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From "Jennifer O'Neill" <jennifer...@gmail.com>
Subject Re: Software product trademark use in training naming
Date Thu, 20 Jan 2011 03:22:07 GMT
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
On Tue, Jan 18, 2011 at 8:17 AM, Shane Curcuru <asf@shanecurcuru.org> wrote:

> "Jennifer O'Neill" <jennifer...@gmail.com> wrote:
>> Hi Shane -- I hope all has been well with you.  A quick question for more
>> background -- does ASF want to review the content and materials for any
>> classes that would be described as "certified," or would the 3rd party
>> course provider have sole discretion over what constitutes certification?
>> Cheers,
>> Jennifer
> No, the only role that the ASF will have in these situations is commenting
> on third party requests to use specific names.  The contents, methods,
> whatever, of the training are solely up to the third party to determine.
> It is unlikely any ASF project will have sufficient dedicated volunteers to
> provide "certification" or truly detailed training classes with tests to
> match.  This is typically an area that only third parties will be filling at
> the current time.
> - Shane
> Shane Curcuru wrote:
>> I'd like to get some feedback and suggestions on trademark licensing
>> strategies - in this particular case, in naming styles for software product
>> training classes using Apache marks.
>> * Background
>> Apache's primary mission is to ship software for the public good.
>> Therefore the brands and trademarks associated with the software *products*
>> that our projects ship are important to defend.  However Apache, as an
>> organization, does not typically offer that many services associated with
>> our products, other than the expected community-led email lists,
>> bugtrackers, and the like.
>> A wide variety of third parties provide training and other education for
>> some of our products, and often may wish to associate their training classes
>> with our products closely.   In many cases this will be a benefit to our
>> projects, because it will tend to increase the popularity of our software
>> products (and presumably the projects behind them).
>> Note that we both have a specific third party asking for naming
>> permissions using Apache marks at the moment, and I believe there are other
>> third parties who are likely to have the same question.
>> * Questions
>> - What naming styles should we encourage third parties to use for their
>> training classes and certifications?  I think this will become a popular
>> topic, so I'd like to publish a policy with some suggestions as to how third
>> parties can do this in a way that we're happy with.
>> - What naming styles do we need to *prevent* to ensure that our marks are
>> protected?  In particular, are there any differences between "classes",
>> "training", "certified training", or the like?  (i.e. would the phrase
>> "certified training" tend to imply a higher bar than others?)
>> This in particular is where I'd love to see some discussion, especially
>> since our primary concern is about our software products, and I'm coming to
>> realize that services (of various types) seem to be treated differently in
>> trademarks.
>> For example, an obvious third party desire will be to prominently
>> advertise certified training classes like:
>>  "BigCo Certified Developer: Apache Foo"
>> Is this something that readers here would 1) encourage, 2) look the other
>> way about, or 3) be very uncomfortable with?
>> (Note that I'm expecting that the rest of the certified training website
>> would properly attribute our Apache Foo mark, and otherwise be respectful of
>> our brands; I'm just getting ideas for primary naming.)
>> Thanks,
>> - Shane Curcuru
>>  VP, Brand Management, The Apache Software Foundation
>>  http://www.apache.org/foundation/
>> bcc: trademarks@apache.org for FYI
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