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Validity of Trademark Claim Over Redistributed Free and Open-Source Software

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whoever1

New member
What is the name of your state? AZ

Consider the following theoretical situation:

- A new company CompanyA is formed
- CompanyA forks and redistributes several pieces of free and open-source software (also for free and through open-source distribution channels), marketing them with the CompanyA mark
- CompanyA files for protection of the CompanyA mark with declared goods under class 9 descriptive of the purposes for which the redistributed free and open-source software is likely be used

If CompanyA files under basis 1(a) after making this software available (and presumably after it had been downloaded across state lines), is this a scenario which would be considered valid under current trademark law?

For the purposes of this scenario, assume that the copyright licenses associated with all of the original free and open-source software are permissive of redistribution. Also assume that CompanyA makes few to no changes to the original free and open-source software other than for branding and/or marketing purposes.
 


quincy

Senior Member
What is the name of your state? AZ

Consider the following theoretical situation:

- A new company CompanyA is formed
- CompanyA forks and redistributes several pieces of free and open-source software (also for free and through open-source distribution channels), marketing them with the CompanyA mark
- CompanyA files for protection of the CompanyA mark with declared goods under class 9 descriptive of the purposes for which the redistributed free and open-source software is likely be used

If CompanyA files under basis 1(a) after making this software available (and presumably after it had been downloaded across state lines), is this a scenario which would be considered valid under current trademark law?

For the purposes of this scenario, assume that the copyright licenses associated with all of the original free and open-source software are permissive of redistribution. Also assume that CompanyA makes few to no changes to the original free and open-source software other than for branding and/or marketing purposes.
Is this really a hypothetical question or are you Company A?

Company A can register its trademark with the USPTO. It can register its services as a distributor of goods.

Company A cannot infringe on anyone's copyrights but can license rights from a copyright holder to distribute goods.

If Company A is not using its mark yet in commerce but will be using the mark within 6 months, it would want to file an Intent-to-Use application with the USPTO. If Company A is already in the distribution business and is using the trademark in commerce, it can file a regular trademark application.
 

whoever1

New member
This is hypothetical. I am investigating how current trademark law may not be working as intended in a software marketplace in which free and open-source software is becoming increasingly popular.

In this scenario, CompanyA is not only redistributing the software, but they are re-branding and re-marketing the software such that it is only associated with their company, not the original creator.

CompanyB creates and publishes a tool to query an online database, called CompanyB ToolB. This tool is published with a completely permissive open-source license. Copyright law is not the topic of this post, but assume that any entity has the right to copy, modify, and re-publish the source code whether or not for profit.

CompanyA duplicates ToolB's source code, re-names it to CompanyA ToolA, and makes it available for download (or purchase). As far as customers understand, they're downloading a piece of software called ToolA that is coming from a company called CompanyA.

CompanyA then applies for a trademark with the following good description: "IC 009. US 021 023 026 036 038. G & S: Computer software for interacting with online databases."

Is this a valid trademark claim?
 

quincy

Senior Member
This is hypothetical. I am investigating how current trademark law may not be working as intended in a software marketplace in which free and open-source software is becoming increasingly popular.

In this scenario, CompanyA is not only redistributing the software, but they are re-branding and re-marketing the software such that it is only associated with their company, not the original creator.

CompanyB creates and publishes a tool to query an online database, called CompanyB ToolB. This tool is published with a completely permissive open-source license. Copyright law is not the topic of this post, but assume that any entity has the right to copy, modify, and re-publish the source code whether or not for profit.

CompanyA duplicates ToolB's source code, re-names it to CompanyA ToolA, and makes it available for download (or purchase). As far as customers understand, they're downloading a piece of software called ToolA that is coming from a company called CompanyA.

CompanyA then applies for a trademark with the following good description: "IC 009. US 021 023 026 036 038. G & S: Computer software for interacting with online databases."

Is this a valid trademark claim?
Your first assumption - that it doesn't have anything to do with copyright law - might be what is tripping you up. You can only use copyrighted material as the license to use it permits.

If you are curious if you can relabel legally purchased products under your own label, however, that can be possible if the product is not patented.

We, as a rule, do not entertain hypothetical questions because they can veer off in many directions. If you have a specific legal concern, however, I would be happy to assist with your understanding of that.
 

whoever1

New member
What I meant by that assumption is "assume that CompanyB published ToolB with a license that grants any entity the right to copy, modify, and re-publish the source code whether or not for profit"

I am trying to articulate this specific circumstance well but apparently not well enough. I understand if you can't entertain hypothetical questions. Thank you.
 

quincy

Senior Member
What I meant by that assumption is "assume that CompanyB published ToolB with a license that grants any entity the right to copy, modify, and re-publish the source code whether or not for profit"

I am trying to articulate this specific circumstance well but apparently not well enough. I understand if you can't entertain hypothetical questions. Thank you.
If there is no copyright issue, you would still only be registering your business as a distribution business, distributing software, and not as a creator of the software.

Or, are you wanting to claim your business creates the software you distribute?

Yes. Hypotheticals are difficult. :)
 

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