The Naming Game: Things to consider when naming an open source project.
10/19/2010 2:31 PM
In the proprietary software world, most products come to life under an internal project code name. Some companies have a rigid naming structure that “generates” the code names, and other companies rely on the engineering teams to come up with their own. I have seen projects named for rivers, states, cities, state parks, and famous authors. In many cases, the code names become so well known, it is hard to consider ever changing them. As the product is being readied for prime time, typically the marketers come in and take charge of naming the product for external use. As part of this process, the marketers may engage branding firms, and almost always lawyers.
In the open source world, developers have carried the practice forward to “code name” their projects. Some developers get quite clever, and have produced some great names… some of which have real meaning, others that represent an acronym, and many that are purely made up words. To find out what some of them mean, read this post on grupthink (although I found the mispronounced domain name posting more entertaining).
Alas, in the open source world, there are not a bunch of marketing and legal professionals willing to offer up free services to project teams for naming and trademark filings. One would think that in the age of the internet, selecting a name that is free and clear of encumbrances would be as easy as a Google search, in fact it is now more challenging than ever.
Some things to consider when creating a project name:
1) If a simple search reveals the name in use by another software company or OSS project, regardless of the trademark status, give it up. Even if the company has not filed a TM application yet, they could claim the common law right of “first use”. If you are really determined, your best bet would be to call the company and ask, but the likelihood of getting their approval (in writing) is low. Legalities aside, it is bad form to tramp on someone else’s brand.
2) Take a few minutes to check the US PTO and TM database. Again, if your candidate name shows up on this list as “Live”, you will want to drop that name.
3) Don’t assume that putting a qualifier or extension on the name to distinguish it from another name will pass muster. If you create confusion with regard to your project and another brand within the same industry, you may generate a complaint.
4) Check for domain name availability. What good is a cool name if you can’t have the corresponding URL? Yes, you can consider buying it, but depending on the seller, they may be just waiting for the right opportunity to exploit someone with a vested interest for some quick cash.
5) Consider working with your project sponsor(s) to conduct a more thorough legal review, which could include:
a) A “knockout search”, which includes some legal expenditure to evaluate if you have a name that is confusingly similar to others in use
b) A more complete review, which would include searches in commercial databases (fee based) with legal review
6) If you feel this product is likely to become a commercially viable product, filing a TM application will protect you from other people using the name inappropriately. Filings start at approximately $2,500 in the US for a single category of goods and services, and grow as you expand categories and add countries/regions.
Do you have to TM a name? No. And in fact, you could assert the common law right of “first use” if someone starts using the name after you have, however, a trademark would suffer less (if any) dispute.
What if I choose a name and someone else claims they had it first? They probably checked before they made the assertion, but you can ask for proof. If they did use it first you will likely be asked to change your name. Legally, they could force the matter, but in many cases, if you comply quickly, all they are really looking for is for you to stop using it. Be a good sport about it, and have fun creating a new one.
I should disclose that I am NOT an attorney, and thus offer this as practical advice based on my ongoing experiences in marketing and branding.