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From "Lawrence Rosen" <lro...@rosenlaw.com>
Subject Re: Software product trademark use in training naming
Date Thu, 20 Jan 2011 04:17:29 GMT
Jennifer O'Neill wrote the following. I like all her suggestions! (I repeat
her text here only because it appeared in a 7.5 point font in my email and I
couldn't read it at first.) /Larry




OK, thanks.  Then I would recommend that ASF only authorize course names
that (a) make it clear ASF isn't offering the certification and (b) honor
and protect Apache's trademarks by following acceptable practices.


To cover the first point, an OK name for training might be "BigCo
Certification for Apache Foo Software" or "BigCo: Training 101 for Apache
Foo Software".  By separating the Apache project name into its own
prepositional phrase, you're making it clear that BigCo, not Apache, is
offering the course (as opposed to, say "Apache Foo 101 Training by BigCo,"
which could imply that ASF put together introductory materials that BigCo is
now presenting).


On the second point, the third party should use "Apache" and other ASF
trademarks only in accordance with the following guidelines, some of which
are already set forth at  <http://www.apache.org/foundation/marks/>


(1) The (R), (TM) and (SM) symbols, where applicable, should appear the
first time the third party references that trademark or servicemark.  ASF
may want to update its list of its trademarks for this purpose to add the
applicable symbol.  (R) means it's been granted formal trademark
registration by the US PTO; (TM) and (SM) means ASF is claiming common law
trademark rights in the good or service named.


(2) I'll use "trademark" here to mean registered trademarks, "regular"
trademarks, and servicemarks.  A trademark should always be capitalized and
serve as an adjective, e.g., "Apache(R) Foo(TM) software" [I'm not sure of
the exact status of these trademarks so this is just an example].  Apache
Foo are trademarked descriptors for the software in this instance.  Other
examples of using an trademark correctly as an adjective include "Windows(R)
operating system," "Java(R) Development Kit code," and "IBM(R) server".


(3) You may want to require the third party to include a formal attribution
in their advertising and course materials that kills two birds (of a
feather) at once, e.g..


Apache and Foo are either registered trademarks or trademarks of Apache
Software Foundation in the United States and/or other countries.  The Apache
Software Foundation has no affiliation with and does not endorse, provide or
review the materials comprising this course, which is developed and offered
solely by BigCo. 


(4) ASF trademarks should not be used to describe anything other than
Apache-controlled "things," e.g., Apache Foo software.  The third party
shouldn't say "I offer Apache certification". He can say "I offer
certification in Apache Foo software," or "I offer training focused on
Apache projects."  If he developed software that was compatible with an
Apache project, he could call it "an Apache-based component" or "software
developed for use with/that works with Apache Foo software."    

(5) If you want to grant the third party the right to use the logo in
connection with the marketing and provision of the course, then the third
party should sign a trademark license with specific rules on what he/she can
do with the Apache logo.  There should be a distinctive separation between
the company name/mark and the Apache feather logo or name.

Let me know your thoughts.  I can help you put something together more
formal if desired.

Thanks -- Jennifer


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