As a general rule, an excellent app that consumers want will sell regardless of its name. Occasionally, the name of an app may draw attention—like the short-lived I Am Rich app (a $999 iPhone app that did nothing)—or may create some consumer demand (as in the case of apps such as Nude It and SexIQ). While you’re allowed to come up with creative names, here are some rules that may help you come up with a successful trademark:
Sometimes the obvious choice is the best choice. Even though descriptive marks may be harder to register or enforce (see the Note on Note), that might not matter for your app when you consider its short lifespan and the need for instant customer recognition of its capabilities. For example, the purposes and capabilities of iVideoCamera, Spin Art, and CNN Mobile are all clear, making them logical choices.
Pick a name that distinguishes you. You don’t need to be clever, just distinctive. The point is to create a name that differentiates you from competitors. For example, Street Lingo is distinctive enough from its urban dictionary competitor, Slango, to avoid a trademark dispute.
Avoid a name that’s similar to competitors’. This is the flipside of the previous point: Choosing a name similar to a competitor’s may trigger a dispute—and if the competitor has been using the name longer than you have, you’ll lose the battle. A similar name is one that is likely to confuse consumers—for example, a game that’s similar to Tetris and called Tris could easily confuse folks looking for Tetris (this actually happened—see Infringement for details). Determining the degree of similarity is part science and part witchcraft, and sometimes depends on the sophistication of the consumers. If you’re not sure whether a name you’ve chosen is too similar to someone else’s, put yourself in the competitor’s shoes and look at the choice from their perspective. Would you feel ripped off?
Typically, a company with a new product hires a trademark search company to report on whether its new product name is likely to infringe. But that’s probably overkill for most app developers. Most likely, a search of the app stores and the software categories at online retailers such as Amazon should give you a general idea whether your name is likely to be confused with another product.
You need to consider all software products because that’s the class within which you might register (see Mark Information) and because a trademark owner acquires rights not just for its goods but also for goods and services that it is reasonably likely to offer. For example, it might be expected that an online game would be ported to the iPhone. Therefore, even if that game isn’t yet available as an iPhone app, you’d run into problems if you named your app the same thing as the game. Similarly, if your app is geared to a specific field or industry, you’d need to check out that field to be sure you’re not in conflict with anyone else’s products. If you’re offering tide tables in app called Tidey Up, say, you wouldn’t want to use that name if there was already a publisher by that name that prints tide tables, since it is not unlikely that the publisher will expand into the app world.
Finally, your search should locate substantially similar variations on the mark. For example, if a mobile app developer is using the named Birdman for a collection of bird calls and birding photos for bird watchers, he would need to search for that name as well as soundalikes (“Byrd”), plurals (“Bird Men”), gender variations (“Bird Women” or “Bird Boy”) and perhaps foreign translations.
If you search around and find that someone else is already using the mark you want—or a substantially similar mark—it’s time to rethink your choice. Frustrating though this is, it’s better than closing your eyes to the competition and hoping for the best. Failure to search—or to act on what you discovered in a search—can have expensive consequences. If you rush to market, blind to the fact that a similar trademark is already being used by a competitor, the competitor may obtain a court order preventing you from using the trademark, and you may have to pay monetary damages and attorney fees.
The cheapest way to search is to start with an online search using Google, and then searching the USPTO’s database (on www.uspto.gov, click Trademarks, and then click Search Marks). If this preliminary search turns up similar marks (which lawyers call potential conflicts), you can then drop the names you were considering that might conflict and either choose new names or narrow down your list of potential choices before paying for to a professional search report. If your preliminary search doesn’t turn up any similar marks, you can hire a professional search firm to prepare a complete report. The complete report usually includes registered U.S. and international trademarks and unregistered (known as “common law”) trademarks.
These searches are expensive (often $300–$500), and they’re sometimes difficult to decipher, so you can probably skip the professional search unless you’re entering into a licensing or distribution agreement (in which you have to promise that your trademark doesn’t infringe), you have to answer to shareholders or other investors, or your apps are becoming successful and you need the peace of mind that comes with knowing you aren’t infringing any existing marks.
Tip
Two companies that perform professional trademark searches are Thomson Compumark (http://compumark.thomson.com/jsp/index.jsp) and Trademark Research Corporation, (www.cch-trc.com). Thomson Compumark has been around longer and has a more established reputation among attorneys, but the results from both companies are usually similar.
