One of the first steps any open source project takes is choosing a name (and possibly a logo). Project names and logos (referred to collectively as "marks" in this document) should be distinctive and should avoid incorporating the names and logos of third parties and third-party products.
As with other products and services, the names and logos of open source projects (including nonprofit projects) are the project's trademarks. A well-chosen mark can confer upon the project the exclusive right to use that mark under applicable trademark laws, as well as the right to exclude others from using the same or confusingly similar marks. Without taking care, however, it is easy to choose a mark that cannot be protected, or that may infringe upon another's rights. FINOS does not register all its projects' marks as trademarks, but the rules for selecting marks that can be registered are still useful guidelines when choosing a brand.
This guide is intended to help FINOS projects select good marks and limit the potential for conflicts. This guidance is not a substitute for legal advice. If you have questions about a name or logo you would like to use for your project, please contact FINOS at email@example.com.
Guidelines for Choosing Appropriate Names and Logos
When choosing a mark, projects should follow these guidelines to ensure that your project's marks do not infringe the rights of third parties or create liability for the project or FINOS. Projects should avoid marks that:
- Imply a particular level of service or might otherwise create liability (e.g. supported, secure, fastest, etc.)
- Are so general that they imply the project is the only, or standard, solution for certain area of technology, especially if no wide support exists amongst FINOS Members and contributors
- Do not include references to other products or (third-party) projects, except where explicitly allowed by the owner, or in a way that makes clear that there's no endorsement by or affiliation with the owner
If you have any questions about whether a particular mark meets FINOS's criteria, please contact us at firstname.lastname@example.org.
Choosing Marks that Can Be Registered as Trademarks
FINOS does not register trademarks for all project marks, and does not require that projects choose marks that can be registered as trademarks. However, for some projects it may be appropriate to file for trademark protection. This section and those that follow contain guidelines for selecting a mark that is suitable for registration.
This is how the US Patent and Trademark Office defines a trademark:
- A trademark is generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.
- A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than goods.
A trademark protects the name or logo of a product or service. Trademarks exist as much to protect consumers as to protect their owners: they assure consumers that products associated with a mark come from the owner of that mark. Trademarks are different from copyrights, which protect original works of authorship, and patents, which protect inventions.
Characteristics of a Strong Trademark
Because trademarks are intended to uniquely associate a product with its producer, a trademark must be distinctive to qualify for protection (and registration) under trademark laws. That is, the mark must be sufficiently different from other marks used in the same market or industry that it adequately distinguishes one product from another.
To ensure that a mark is distinctive, projects should avoid:
- Generic marks that employ words or designs commonly used to refer to a class of products generally. For example, "Software" as a name for computer software would be generic.
- Descriptive marks that merely describe the product. Descriptive marks are similar to generic marks, but include a broader category of marks. For example, "Fast Sort" for a data-sorting library is descriptive. Unlike generic marks, it is possible for descriptive marks to be registered, if through their use in commerce they come to take on "secondary meaning" in the minds of consumers (i.e. to become uniquely associated with the product in the relevant market) and therefore acquire distinctiveness. However, this result is not guaranteed and descriptive marks should therefore generally be avoided.
- Common words or phrases. The more common, the more likely it's used on products of all kinds, and when you get to your trademark search, you're likely to get lots of results, including in relevant markets.
The strongest marks are those that do not directly describe the product. They are generally categorized (in order from strongest to weakest) as:
- Fanciful marks bearing no meaning except to designate the product. A common example is "XEROX" for copiers.
- Arbitrary marks may contain words with an independent meaning, but with no connection to the product. For example, "APPLE" for computers.
- Suggestive marks suggest qualities or characteristics of the product but do not directly describe them like a descriptive mark does. For example, "WIKIPEDIA" suggests a wiki website containing an encyclopedia, but in the form of a made-up portmanteau.
By selecting a name or logo that meets these criteria, projects are more likely to end up with a distinctive mark that can be protected from confusingly similar uses.
Doing a Trademark Search
Choosing a mark that fits the criteria above isn't always enough. If someone else is already using the mark (or a confusingly similar one) in a related market, the mark may infringe that third-party mark (or at least be impossible to register or protect). Before settling on a mark, it's important to ensure there are no directly conflicting marks already out there. A thorough search typically requires the help of an experienced trademark attorney. However, you can do an initial search yourself to ensure there are no obvious conflicts. This usually involves:
- A few internet searches on the mark and other relevant words (e.g. "foobar computer software") to see if there are others using the mark for similar goods or services.
- Searching the USPTO TESS Database to see if the same or similar marks are registered for similar goods or services in the US. The TESS search interface can be a little intimidating -- this guide includes some useful tips for running a complete search. It may be necessary to narrow your search to the classes of goods and services that your product falls under. Each trademark registration must specify one of 45 internationally recognized classes of goods and services. If your initial search turns up too many results across all classes, limiting your search to relevant classes (like Class 9 for software, or Class 42 for software services, or Class 36 for financial services) can make the results easier to comb through.
- Searching trademark databases in other jurisdictions where the mark is likely to be used:
- European Union: https://www.tmdn.org/tmview/welcome
- United Kingdom: https://www.gov.uk/search-for-trademark
- Switzerland: https://www.swissreg.ch/srclient/faces/jsp/start.jsp
- Benelux (Belgium, Netherlands, and Luxembourg): https://www.boip.int/en/trademarks-register
- For more international databases, see the WIPO database: https://www.wipo.int/amc/en/trademark/output.html
No trademark search can 100% exclude the possibility of a competing mark, but by taking these steps, you can avoid choosing a name with obvious conflicts. When brainstorming names, it's often a good idea to come up with several potential options, because one or more is likely to be knocked out by your initial search.
When to Register a Trademark
FINOS does not register the trademarks of all of its projects, as the costs would be prohibitive. If you'd like to discuss registration, please contact us at finos.org and we can discuss whether it's appropriate in your project's case.
How does FINOS protect a project brand?
FINOS generally endeavors to monitors usage of FINOS project brands and the FINOS brand itself for compliance with the FINOS trademark guidelines. Additionally, if the FINOS team becomes aware of alleged technical misrepresentations on a FINOS project in the public press, it will work with the Project maintainers to validate veracity of the statements and take actions as needed.
Please email email@example.com if you'd like to report misuse of FINOS projects brands.