Commentary:Use for Software

The "Commentary" pages are are explanatory material relevant to those adopting the Model Trademark Guidelines, like Reporter's Notes for a Restatement or advisory committee notes for model laws. They provide information to the end users of the guidelines about the legal, practical and ideological rationale embodied in the guidelines.

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U.S. law
It is not necessary that there be a sale for there to be trademark rights. See Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 59 U.S.P.Q.2d 1894, 51 Fed. R. Serv. 3d 294 (11th Cir. 2001) (distribution of COOLMAIL software over the Internet was sufficient to establish trademark rights: "[T]he existence of sales or lack thereof does not by itself determine whether an user of a mark has established ownership rights therein.").

Section entitled "Uses for which we are granting a license"
These guidelines have taken the view that any modification to the software from that found in the official repository requires a trademark license. This includes binary code that is created by a third party from source, i.e., the third-party created binary will be considered modified code. Some open source software providers have had their product combined with malicious software, which negatively affects the reputation of the open source project. For this reason, any software is considered non-authentic if the modification is beyond what is permitted in the guidelines.

U.S. law
A licensee's use of a trademark on goods or services over which the trademark owner does not exercise adequate control may be considered a “naked license” and a form of abandonment of the trademark. In the U.S., this militates that the trademark owner must be able to argue that it has adequately exercised control over the quality of the goods and services with which its mark is used.

Although a license granted to unknown users where the quality is controlled solely by describing the attributes that the goods must has never been tested in court, this should be considered adequate control. Therefore, if the adopter of these Guidelines wants to allow the use of the Marks for modified software, the Mark owner must identify a limited number of changes that will not significantly affect the quality of the goods, so that it can say with certainty that any goods using the Marks are of a known quality with known features.

A license is a defense to an infringement claim, i.e., but for the license the accused use would be a trademark infringement.

Limitations on when trademark may be used should be expressed as condition of license, not covenant, so that a failure to meet the limitation is a basis for a trademark infringement claim.

Under current U.S. jurisprudence, it is unlikely that any use of a logo would be considered a nominative/referential fair use. Therefore, permission to use the logo may be found under the licensing provisions, not as a non-infringing use.

U.S. law
U.S. Under U.S. law, resale of genuine goods is not an infringement as long as the goods are not “materially different” from the original.

Because the goods discussed in this section, software, are identical to the trademark owner's goods and the trademark is identical, any use outside the scope of the resale (or redistribution) of authentic (unmodified) goods would be an infringement. Distribution of modified software requires a license.