As mentioned earlier, you can acquire trademark rights without filing a federal or state trademark registration (under what are known as common law principles). A federal registration will run you $300–$400, which might not be worth it if your trademark is unlikely to run into any problems. However, you may want to register the name of your most popular app if you plan on building a brand—that is, issuing a series of apps under that name—or if you want to protect the name of your company. Federal registration—that is, registering your trademark on what’s referred to as the Principal Register—is the best way to protect your rights, and it provides the following benefits:
Only the owner of a federally registered mark may use the symbol ® in conjunction with goods or services.
The filing date of your trademark application gives you nationwide priority as of that date. That gives you the right to stop others from using a similar name on similar products or services anywhere in the U.S. (unless someone has been using that mark before you).
The owner of a registered mark may, under some circumstances, recover lost profits, damages, and costs in a federal trademark infringement lawsuit.
The owner of a registered mark can deposit a copy of the registration with U.S. Customs in order to stop others from importing goods that use an infringing mark.
After 5 years of continuous use, a federally registered mark, with some exceptions, can’t be challenged as being improperly issued or invalid.
A federal registration will make it easier to file a trademark application in certain foreign countries.
If these benefits are important to your mobile app business, and if you believe your trademark adds substantial value to your business, then you’ll want to register with the USPTO as described in the following sections.
The United States Patent and Trademark Office handles federal trademark registrations. Before you begin your federal application, you’ll need to figure out on what basis you are filing. Most federal trademark applications are based on either actual use in commerce or an applicant’s intention to use the trademark in commerce (referred to as an intent-to-use or ITU application).
The preferred (and cheapest) method of preparing the federal trademark application is to use the online Trademark Electronic Application System (TEAS) on the USPTO’s website (www.uspto.gov). Registration takes approximately 1 year and the fee ranges from $275–$375 per class of goods. The fee is $275 if you register using TEAS Plus (the simplest system), $325 if you use TEAS (for more complex registrations), and $375 if you file a paper application. (For info about paper applications, check www.uspto.gov/trademarks/process/appcontent.jsp.) TEAS is an interactive system in which you’re asked a series of questions. If you don’t answer a question or you leave out an essential element, TEAS asks you to correct the error. Your best bet is to start with the TEAS Plus, as it’s the simplest and least expensive way to file. To get started, head to www.uspto.gov/teas/teasplus.htm, where you can choose between the TEAS form and the TEAS Plus form. In the next few sections, you’ll find explanations of the key elements of the application process. Although there are differences between the three types of applications, all of them require the elements described below.
In the TEAS system, the applicant can be an individual, a partnership, a corporation, an association (such as a union, social club, or cooperative), or a joint ownership by some combination of any these forms. If you’re filling out the application on behalf of a partnership, include the names and citizenship of the general partners and the country where the partnership is based. If you’re representing a corporation, list the name and state or country under which it’s incorporated.
You have to list your own citizenship and a mailing address. If you’re doing business under a fictitious name (a DBA), check the appropriate box and list it, especially if it’s included on any of the materials you’re submitting with the application.
If the trademark you’re registering is a word or group of words, identifying it to the USPTO is straightforward: You just type in the trademark, like “JustJewels” or “iQuarium.” But if the trademark is a stylized presentation of the word, a graphic symbol, a logo, a design, or anything else you’re trying to register—for example, a sound, color or smell (yes, smells have been registered as trademarks), you need to provide a statement that clearly identifies the mark. As a general rule, you’ll get the broadest protection for your name by registering it as a word trademark.
If you’re using the TEAS system, simply type in the word trademark. (If you’re registering a word trademark, you’ll get the broadest protection if you register it without any specific formatting. That way, you’ll be able to use the trademark in various fonts, rather than being restricted to the exact way you registered it with the USPTO.) If you’re registering a stylized mark—attach a black-and-white rendition of the mark (in either JPG or GIF format), and then type a written description into the TEAS application where it says says, “Enter description of the mark, below.”
Note
Before pressing “Continue” on the form, you’ll see a checkbox you can turn on if you wish to make an “additional statement.” The most common such statement is a disclaimer. Many trademarks include words or phrases that, by themselves, can’t be protected under trademark law because granting one person an exclusive right to use such a term would decimate the English language. So the USPTO usually requires applicants to disclaim certain portions of trademarks. For example, if you wanted to register the trademark “The Lucky App,” you’d have to disclaim “App,” since it’s a generic term that everyone has the right to use. By doing that, you’re making it clear that, apart from using “App” as a part of your trademark, you’re not claiming any exclusive right to use the word “app.” In general, it’s best not to include a disclaimer during your initial filing. If your trademark examiner (see Goods and/or Services Information) wants you to disclaim something, you can always do so later without being penalized.
