QUESTION
Will asking for donations on free software establish commercial use for a trademark?
Asked on Jul 09th, 2012 on Intellectual Property - Colorado
More details to this question:
I successfully registered a trademark for a little software plug-in on an "intent to use" basis. The plug-in works with Open Source software but isn''t open source itself, and I''m hiring a developer to create it. So I''ve got two puzzles to figure out: The first is the question above--I''ve got to start somewhere, and because the plug-in started as a piece of a larger OS-based project that never launched, offering it on Drupal and Wordpress etc. for donations seems logical. But will a free product launch with donations suffice in my SOU with the Trademark office? The second is: how do offer it on OS sites but still protect it I know trademarked plug-ins are offered on OS sites all over the place, but I don''t know what legal words I should use in the developer agreement or online. Thanks!
1 ANSWER
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Regarding the issue of whether accepting donations constitutes "commerce" for purposes of the registration requirements of the Trademark Act, the answer is probably not. "Commerce" requires a "sale." Since your plug-in is given away gratis, and is not conditioned upon any payment, no "sale" appears to occur. You could change this outcome by requiring a payment of any size -- as small as $0.01 -- before you transfer a copy of the plug-in.
There may be an alternative way to address this situation by rethinking the "goods" as a "service," for which you collect honor-system payments later.
I'm not sure what you have in mind by the "how do I offer it" branch of your inquiry. You can offer it under an unregistered trademark, if that's what you mean. Lots of marks are unregistered.
Answered on Jul 09th, 2012 at 4:39 PM