[IAEP] Scenarios for licensing our trademarks

[C. Scott Ananian]

On Fri, Jan 29, 2010 at 12:04 PM, Sean DALY <sdaly.be at gmail.com> wrote:
> A budding brand like ours needs protection to grow, but also needs
> exposure to grow. Approving trademark licensing applications on the
> basis of a functioning e-mail address will not assure our brand's
> protection - we need to do a basic minimum of checking. Prevention
> will be far more economical in time & energy, and fruitful for a
> cooperative relationship, than the cure of chasing after those who
> damage our marks (perhaps even inadvertently since they never had a
> contact to ask questions to).

There are a lot of assumptions here, not all of which are obviously true.

It would be worthwhile to review the Mozilla trademark policy more
closely: http://www.mozilla.org/foundation/trademarks/

It has been viewed as a counter-example, but I think that's mostly
reflex from the Iceweasel debacle (which involved a lot of
grandstanding and showboating on both sides); IMO their policy has a
lot of good features.

The "Community Edition" trademark policy grants you an automatic
license to the Mozilla/Firefox marks if you comply with a set of
conditions.  The details aren't strictly relevant to this discussion
(but it might be worth keeping in mind that the Firefox Sugar activity
could have been made to comply with the "Community Edition"
restrictions, I just didn't have time to do so).

It is an automatic license, in particular:

"It is very important that Community Releases of Firefox and
Thunderbird maintain (or even exceed!) the quality level people have
come to associate with Mozilla Firefox and Mozilla Thunderbird. We
need to ensure this, but we don't want to get in people's way. So, we
are taking an optimistic approach.

Official L10n teams can start using the "Firefox Community Edition"
and "Thunderbird Community Edition" trademarks from day one, but the
Mozilla Foundation may require teams to stop doing so in the future if
they are redistributing software with low quality and efforts to
remedy the situation have not succeeded. Doing things this way allows
us to give as much freedom to people as possible, while maintaining
our trademarks as a mark of quality (which we are required to do in
order to keep them).

In particular, when making changes to preferences or adding in
extensions or plugins, we recommend that localization teams contact
the Mozilla Foundation in advance to discuss any quality concerns that
may arise. Rigorous testing of the effects of these extensions and
plugins is generally necessary to ensure high quality."
http://www.mozilla.org/foundation/trademarks/l10n-policy.html

This seemed a sane and sensible policy to me; I think it would be a
very reasonable approach for Sugar as well.
 --scott

ps. Discussions about "ease of enforcement" should really be made in
conjunction with actual plans and budgets for enforcement.  In the
absence of any dedicated funds for legal remedy, trademark defense is
pretty toothless -- you're almost better off in that case maintaining
ignorance of violators, since non-prosecution of parties known to be
in violation of the trademark can cause the trademark to be removed
for "non-use".  In the absence of a better public citation, I'll point
to Wikipedia:
http://en.wikipedia.org/wiki/Trademark#Maintaining_trademark_rights

-- 
                         ( http://cscott.net/ )