The icon of a smart phone app defines a brand and an identity. Trademark law provides protection for brands. Trademark registration applications can be filed for the logo as well as for the name of the app.
Since you have invested time and money in developing and marketing a smart phone app, you will want assurance that consumers will easily recognize it as yours. You hope to built up a reputation and make repeat sales, and it could be disastrous if a competitor were able to put a similar product on sale which could be confused with yours. By using a trademark for your app, you can build up brand loyalty among customers.
Rights in a trademark are acquired by use in the mark with an app, such as through a logo or brand name. Alternatively, it is possible to apply for a federal trademark registration before use with an intent-to-use trademark application. Use of the trademark must ultimately occur, and must continue if the rights so acquired are to be preserved.
- Choosing a trademark. In choosing a trademark, you should try to find a word, symbol or design or a combination of these which is not purely descriptive of the product or service concerned. A descriptive mark — or a common surname or geographical name — cannot, as a new mark, be sufficiently distinctive to qualify for registration. It could be used by others and would be difficult to monopolize.You should avoid marks that could be regarded as deceptive, which suggest that the app has some characteristics which it does not have.
There are already a great number of registered marks so it is not easy to find one that is suitable for your app and at the same time free for use and registration. It is advisable to create a number of possible marks and have them searched against marks that are already registered, applied for, or in use.
- Proper use of a trademark. Trademarks must be used properly to maintain the rights you desire. A mark that becomes the generic name of a product is no longer treated as a trademark. Famous examples of lost trademarks are aspirin, nylon, yo-yo and cellophane. Each became part of our language as ordinary definitional words.This problem can be avoided by using the generic product name “app” in association with the mark. Always use the mark as an adjective, and not as a noun. Examples: KODAK film; KELLOGG’S corn flakes; XEROX copiers. From the very beginning and before registration, you can use a superscript abbreviation (TM for trademarks; SM for service marks) adjacent your mark. After registration in the Patent and Trademark Office, you should utilize the letter R enclosed in a circle. Consider using the mark for a number of products or services beyond your app. It will be more likely to be recognized as your identifier, rather then as the name of any one product.
- Federal trademark registration. Registration of a trademark in the Patent and Trademark Office does not in itself create or establish any exclusive rights. It is however recognition by the U.S. government of the right of the owner to use the mark in commerce to distinguish his goods from those of others.In order to be eligible for federal registration, a mark must be in use in interstate commerce. However, it is no longer necessary to use the mark prior to filing an application to register it before the U.S. Patent and Trademark Office. An intent-to-use application can be filed prior to use. Those planning to introduce a new mark should consider prompt filing of an application to register it.
Advantages of registrations include establishment of supplemental legal rights in your trademark and constructive notice to all subsequent parties of your claim to ownership.
Equally important, it is simpler and therefore less costly to stop a competitor from using a mark which is similar to yours, when you have a registration, rather than trying to rely merely on your common law rights.
The very fact that the mark is registered at the federal or state level typically deters others from using the same or a similar mark.
- There is no time limit for applying to register a trademark. However, delay in filing to register a mark can create complications if another party should apply to register a similar mark prior to you. The best practice is to seek advice and file trademark applications promptly.
- Trade and commercial names. Trademarks differ from trade and commercial names which are used by manufacturers, industrialists, merchants, agriculturalists, and others to identify their businesses, vocations or occupations, or the names or titles lawfully adopted by persons, firms, associations, companies, unions and other organizations. The latter are not subject to registration unless actually used as trademarks.State registration of a corporation name or licensed business name does not confer trademark rights, which only arise as a result of use of a name or word on product labels or in connection with offered services. Registration of trademarks is separate from other business registrations with the Secretary of State in most states.
If you conduct business under a name that is not your legal name or the name of a corporation, you are required to register this “assumed business name” in each state in which you do business. Failure to register an assumed business name might affect your right to access the courts in that state to assert your legal rights against others.
- Trademarks in foreign countries. Trademark law and protection arise on a national basis. As a rule, registration covers only one country and separate applications have to be made in each country where it is intended to use and protect a mark.Owners of trademarks having business or prospective business in foreign countries who desire to protect their marks in such foreign countries should ascertain the nature of the trademark laws in those countries in order to protect their rights. In many foreign countries a resident there may obtain a registration of a trademark without having actually used it in trade. Such a registration may be used to prevent the importation into that country of goods bearing the mark.
To effect registration in many foreign countries, it is essential that registration be effective in the United States. Having secured registration domestically, the owner frequently may secure registration in foreign countries before actually using the mark there. Duration of certificates of registration in foreign countries varies in accordance with the laws of each country.
While it is possible to obtain software patents and smart phone app patents in the U.S., it can be extremely difficult, if not almost impossible, to obtain software patents and smart phone app patents in Europe and other countries. One cost effective way to protect software internationally is through trademark protection. It is difficult for pirates to sell illegally copied software without also using its name. The cost of obtaining trademark registrations around the world is much less expensive than obtaining patents around the world, and trademark rights are less expensive to enforce. It is much easier to prove that a trademark is being infringed than to prove that a patent or copyright is being infringed. Although patents may be more valuable in the U.S., in countries that don’t like software patents, trademark protection is better than nothing. A trademark will not protect against copying technical ideas or concepts, but can be used to prevent a competitor from using your name or logo.
In summary, applications to register software patents and smart phone app trademarks should be filed at least for your icon logo and app name to protect the logo and name. Applications can also be filed for names of characters used in your app (e.g., if it is a game) as well as for how characters look. Trademark registrations can provide cost effective international protection.