Thanks for the excellent question and Mark's thoughtful replies.
Mark Thomas wrote on 2/13/18 4:27 AM:
> On 12/02/18 23:24, Dave Fisher wrote:
>> Hi -
>> I think that the Incubator should adjust the proposal process when a project
>> comes in that has registered trademarks.
>> There are a few impacts to consider some of which may need to be private.
>> (1) PODLINGNAMESEARCH may not be needed.
> Maybe. I'm not so sure. The view of the ASF as to what is an acceptable
> name in terms of potential conflicts with other products may be
> different to the entity that registered the mark. For example:
> - the registering entity may have considered a narrower geographic area
> whereas the ASF tends to look globally;
> - there may have been a conflict that was acceptable to the registering
> entity that would not be acceptable to the ASF.
> I think we probably need to keep this.
Yes, we need to keep PODLINGNAMESEARCH. It's irresponsible to host a
software project without doing our own due diligence to ensure the name
we plan to use isn't stepping on someone's existing name.
>> (2) The IPMC and trademarks@ should want to understand what will need to be
>> transferred and what the timing of the transfer(s) will be - either during
>> onboarding or at graduation. We should be clear about what happens to the
>> trademark if Incubation fails either with or without a release.
> As far as I am aware the standard process is to transfer them prior to
> graduation and that this is a required step before graduation. There is
> normally a clause in the transfer agreement to the effect that if
> graduation fails, the transfer doesn't happen.
The current *requirement* is that trademark rights are legally
transferred before the board votes for creating the new TLP.
That is purposefully under-specified, because different organizations
donating projects in the past have had different expectations. Also,
the ASF does not need to do the paperwork until the podling's about to
graduate. However I'm happy to sign paperwork earlier if the donor
wants to. 
>> (3) Existing domains are also something that should be on a proposal along
>> with if these need to be continued or should be redirected. We need to be
>> clear about what happens to domains if incubation fails.
> My expectation is that these would be treated the same way as
> trademarks. Generally, we would redirect but of there are a lot of them
> we might opt to let some lapse.
Correct. If there is a major product user-facing portal, or if there
are domains that are baked into URLs within the code, the ASF would take
them on and maintain them for the life of the project. We'd also expect
to redirect all of them to the proper project.a.o domain. Any other
domains we would consider taking for a short term transition period
(just a redirect), but we would let lapse.
Domains are easier to manage than trademarks - they merely require the
transfer code, rather than officer's legal signatures. But yes, we'd
give them back on a failed graduation if they had been transferred.
>> (4) I think these items would add some additional sections to the podling
> Do you mean adding a brand section?
> What about an additional section on the proposal template? Or would it
> make more sense under 'Source and Intellectual Property Submission
> Plan'? Maybe call out in the template that this is the place to list
> trademarks, domains, etc.
Yes, a podling proposal should have an explicit section that lists:
- Registered trademarks and their owner(s)
- Any domain names the project uses
- Any other brand elements - like logos or alternate brand names - that
the project intends to donate (or, that the project is *not* donating).
Separately, I think it would be a good idea for the podling quarterly
report template to have a section or checkbox that shows their progress
to complying with the project branding policy:
 This is a factor of our volunteer-led organization, and the strength
of the APACHE brand.
- Since we rely on volunteers to manage this whole process, the
*requirement* is the minimum the ASF needs: trademark rights for TLPs.
While it would be great to have more detailed process - and volunteers
who can *reliably* and *knowledgeably* work on this as soon as a podling
proposal is accepted, we haven't had that in the past.
- Trademark assignment agreements are mostly boilerplate, and thus, easy
for counsel to review. Trademark assignments with clawback (i.e.
returning the trademark rights if a podling fails to graduate) are...
unique to the ASF, and take more volunteer time and counsel time to
draft and review.
- From a risk management perspective, waiting until graduation nears to
force the matter is not that bad. Any organization that has spent the
time and thought to donate a codebase and a brand to the ASF has a real
reason to want it to succeed. Even in the rare case where management
has second thoughts about giving up the brand, when a podling nears
graduation it's already established a strong presence at the ASF, and
it's unlikely anyone - even a new VP, Marketing at some company - would
force a rename instead of agreeing to fully transfer the trademark rights.
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