The next step in the registration process is to identify your class of goods. Most likely, your app will fall into International Class 009, which includes all computer programs and software.
Your app may also fit into two categories. For example might be registered in class 009 for software and Class 028 for “games and playthings.” In general, you’re best off starting with one class and expanding to others later.
Note
The USPTO uses the International Schedule of Classes of Goods and Services, a system recognized by most countries for categorizing goods and services. This helps the USPTO trademark examiners search their database to determine whether other products like yours are already using a similar mark. You can register your work in many classes, but bear in mind that each class registration costs $275 or $325 (depending on whether you use TEAS Plus or TEAS).
To identify the class for your goods, the TEAS Plus form lets you search the USPTO’s goods and services manual at http://tinyurl.com/jy9kx. From the Choose Field drop-down list, pick Class, and then type in a description of your app—“Accounting software,” for example—into the Enter Search Terms field. The search results will tell you which class to use.
Another way to figure out which class your app falls into is to check the Trademark Manual of Examining Procedure (TMEP) (http://tess2.uspto.gov/tmdb/tmep) and the Acceptable Identification of Goods and Services Manual (http://tess2.uspto.gov/netahtml/tidm.html), which lists appropriate choices of identification of goods and services in alphabetical order and by class.
Along with the class, you need to provide a description of your app. For example, if you’re selling an app that creates wireframes to make web pages appear in an easier-to-see format, your description would be, “Software for cellular telephones that provides access to web-based applications and services through a portal interface.” Or if you’ve created a game, you might write, “Electronic game software for cellular telephones; computer game programs; downloadable electronic games via the internet and wireless devices.” In most cases, the description is automatically inserted by the TEAS system when you choose the proper class. In other cases—for example, if your product or service doesn’t fall neatly within a suggested description—you’ll need to do a little more work to provide an accurate description.
The goal here is to be specific without being too broad. You can get an idea of some typical descriptions by using the Acceptable Identification of Goods and Services Manual (http://tinyurl.com/jy9kx). Choose “Description” from the drop-down menu and then type in a word or two related to your app. For example, if you type in “mobile application,” the manual offers descriptions such as: “Computer application software for {specify items, e.g., mobile phones, portable media players, handheld computers}, namely, software for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.}.” You can then use that description as the basis of yours, and simply tweak it as appropriate.
If the USPTO’s trademark examining attorney—the person who reviews your application—disagrees with your description, he’ll revise it with you so that it’s appropriate. This type of back and forth is pretty common and, according to a USPTO survey, the applicant’s identification of goods and services was questioned in more than fifty percent of trademark applications. So, don’t be surprised if you hear form the examiner on this issue.
After you’ve selected your class and description, you’ll be asked the filing basis for your application. If you’ve already used the mark in connection with the sale of the mobile app, then you would select Section 1A (“Actually using mark in commerce”) under “Use in Commerce.” If you haven’t yet used the mark in commerce but you intend to, then choose Section 1B (“No use of mark yet, intending to use”). This makes your application a ITU application, explained in The Federal Registration Process: TEAS.
If you’re filing basis is Section 1A (“Actually using mark in commerce”—see above), you’ll need to enclose a specimen—that is, a JPG showing the trademark being used on your mobile app. (In the case of ITU applications (see The Federal Registration Process: TEAS), you’ll have to file the specimen later, together with an “Amendment to Allege Use” document, which you can fill out here: http://eteas.uspto.gov/aou.) The online form lets you upload your specimen. For mobile apps, you should furnish a screenshot of a web page—for example, the product page at the Apple App Store—that shows the trademark in connection with you app and shows a way for users to download or buy the app. You’ll need to describe the specimen, too; for example, “A screenshot of the product page for the iClock app at the Apple App Store.”
You’ll also need to provide the date (or your best guess as to the date) you first sold apps using the trademark, anywhere in the world. You’ll also need to list the date when you first sold your app in U.S. commerce. Usually, that means a sale to someone outside your state (for example, through a website or when you traveled to a software tradeshow).
