used for other programs? [closed]