Thanks very much for your replies. Gerber
On Thu, 2010-11-18 at 08:59 -0800, r...@packetlaw.com wrote:
On Nov 18, 2010, at 7:31 AM, Gerber van der Graaf wrote:
I have a question concerning trademark name infringement for a GPL
software I and a colleagues are working on. The company OpenCFD
(http://www.cfd-online.com/) issued software for Computational Fluids
Dynamics (CFD) called 'OpenFOAM' under the GPL license
(http://www.openfoam.com/). The abbreviation FOAM is an invent of the
company and means Field Operation And Manipulation.
FYI, OpenCFD Limited appears to have only the single U.S. registered
trademark OpenFOAM (registration no. 3,462,576). This does not rule out
common law trademarks.
We have modernized the entire configuration / compilation system of
this software using CMake. In order to publish our improvements we
have issued the software package under the name 'FreeFOAM', referring
to the company, the original software and keeping all author rights in
the existing files (http://freefoam.sourceforge.net/).
In that context, you may have valid defenses to likelihood of confusion
arguments...
Recently another user started the OpenFOAM Documentation Project
(ODP) and promptly received a letter of thread to bring the project to
court because of trademark infringement.
Do you happen to have a copy of this letter, or the language they used?
No, I do not have it by myself. But as we are joining our eforts, it
might be a good idea to ask for it at the author of ODP.
BTW, I think you mean threat, not thread.
Sure, apologizes. English is not my native language.
1) Wait until we will receive such a thread. The advance is we can
keep the FreeFOAM name that associates the project with the original
OpenFOAM project and will not break-up its large user community. The
drawback is uncertainty and fear.
2) Change the name of the project. Would this be sufficient to avoid
trademark name infringement?
Not necessarily. OpenCFD could always, if they were so inclined, pursue the
matter based on previous infringement. How likely they are to do so is a
question I don't think anyone here can answer, but litigation is annoying and
expensive. Most companies prefer to make things go away with a
cease-and-desist letter.
3) Or is it required to change the name of the project and all its
libraries, binaries, file names etc. that include the word 'FOAM'? This
would bring a lot of work and maintenance, among synchronization with
the OpenFOAM project. Probably the history of the git repo will be
(partly) lost.
Under-the-hood stuff (libraries etc) that the end user never sees, likely
don't need to be changed. Programmers are unlikely to be confused as to the
origin of the GPL software, especially if they're the ones downloading them
from SourceForge. It's not a zero risk, however.
4) Another option is to write the company asking for a letter of
declaration it will not pose a thread against the FreeFOAM project
because of trademark name infringement. Is this done before and, if
so, what are the experiences? Will such a letter hold in court once
the company will decide to pose a legal thread?
A letter stating an intent not to sue might be useful in some contexts
(inducement, possibly laches, etc), but isn't all that binding. It's better
than nothing. But if you can get one, I'd recommend an affirmative grant of
rights to use the FreeFOAM mark (and they'll almost certainly want it to be
crystal clear that OpenCFD is not affiliated, the source provider, etc., of
the FreeFOAM project).
Some other questions remain:
Will the domain name for a software project give legal rights as primary
owner of a (trademark) name? Or, to put it in other words: is legal
trademark registration of GPL software required? If so, how to do this?
What are the costs?
I'm not sure what you're asking here. Domain names and trademarks have
interfaces between them ... Registering a domain name and using it can be
evidence of use in commerce for a secondary meaning showing, trademark
ownership gives you certain presumptions in, e.g., UDRP proceedings and
1125(d) rights, etc. But registering a domain name by itself does not convey
any affirmative legal rights.
Also, registration of a trademark is preferred (a registered trademark is
presumed to be valid, etc), but not required. You can assert common-law
trademark rights without registration, in the U.S. at least. It'll be more of
a slog, but it's doable.
Any recommendations or suggestions are welcome.
Talk to a trademark attorney. Get real legal advice. (I am an attorney, I do
do trademark work, but this is not legal advice and does not create an
attorney-client relationship.)
I will do that. Thanks again for your help.
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