Regarding the legal use of a trademarked name in my Android application's package name

Question

I'm not sure if this is the correct place to ask, but I had a quick question regarding using the word/trademark "GitHub" in my Android application's source code (not that actual part that users can view).

I am considering developing and distributing an Android application on the Google Play Store. I was following along with the Android Developer docs on creating an Android app (https://developer.android.com/training/basics/firstapp/creating-project) and came across Step 4, where I needed to "configure the project".

In the tutorial, the docs recommended entering the value "com.example.myfirstapp" for the package name. I am now attempting to create an actual application (not a Hello World app).

I am currently utilizing the free tier of GitHub Pages for my personal website, and plan to create an Organization Pages site that is structured like so: "https://myfirstapp.github.io/". If I used that site structure for my package name, it would look like this: "io.github.myfirstapp.myfirstapp" ("myfirstapp" is twice because it is the name of the website and then the name of the actual app).

However, I was wondering if I could legally use the word "GitHub" in my package name since I believe it is trademarked? I plan to sell this application to users, so I would be profiting from this app. Note that I am not planning to use the word "GitHub" in the name of my app when I market it on the Google Play Store (I wouldn't call my app "The GitHub App!", etc.).

I was trying to create my first app and I was on a low budget, so I decided that I should make use of the free option of GitHub Pages (pages.github.com) to market my app. The free option of GitHub Pages provides me with a URL that has the word "GitHub" in it: "example.github.io". The above is only background details - my question is not regarding that. I was inquiring specifically about using that URL with the word "GitHub" in the source code of my Android app. I plan to open-source the app on GitHub, so obviously, the source code would be visible to anyone who was interested in viewing it. So, I am in fact wondering if I can legally "use the word 'GitHub' in [the] source code 'not the part that users can view'". I know that I can use the domain name with GitHub because that is provided in their service. The part about using GitHub in my package name is elaborating on the source code part (the package name is in the source code - i.e. it's pretty much a way to organize "folders" in the Java programming language).Regarding GitHub's Terms of Service, do you know what general area I could find something like this? I tried looking at it (help.github.com/en/articles/github-terms-of-service) but the section about GitHub Pages does not answer my question - I don't know if there is some other section that would usually have the answer to questions like mine? Well, actually I just found this: help.github.com/en/articles/what-is-github-pages. And maybe this: https://help.github.com/en/articles/github-terms-of-service#k-advertising-on-github. But I'm still a little confused...

Answer 1

I actually wrote to GitHub Support and this is their response:

"Unfortunately, we can't allow you to use io.github in your package name. Use of GitHub in a package name could imply affiliation, sponsorship, or endorsement on GitHub's behalf. Therefore, in order to prevent user confusion, we only allow official GitHub packages to be released using GitHub in the package name. I'm very sorry for the disappointment."

Answer 2

Trademarks generally offer a few different protections.

First, and most important, a trademark cannot be used in commerce without permission from the holder. This means that a person cannot, while selling or advertising a product or service , use someone else's trademark without permission in a way that says or suggests that the product is the trademarked item, or made by the same person or firm as the trademarked item, or is endorsed, sponsored or approved by the trademark holder. If a consumer might reasonably be confused into believing any of those things incorrectly, the use of the trademark is an infringement. This protection only applies when the alleged infringer is selling or advertising something, so that the use is commercial.

Secondly, one may not engage in trademark dilution. Using a trademarked name as a generic term for a class of items is usually dilution. The classic example is using "Kleenex" to mean "tissue" generically or using "Xerox" to mean "photocopy". "Aspirin", for example was once a US trademark of Bayer, but it was so diluted that it lost protection and is now a generic term for acetylsalicylic acid. The Wikipedia article says:

Bayer lost its trademark for Aspirin in the United States in 1918 because it had failed to use the name for its own product and had for years allowed the use of "Aspirin" by other manufacturers. Today, aspirin is a generic trademark in many countries. Aspirin, with a capital "A", remains a registered trademark of Bayer in Germany, Canada, Mexico, and in over 80 other countries, for acetylsalicylic acid in all markets, but using different packaging and physical aspects for each.

Thirdly, one may not engage in trademark disparagement, using the trademark to ham the reputation of the product or its maker. This is tricky, because one is allowed to express and publish reviews and opinions, even negative opinions of a product, and to identify the product by its trademarked name. A trademark holder cannot use trademark protection to suppress all negative comment about the product.

A person (or firm) does not need permission to make Nominative use of a trademark. That means using the trademark to identify the trademarked item. However, such use must be done carefully to avoid any possible confusion or implication of sponsorship, endorsement or approval by the trademark holder.

Specifically, one does not need permission to advertise compatibility. "This replacement blade fits the SmoothGlide razor" id not an infringement, and does not require permission from the holder of the SmoothGlide trademark.

Also, one does not need permission for "contrast" advertising. "Our razor gives a 50% closer shave than SmoothGlide" does not require permission from the holder of the SmoothGlide trademark.

Both compatibility and contrast statements are forms of nominative use. Use of logos or slogans is not usually required to identify the item, and may not be permitted without permission. It is good practice to include a disclaimer such as "SmoothGlide is a trademark of Marcus Brands, inc. Marcus has not endorsed or approved QuickShave razors." This heps avoid any possible consumer confusion.

As described in the question, "GitHub" is not used in advertising the OP's app, and nothing described could reasonably confuse anyone into believing that the App was by GitHub, nor that it was endorsed, approved, or sponsored by GitHub, or that the OP was associated with GitHub beyond having an account on GitHub. If that remains true when looking at the details, there does not seem to be a trademark problem, although a disclaimer such as "Git Hub is a trademark of {entity}. GitHub has not endorsed or approved {Thisapp} in any way." would be a good idea.