Despite the openness or guaranteed freedoms around using your copyrighted software code, you generally would still want to protect your project’s trademark.
For example, you may not want a fork to claim their software is the ‘official’ software or that they offer ‘official’ services when in reality neither are associated with you. In the worst case scenario, if a bad actor takes your software, designs malware around it and distributes it under the same name, users will blame you for the infection of their computers (which has happened).
So what are others allowed to do with your trademark, what can you do about it, and what do you want to do?
Determine Your Strategy
You won’t know which road to take unless you know the extent to which you want to protect and enforce your trademarks.
- You first must be clear about what you can legally do.
- Second, you need to determine what you want to do, how you want to use your resources and how forceful your enforcement should be.
Enforcing Your Rights
Under trademark law, you can prohibit anyone from using your trademarks for products and services that are not your own where such use is likely to create confusion about the true commercial origin of those products and services.
This confusion can arise if those products or services are similar enough to your own project and software and use a name identical with, or similar to, your name, or that suggest a relationship with your software that doesn’t exist. If that happens, there is a legal risk that users might erroneously believe that the third party product or service is yours or associated with you.
As a general rule, you are legally entitled to object to confusing use of your trademark. Conversely, there are some forms of use that you cannot stop, because they are not considered confusing in the legal sense:
You can’t, using trademark law alone, stop anyone from using your trademark for a copy of your own official software if that copy has already been placed on the market with your consent. For example, if you sold a copy of your software on a data carrier to a company based in Italy, and the data carrier depicts your name and logo, you can’t prevent the Italian company from reselling the copy of your software on that data carrier to someone else. You would need rely on some other legal principles to stop this.
You can’t stop anyone from using your word marks as a descriptive reference to a service they are offering. For example, if your company is called “Project X” and another company specializes in technical support for your software program “Fancy,” they may advertise their services by saying they offer “Support for Project X’s Fancy.” They won’t be allowed, however, to use any references that might create the false impression they are commercially linked to your project, or authorized or endorsed by you. An example of such a confusing use of your trademarks, which you could prevent, would be “Official Project X Fancy support,“ since that implies they are the source of the software, or that you endorse the support.
You can’t stop others from using your trademark when they have no way to say what they mean without using it. “Great Game Y uses the rendering libraries in Project X” would be an example.
If your trademark isn’t only the name of your own software, but also has a different, descriptive meaning, you can’t prevent anyone from using the name in that descriptive way. For instance, others would be free to refer to their own software as “amazingly fancy software“ in advertising, so long as the circumstances of that use don’t create confusion. The legal assessment would be different if someone used the expression “Amazing FANCY® software,” suggesting that fancy was not just general marketing language but the actual name of the software – your name. Such confusing use is something you could prevent.