All Apache Podlings, and any Apache® top level project (TLP) must use this process when coming up with a new project name, or when coming up with a name for a new subproject or downloadable software product.
When it comes to trademarks conflicts it might be necessary to show other parties that ASF trademarks were chosen in good faith and with appropriate research. As a non-profit, we have no business infringing on pre-existing trademarks for the software products or services from other organizations. Nor would you want to start with a new software name that's likely to be confused with some other organization's software products.
For pre-existing projects being submitted to Apache, we still need to follow this process. This ensures both that we fully understand any past or potential name conflicts around your project name, as well as to ensure that all trademark rights are properly transferred to the ASF in a timely manner during incubation. The ASF must own all trademark rights in a podling's branding before they may graduate.
You need to start this process early enough to complete your search and to give the trademarks committee time to review. Preferably start this process well before:
Please note: renaming projects (later, if a change is required) requires a lot of resources from our Infrastructure team. It is recommended to run the process as early as possible. Incubator podlings could run it after they have been accepted, but before they start to request resources. This will cause a few days delay, but might save a lot of trouble later.
After you have carefully read Project Naming And Descriptions and the trademarks main page and some common-sense hints for choosing names, make sure your PMC (Podlings: PPMC) has decided on a name. Usually this is done by a public vote.
When your PMC has decided on a name, a "suitable name search" must be done.
First, create a an issue in Suitable Names Search JIRA space. Good examples are:
Describe the origin of your name and please include a description of the product's functionality in the issue. It's important to understand what kind of functionality the product offers if there is a question with another company's similarly named software product. In particular, do not use fluff or marketing-speak here: this should be a factual description of the functionality your software provides to users.
If you are a podling where the existing name is coming along, please note if there are any registered trademark(s) for the podling. Including a list from the donor of the marks, along with a clear statement of intent to donate, is very helpful in evaluating the results.
Please consider to research at least the following sources:
Start by searching for just your chosen name, for example "Foo". If that finds a lot of hits that are clearly unrelated, try searching for "Foo software". This is the first step to narrowing to relevant results, since trademarks generally only apply within a specific class of goods - in our case, the software products we offer for download.
Note all results in the according JIRA issues. When done, inform trademarks @ apache.org that you have finished your research. Please wait until the trademarks team has responded, as we rely on Apache volunteers to organize this work.
Please don't include any interpretation in the JIRA issue, just try to note all facts you can find. If you have specific questions on what the results mean, please ask trademarks@ and include your project/podling's private mailing list (i.e. not your public dev@ list).
Perform the same search as above, but for registered trademarks. A thorough review of registered trademarks in countries your project is active in is important, because if a third party has already registered a similar name for a similar kind of software project, it is unlikely we'll be able to use the name.
Again, it is important to store the factual results of your name search, but do not offer comments or interpret the results of the search. Review of the results happens afterwards with trademarks@.
USPTO Search Tips
For common words, you will end up with a long list of mostly irrelevant registered marks, so you will want to narrow your search to only relevant kinds of marks. Try this search criteria to narrow the results:
(ProductName)[BI,TI] and (software or computer)[GS] and (live)[LD]
If this produces zero results, that's a good start: mark that in the Name Search issue! If this produces a handful of results, you will want to click through to review the Goods & Services description of each one to see if they offer similar functionality to your product. Copy the blue TDSR link (not the URL from the search, but the TDSR link within each page result) into your Name Search issue.
If the above search produces a lot of results, you may want to experiment with the USPTO's search query criteria, or review only results where the marks are directly related to your name.
USPTO Search Criteria
The above search string is a good starting search query for most software products:
Note that there is a reasonable query syntax for the USPTO freeform search, in particular if you need to search variants or phonetic versions of your name.
The trademarks team will interpret your findings and probably discuss it on email@example.com (please note: this is a private list, all messages from there should be treated as such).
The VP, Apache Brand Management will approve the PODLINGNAMESEARCH issue. Note that project members are not authorized to approve name search issues.
Important: you must wait until your trademark has been approved. There is no lazy consensus. In particular, approvals will typically not be issued until the podling is nearing graduation.
Once the name is approved, you can work with your new trademark - and be sure to update your website with the appropriate ™ or ® symbols. Incubator Podlings: please don't forget to update your Incubator status page.
Incubation is the process by which an existing community formally works towards becoming an Apache top level project. This includes the donation of various IP associated with the podling, like code and documentation, and includes the trademark rights to any branding the podling uses.
When a company donates a pre-existing project as a podling, one of the decisions to make is: are they donating the trademarks of the project as well or not? Either way is fine; however this decision should be made before the website and resources for the podling are created to avoid rework later.
If the company chooses not to donate the trademarks, then the podling should be submitted with a new name and/or logo during the acceptance process. If the trademarks are to be donated, then please read on!
The ASF must own all trademark rights and goodwill to the branding used in podlings before graduation to top level project will be approved. This is to ensure that the ASF can defend the project's brand, and that we can maintain independent governance for our projects. However the process can take some time, and we are flexible with the legal details of the transfer during incubation.
During acceptance of a podling, we require a clear statement of intent from the current trademark owner that they will donate the trademarks to the ASF before graduation. This can be via email from some officer of the existing trademark holder; it does not need to be legally binding, just socially binding, since if the trademarks are not transferred the podling won't graduate.
During incubation, the donor and the podling itself should both work to ensure the actual podling branding displayed on each website is updated to reflect the proper Apache Projectname branding everywhere. We understand this can take time; however showing progress here is an important way to help a diverse community to grow in the podling; another graduation requirement. Immaterial of the legal details, any practical work done with the trademark(s) should be by Apache policies where possible, and focusing on transitioning to "Apache Projectname" and the like.
Once a podling is well-established and before it begins any vote to graduate, the existing trademark holder needs to sign a standard trademark transfer agreement to the ASF. We appreciate it if the current owner can propose a standard agreement for our counsel's review. The podling PPMC needs to get counsel for the donor to work with firstname.lastname@example.org to agree and sign the transfer.
If a podling honestly fails incubation (i.e. they honestly try but don't make it), and we have not executed specific legal agreements to transfer any registered trademarks, then they will stay with the original donor without any problem. Unregistered trademarks aren't likely to be an issue either way.
If the trademarks have been legally transferred to the ASF, the donating organization should work with VP Brand to equitably handle the matter. The ASF's need is to protect the trademarks of all of our active project communities. Podlings that have exited incubation without graduating are not something we have a continued interest in maintaining.