You have to provide a signed declaration, a sworn statement, or other verification that the facts in your application. Fortunately, you don’t have to go out and hire an attorney to help you with this. The TEAS application provides an all-purpose declaration that you can use for both ITU applications (see The Federal Registration Process: TEAS) and for applications for trademarks that are already in use. All you have to do is confirm your acceptance of the declaration and follow the instructions for providing your digital signature.
The last step in the registration process is paying the fees, authorizing your electronic signature, and validating the application. After you click “Pay/Submit” and your info get submitted to the USPTO, you’ll see an onscreen confirmation.
Later, you’ll receive email acknowledging your application. Hold on to that email, because it’s the only proof you’ll have that the USPTO got your application. It’s also proof of your filing date and contains the serial number they assigned to your application.
Your confirmation email explains that you shouldn’t expect to hear anything about your application for about 3 months. If you haven’t heard anything in 3 and a half months, it’s a good idea check on the status of your application. You have two ways to do this:
Check TARR. The Trademark Applications and Registrations Retrieval system’s webpage (http://tarr.uspto.gov) lets you find out about pending trademark application. All you do is enter your serial number (the one in your confirmation email) and it’ll give you a status report.
Call the trademark office. If you want additional info or would prefer talking to a real, live person, call the Trademark Assistance Center at (800) 786-9199 Monday through Friday between 8:30 a.m. and 5:00 p.m. eastern time.
You’ll likely receive some kind of communication from the USPTO within 3 to 6 months. If there’s a problem with your application, you’ll receive what’s called an action letter. This is a letter from the trademark examining attorney who has been assigned to review your application explaining what the problems are. Most problems can be resolved by simply calling your examiner.
When the examiner approves your application, you’ll receive a Notice of Publication in the mail. Your trademark will then be published online in the USPTO’s Official Gazette (www.uspto.gov/news/og/trademark_og/index.jsp). During the 30 days after your trademark is published, anyone can oppose your registration For example, if you apply to register YankeeApps, the New York Yankees could file an opposition. Only 3% of all published marks are opposed, so it’s unlikely you’ll run into trouble. Just keep this in mind if you know another company might object once they learn of your application.
Once your trademark has made it through the 30-day publication period, assuming you filed on an actual use basis (see The Federal Registration Process: TEAS), you’ll receive a Certificate of Registration. Keep in mind that the USPTO sometimes takes a long time to move applications through this long process, so it may take a year or more to process your application. Be patient.
If you filed on an intent-to-use basis instead, your trademark won’t be placed on the USPTO’s Principal Register until you file your Amendment to Allege Use document, which tells the USPTO the date you started using the mark and completes your registration. You’ll also need to provide a specimen showing how you’re using the mark. (See Specimen and Dates of Use for the details.)
Chances are good that you’ll be in touch with the USPTO after you file your application. Few applications sail through without any glitches, so you need to be diligent to keep your application moving through the process.
If you’re waiting for the USPTO to do something and it’s been more than 6 months since you heard from them, check the TARR system or call the USPTO, as described above (see After Filing). If you discover a problem, bring it to the USPTO’s attention.
If a USPTO examining attorney contacts you and you fail to respond in a timely manner, your application may be considered abandoned, meaning your application is officially dead. If that happens, the only way to revive it is to petition the Commissioner for Trademarks (which you can do online at www.uspto.gov/teas/eTEASpageG.htm) within 60 days of the date of abandonment.
If the examiner wants you to change your application (for example, by suggesting a different description of services or goods), consider the examiner’s suggestions, and if you are okay with them, let the examiner know you accept them. If you’re not okay with them, then you two can discuss the matter and perhaps achieve a compromise.
Tip
In general, the USPTO trademark examining attorneys are friendly and amenable to working with non-attorneys. So if your examining attorney objects to some aspect of your application, don’t be afraid to call and discuss any questions with her. Just remember that they’re government employees with intense workloads so be prepared, efficient, and have your paperwork in front of you when you call. And don’t be argumentative—it won’t get you anywhere.
An examiner with a brief question might call you and then issue and mail you an examiner’s amendment (a form where the examiner handwrites a record of the phone conversation or meeting with you). Read the amendment carefully to make sure it matches your understanding of the conversation. If you disagree, or don’t understand the amendment, first call the examiner. If that doesn’t straighten everything out, write the examiner a letter with your concerns. If you’re interested in reading more about the types of disputes that arise between examiners and applicants, check out the TTABlog at http://thettablog.blogspot.com.
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