Chapter 7: Someone Else is Using your Trademark

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.

  1. You first must be clear about what you can legally do.
  2. 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:

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