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Re: Registering the Debian Logo as our trademark?



On Mon, Apr 22, 2013 at 5:01 PM, Paul Tagliamonte <paultag@debian.org> wrote:
> On Mon, Apr 22, 2013 at 04:58:27PM -0400, Brian Gupta wrote:
>> On Mon, Apr 22, 2013 at 4:09 PM, Paul Tagliamonte <paultag@debian.org> wrote:
>> > On Mon, Apr 22, 2013 at 04:04:34PM -0400, Brian Gupta wrote:
>> >> Hi all,
>> >>
>> >> I have been helping to field trademark inquiries for Debian since late
>> >> February, and the issue of our Logo has come up a number of times.
>> >>
>> >> Currently, our logo is not a registered Trademark, but is considered
>> >> (and treated by our current Trademark policy) as a "common law"
>> >> trademark, in that we have been using it to represent Debian for many
>> >> years, and many people see it and recognize it as "Debian's logo".
>> >>
>> >> I know there have been discussions in the past about moving forward
>> >> with officially registering the logo, but these discussions seem to
>> >> have not ended with a clear decision or agreement one way or another,
>> >> hence the status quo of unregistered common law trademark.
>> >>
>> >> Generally speaking, as a matter of law, it would be better if we
>> >> registered our logo as our Trademark. We had also gotten advice from
>> >> our legal counsel (SFLC) encouraging us to do so.
>> >>
>> >> I don't believe any changes would be required to our Trademark policy
>> >> to accomodate the change from "common law" to "registered" trademark,
>> >> we'd just have the benefit that we'd have an easier time protecting
>> >> it, if we ever found a need to do so.
>> >>
>> >> Here is the Debian Trademark Policy 2.0 [1] guidance on using logos:
>> >
>> > Note guidelines. We don't actually restrict use.
>> >
>> >>
>> >> "Guidelines for Using Logos
>> >>
>> >> - Any scaling must retain the original proportions of the logo.
>> >> - Do not use the Debian logos as part of your company logo or product
>> >> logo or branding itself. They can be used as part of a page describing
>> >> your products or services.
>> >> - You need not ask us for permission to use logos on your own website
>> >> solely as a hyperlink to the Debian project website."
>> >>
>> >> Some may wonder if Registering our logo as a trademark is possible
>> >> with the logo under a fairly liberal Free Software license. The answer
>> >> is yes, as Copyrights are a different set of rights than Trademark.
>> >> Bear in mind or Logo is already one of our Trademarks, we just don't
>> >> have it registered.
>> >>
>> >> Another question that one might raise is, "What if the USPTO rejects
>> >> our logo as too simple, and not creative enough?" In answer, this is
>> >> not a criteria for acceptance. If the mark is distinctive, and unique,
>> >> and isn't already registered, it doesn't really matter how simple or
>> >> complex a design is. e.g. - Think of the "Nike Swoosh".
>> >>
>> >> I would like to work to address what I perceive to be a bug, and get
>> >> our logo official registered. I spoke to leader@ (Lucas) about this,
>> >> and he said that I should first start a dicussion on -project laying
>> >> out the pros and cons, with examples of what other similar projects
>> >> are doing.
>> >>
>> >> Pros:
>> >> -----
>> >> - Makes it easier, legally speaking, to protect our trademark, if it
>> >> ever came to it
>> >
>> > We really can't. It's now DFSG free. Folks can, legally speaking, do
>> > anything with it, now. There's still the restricted-use logo, which was
>> > left as-is, ISTR.
>> >
>> >> - When companies are doing trademark searches for logos in the
>> >> trademark database, they would be discouraged from using our logo, as
>> >> it is would be in the database.
>> >> - If a company tries to register a logo trademark that is the same as
>> >> ours, the USPTO should not allow it, since it is in their database. (I
>> >> say should, as mistakes can happen)
>> >>
>> >> Cons:
>> >> -----
>> >> - Filing costs of ~$700
>> >> - Labor/work required to file (With assistance from SFLC, I am willing
>> >> to do much of the work required.)
>> >> - Required extra coordination with SPI
>> >> - If someone has already filed our logo as a trademark, we will be
>> >> forced into a situation where we need to deal with that. (I have
>> >> already done a preliminary search of the USPTO database, and found no
>> >> such occurrences, so feel this risk is minimal.)
>> >> - In order to maintain the status of a federally registered trademark,
>> >> the owner must file a statement of continued use and later, a renewal
>> >> application. (Again more work, which I am willing to do.)
>> >>
>> >> Other projects that have registered their logo:
>> >> -----------------------------------------------
>> >> - Apache - Many trademarks, including the feather
>> >> http://www.apache.org/foundation/marks/list/
>> >> - OpenOffice - Seagull logo
>> >> http://www.openoffice.org/marketing/art/galleries/logos/
>> >> - Gentoo Linux - G logo http://www.gentoo.org/main/en/name-logo.xml
>> >> - Fedora - Multiple logos http://fedoraproject.org/wiki/Logo/UsageGuidelines
>> >> - Drupal CMS - Druplicon logo http://drupal.org/node/9068
>> >> http://drupal.com/trademark
>> >> - Gnome - Gnome Foot http://www.gnome.org/foundation/legal-and-trademarks/
>> >> - Mozilla - Multiple logos (Firefox, Thunderbird and Mozilla)
>> >> http://blog.mozilla.org/press/media-library/
>> >> - KDE - KDE and the K Desktop Environment logos
>> >> http://techbase.kde.org/Template:KDE_Trademark_Notice
>> >
>> > Do any of these also have a DFSG free logo? I know GNOME at least has
>> > been pissy about our use of their foot on some bug report / ml post I
>> > read.
>>
>> Regarding the logo being licensed (under Copyright law) with a DFSG
>> approved license, this does not impact our ability to file it as a
>> registered Trademark.
>>
>> While this is confusing, and not a universal practice, other projects
>> have followed this practice of releasing the artwork of their logo
>> under Free Software copyright licenses, while still managing them as a
>> Registered Trademark.
>> 1) KDE logo is licensed under LGPL and is a registered Trademark:
>> http://www.kde.org/stuff/clipart.php
>> http://techbase.kde.org/Development/Guidelines/CIG/KDE_Logo
>> 1) Gnome foot is licensed under LGPL/GPL and is a registered
>> Trademark: (Pretty much all artwork including the foot is licensed
>> under Copyright law under LGPL/GPL).
>> 3) Gentoo - Registered as TM and released under Free Software licenses
>> here: http://www.gentoo.org/proj/en/desktop/artwork/artwork.xml
>>
>> Do remember that Copyright law covers the right to copy and modify,
>> while Trademark law covers the ability to use a word, or graphic to
>> represent a brand or entity. A particular representation of a
>> Trademark, can be licensed in a liberal fashion, allowing copying and
>> modification, but still be managed under Trademark law, when it comes
>> to representation of a "brand". In all the above cases the project's
>> TM policy would take precedence over the Copyright policy, when it
>> comes to the specific case of representation of project/brand. (As it
>> does with our logo today.)
>
> It's my impression that if a trademark is unenforced, one can't start
> selectively asserting the trademark for others.

