When Apple debuted the iPhone in 2007, everyone was impressed. Well, not everyone: The lawyers at Cisco Systems weren’t thrilled. They acknowledged that it was a “cool phone,” but they also pointed out that they owned the registered trademark, “iPhone”—they’d owned it since 2000 when they had acquired another company. (A trademark is any name, logo, symbol, or device that identifies one company’s products and services and distinguishes them from others—like Google, O’Reilly, and Amazon, for example.)
Why would Apple debut a product with a name that was registered to a competitor? The answer is that, in the rarified world where companies like Apple and Cisco play, trademark disputes are as common as flashlight apps. They have huge legal departments to sort out such cases.
Unless you’ve got a team of attorneys on call, you can’t operate with similar disregard for trademark rights. If you do, you may have your app pulled by Apple or find your mailbox packed with cease and desist letters. Your goal should be to avoid infringing on someone else’s mark and to be prepared to pursue others who tread on yours. This chapter gives you advice on choosing a trademark in the first place, then walks you through the process of registering your mark so you can get maximum legal protection. Finally, you’ll learn a little about trademark infringement so you can avoid ending up in a legal battle.
Note
When a trademark is used to identify services instead of goods—like iTunes U, which offers educational services—it’s sometimes referred to as a service mark. Unless specifically distinguished, both trademarks and service marks are referred to as “trademarks” throughout this Mini Missing Manual.
Here are some important trademark principles to help you get started:
First user gets the trademark. As a general rule, if you’re the first to use a trademark in commerce—meaning you’re the first to sell an app under a certain name—you acquire the rights to it (and can stop other app makers from using a substantially similar trademark). However, simply being the first to use a mark may not get you all the protection you need. Other factors that influence trademark rights are the geographical extent of your use, whether the mark is weak or strong, whether someone with related products or services—for example, a computer hardware manufacturer or website developer—is using a similar name, and whether you’ve abandoned your right to use the mark. (There’s more on these factors later in this chapter.)
Rights are limited to your goods and services. This is a cornerstone of trademark law: You can only stop others from using a similar mark on goods or services with which the mark is used, intended to be used, or likely to be used. So if you create the mark “Good to Gopher” for a game involving gophers, you won’t be able to stop a company that adopts the name for pest extermination, because consumers aren’t likely to be confused by the two distinct and noncompeting uses.
Creating a trademark doesn’t create rights. You don’t get trademark rights merely because you create a trademark—by designing a logo or coining a slogan, say. To acquire rights, you have to actually use the trademark in commerce (as explained above). You can reserve trademark rights—by filing an ITU application as described below—but these rights won’t vest unless you eventually use the mark in commerce.
Distinctive trademarks are easier to protect. Trademark protection is based around a “strength” classification system. Strong trademarks—such as Scrabble, Doodle Jump, or Pandora—are distinctive and you can immediately stop others from using similar ones. Weak trademarks, on the other hand, are not distinctive because they merely describe some aspect of the app—for example Alarm Clock Pro and iFitness—and you can’t register them on the Principal Register (which is the best form of U.S. trademark protection—see the Note below) until you can show the U.S. Patent and Trademark Office (USPTO) that consumers associate the name with your app. This is usually proven by extensive advertising and sales. (Trademark experts refer to this “strengthening” as secondary meaning.) For example, the weak descriptive term “Windows” became a strong trademark after Microsoft spent several billion dollars associating the term with its company.
Note
The USPTO keeps two lists of all the trademarks it has registered—the Principal Register and the Supplemental Register. Of the two lists, the Principal Register is by far the more important. Trademarks on this list have much more protection than those on the Supplemental Register—which is primarily for weak or descriptive marks that haven’t acquired secondary meaning. People almost always file applications for the Principal Register. If the mark isn’t deemed worthy of that register (because it’s too weak), then the trademark examining attorney often recommends filing on the Supplemental Register instead (there’s no additional fee).
Why bother with the Supplemental Register? One reason is that anyone doing a standard trademark search will discover the registration and most likely will decide to use a different mark. Also, placement on the Supplemental Register entitles the mark’s owner to use the ® symbol (see “Symbols indicating a trademark”). And finally, if the mark continues in use and remains on the Supplemental Register for 5 years, it’s easier to apply to have the mark placed on the Principal Register (because it will have acquired distinctiveness through continued use over time). So, the Supplemental Register gives you some benefits, so it’s a sensible alternative if the USPTO refuses to put your mark on the Principal Register because it’s not distinctive enough.
There’s no foolproof test for choosing a mark or determining whether a mark is strong or weak. But if your mark is weak or descriptive, be prepared to explain to the USPTO why consumers associate the term with your goods and why you deserve to register it (as explained in the next few paragraphs). Generally, a mark is strong if it’s either so unique or clever that it’s classified as “inherently distinctive”—like “Tetris,” for example, which is immediately distinctive—or if it becomes distinctive through sales and advertising—like Glow Hockey or eTrade.
No trademark protection if… In some situations, the intended trademark can’t be registered, and the owner has no right to stop others from using a similar mark. The most common reasons for this include:
Nonuse (also known as abandonment), which occurs if you stop using a trademark and it appears as if you won’t resume using it,
Using a generic term. This means attempting to use the name of a class of goods. For example, you use the term “Software” as the sole name for your mobile app. In that case, the name won’t be protected because it’s a generic term. (Someone could, however, use generic terms in conjunction with other terms—like Software Lingerie, for example—and not be generic.)
Symbols indicating a trademark. Typically, the symbols ®, ™, or
are used along with trademarks—as in Tetris®. The ® symbol indicates that a trademark has been registered with the USPTO, which you’ll learn more about in a few pages. It’s illegal to use the ® symbol if the trademark in question hasn’t been registered with the USPTO. You’re not legally required to use the ® symbol, but not using it may limit the amount of damages that you can recover if you sue someone for infringing on your trademark. If you haven’t registered the trademark, you can use the ™ symbol instead. Similarly, the symbol is for service marks that haven’t been registered. The ™ and symbols don’t have any legal significance other than indicating that the owner is claiming trademark rights which may or may not hold up in court.
Tip
Be careful about using your surname as a trademark. There are some advantages to using your own name—you have less chance of infringing on someone else’s trademark and you may have an easier time preserving your rights to a domain name. But you may be surprised to learn that it’s often difficult to register trademarks that use a family name, because the USPTO often considers family names to be weak trademarks. That’s because a family name that’s perceived primarily as a person’s name is descriptive (meaning weak), and therefore can’t be registered on the USPTO’s Principal Register unless the trademark owner can demonstrate secondary meaning—like Newman’s Own or Dell, where consumers associate the name with certain products.
Get Protecting Your Mobile App IP: The Mini Missing Manual now with the O’Reilly learning platform.
O’Reilly members experience books, live events, courses curated by job role, and more from O’Reilly and nearly 200 top publishers.
