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Trademark Registration and Holding
Open Source Collective can help you register a trademark or become the registered keeper of your trademark.
Open Source Collective can work with you to register new trademarks or transfer existing trademarks to our protection.
Having a trademark registration does not prevent someone from forking the code and publishing it under a different name. OSC can also work with you, through our Open Source IP counsel, to notify those who infringe marks and, if necessary begin proceedings against abusers.
OSC does not automatically take ownership of intellectual property for projects we fiscally sponsor, but you may optionally have us hold assets, including trademarks, for your project.
Related expenses are paid from your Collective’s budget. Costs below are indicative of a typical registration.
Each of these options includes one hour with Chestek Legal to help you understand your trademarks and how to use and protect them, and advice about creating your trademark guidelines explaining how people may and may not use your name/logo. We suggest two half hour calls: one initial call to discuss strategy and a second call to review and discuss the implementation of the plan.
- US Single application for name and/or logo US (one class; price increases $350 for each additional class): $1200
- Trademark transfer - preparing assignment of single, already registered US trademark and recording assignment with the USPTO (the price of recording increases by $25 for each additional trademark): $350
A trademark is “a recognizable sign, design, or expression which identifies products or services of a particular source from those of others.” They are typically words and logos, but can also be colors, sounds and shapes. A trademark ensures that users can identify where a particular piece of software came from and who built it, which is an important tool for building trust and reputation in your project.
While open source software is created to be shared and modified, a modified version should not also be characterized as equivalent to the original through using the same name.
A trademark registration will help you stop those who put out a bad product, or even introduce malware, and pass it off as your authentic code. It will also help you stop those who try to exploit your name by creating complementary products using your name or something similar to it. Having a trademark registration does not prevent someone from forking the code and publishing it under a different name.
Unless otherwise notified we will renew your trademarks and invoice your Collective when needed. If you Collective does not have sufficient funds to renew we will notify you as soon as possible and work with you to establish a successor or let the trademark lapse.
Depending on the type of maintenance filings, the USPTO charges either $425 or $525 per class in the registration. Our fee to prepare and file the maintenance documents is $450.
Maintenance filings are due 6 years after registration and 10 years after registration. Once you make the filing for the 10 years, the maintenance is due every 10 years after that.
It’s up to you to monitor use of your trademarked name and/or logo and decide what if any action to take if you think your trademark is being infringed. As part of the setup process with Chestek Legal, you’ll get an idea of some likely scenarios and possible responses.
If an issue arises, you can take some steps yourself, like contacting the person directly and asking them to respect the trademark, or submitting takedown requests to online intermediaries like social media platforms and app stores. If the infringement occurs on a platform like GitHub, Twitter, or Facebook you can ask support that the works are removed from their services.
If you have attempted to contact those involved, and you have been ignored or rebutted, feel free to contact us at [email protected] and we will notify our legal counsel (or you can work with your lawyer of choice) who can provide legal advice, write a cease and desist letter or bring an appropriate action in court. Any action that incurs extra expense (e.g. lawyer fees) needs to be funded from your Collective budget.
A trademark is only enforceable in countries where you’ve registered it, but registering in multiple countries can be very expensive (each country multiplies the cost).
If you have the budget and wish to register in multiple countries, you can, but registering in just one country still has value. A valid trademark in any country enables you to submit takedown requests to online intermediaries (like Twitter, Google, and app stores), gives you a basis to send a cease and desist letter, and, on the positive side, opens the door to things like commercial licensing agreements.
The vast majority of trademark issues are resolved without going to court, so you don’t necessarily need to have a trademark registered in the country where the infringer lives in order to achieve some degree of compliance.
If you register your trademark in non-US countries, Chestek Legal will coordinate with lawyers in those countries to perform the services on your behalf. Their fees will be billed to you without any markup.
We include help creating your trademark guidelines in our service because it’s an important part of the process. These guidelines are normally hosted on your website, repo, or Collective page, and they help people understand how they can and cannot use your name and/or logo, and how your trademark interacts with your open source license.
If you are moving to another fiscal sponsor or starting your own entity, and that entity meets certain criteria, we can transfer your trademarks over to it (the criteria are determined by what we’re allowed to do by law as a US 501(c)(6) nonprofit, e.g. we can’t usually transfer assets to a for-profit proprietary company).
If the project is shutting down completely, or you don’t have a successor entity that we are allowed to transfer assets to, we will allow the trademarks to lapse.
If your Collective runs out of money and can’t (or doesn’t want to) pay the trademark renewal fees after 5 years (the first time) or 10 years (thereafter), we will allow the trademark to lapse. (See OSC’s terms of fiscal sponsorship section 6 for more details about termination).