We do have the ability to be selective in granting of licenses to use
our TM. If there are undocumented, unlicensed uses of the TM that the
project supports, we need to document them and get them under license.
On the flip side, if there are undocumented uses of the TM, that we do
not support, we should challenge them. We could also augment our TM
policy to be more explicit about what uses of the logo are allowed,
but it is my opinion that it would probably be best to leave those to
be dealt with on a case by case basis for now, as it keeps our policy
simpler.

> Doesn't that mean, in that case, that the license is meaningless, since
> they could never ever use it anyway, even if they have the right to
> remix it?

Meaningless, I would say not. However it might not produce the results
one might expect when combined with our TM policy, which states: "Do
not use the Debian logos as part of your company logo or product logo
or branding itself. They can be used as part of a page describing your
products or services."

Remember our Trademarks can always be used in a nominative fashion, to
refer to the project/product iself.

>> I know this is a bit confusing, as it certainly made my head hurt when
>> first learning about these issues, but does this help clarify things?
>>
>> -Brian
>>
>> >
>> >>
>> >> So far in my search of other large Free Software Projects that have a
>> >> singular graphical identify, pretty much all have a registered
>> >> graphical trademark, with the exception of the GNU project's "gnuhead"
>> >> logo. (However, FSF does still treat it as a trademark
>> >> http://www.gnu.org/graphics/agnuhead.html)
>> >>
>> >> What do people feel about proceeding with this registration?
>> >>
>> >> Thanks,
>> >> Brian
>> >>
>> >> [1] - http://www.debian.org/trademark
>> >>
>> >>
>> >> --
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>> >>
>> >
>> > Cheers,
>> >   Paul
>> >
>> > --
>> >  .''`.  Paul Tagliamonte <paultag@debian.org>
>> > : :'  : Proud Debian Developer
>> > `. `'`  4096R / 8F04 9AD8 2C92 066C 7352  D28A 7B58 5B30 807C 2A87
>> >  `-     http://people.debian.org/~paultag
>
> --
>  .''`.  Paul Tagliamonte <paultag@debian.org>
> : :'  : Proud Debian Developer
> `. `'`  4096R / 8F04 9AD8 2C92 066C 7352  D28A 7B58 5B30 807C 2A87
>  `-     http://people.debian.org/~paultag


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