Who Owns the Project Name?

Abstract

In the United States, ownership of trade marks can be bedevilling. A trade mark registration is not a grant of rights, only recognition of already-existing rights. Instead, a trade mark is owned by the first to use it and may only be registered by the owner. But, there is no consistent rule or standard that courts apply when deciding disputes over ownership. Moreover, U.S. trade mark law eschews the concept of joint ownership, considering it inconsistent with a trade mark's role as a sole source identifier or assurer of quality. Thus, courts are in the position of having to identify a single owner of a trade mark using poorly defined law. This article will review the various ways that courts have decided who owns a trade mark when there are two claimants. It will also provide guidance to free and open source software projects about how to best manage their project names so that the project has a clear claim of ownership and its project name is fully enforceable as a trade mark.