Top 4 Trademark Tips for App Developers

Mobile apps are a multi-billion-dollar industry. Per one study, mobile apps grossed over 40 BILLION dollars in 2016 and that number is likely to grow. However, the competition within the industry is fierce and app developers need any advantage they can get to get ahead of competition. If you are an app developer, then there are a few essential things you need to know about trademarks before you launch your app into the world.

Developing a catchy, marketable name is harder than it sounds, especially with the millions of different apps that currently exist in the marketplace, each attempting to capture the marketplace and make their share of that 40 billion dollars. While there are dozens, if not hundreds of legal decisions to make when protecting your app name, here are a few questions you should ask yourself and your colleagues about your app name. An experienced trademark attorney can help you answer these questions, as well as provide a personalized plan to protect your trademarks within your budget.

1.       Is your app name protectable as a trademark?

When developing a name for your app (or, even for your dev company) consider whether the word or phrase is even something you can protect. There are a few easy rules of thumb – if the word is made-up, or has no connection to the functionality of your app, then it is a strong trademark that will be protectable (as long as someone else isn’t using something similar.) For example, “Tumblr” has no connection with micro-blogging services and “Hyper” (one of Apple’s “apps of the year”) has no correlation with video services. “Apple” itself is a good example of an arbitrary mark, in so much that the tech company does not offer “fruit.”

The next category that a trademark can fall into is “suggestive” trademarks, which are trademarks that require a mental leap for the consumers to connect the word or phrase with the app’s function. “Detour” an app that allows “immersive audio walks” is likely a suggestive trademark, because it would require a leap in logic for a consumer to connect “detour” with something that would cause you to detour off your path, to an app that offers audio tours of areas.

Among the weakest category are marks that merely describe an aspect of what the app does. For example, “online Card Scanner” for a business card scanner app. These types of words and phrases are not even protectable until the developer can show that, through advertising or wide-spread use, the name has “acquired distinctiveness,” meaning that when consumers see the mark, they think of that specific app, not the services provided by that app.

Finally, generic words or phrases can never become protectable trademarks. “Word Search” for a word-search app, “GPS Directions” for a map app. These can never be protected under trademark law because everyone needs to be able to use these words within their industry.

2.      Is the name of your app confusingly similar to an app that already exists?

If your app name is protectable as a tradmark, the next question to ask is whether or not another app exists with a confusingly similar name, for related or complimentary services. This is a complicated analysis that looks at whether the trademarks are similar in sight, sound, meaning, or general commercial impression, and whether those similarities are likely to cause confusion. There are many factors that go into this overall analysis and an experienced trademark attorney can help you evaluate the risks of using a particular trademark.

Trying to determine what else is out there can be difficult. App developers are not only compared to other apps in the various app stores, but are also going to be compared to SaaS providers and traditional computer software providers.

A comprehensive trademark search performed by a legal professional will scour the USPTO database and the internet for existing conflicts that could stop a prospective trademark in its tracks.

3.      Did you file to register your trademark with the USPTO?

A federal trademark registration can be the difference between a long, drawn out legal dispute between app makers and a swift resolution. When the USPTO issues a registration for a trademark, it also gives the owner a presumption that the trademark is protectable (i.e. it isn’t merely descriptive or other bars to trademark protection) and that the registration owner is the owner of the trademark. It also gives “constructive notice,” meaning that everyone else in the U.S. is presumed to know about the federal registration before using a confusingly similar trademark. While these can be rebutted with evidence, it is a powerful tool.

On the other hand, it’s what happens before a registration that could save app owners significant time and money. Every dev should consider having an experienced trademark attorney before a comprehensive search and analysis for their company names and app names. An experienced trademark attorney will be able to see what is already out there and outline the potential litigation risks. If the risk level is acceptable, a trademark attorney can draft your trademark application to fit your unique business, taking into consideration the risks identified in the search.

It can take nine months to obtain a trademark registration, so an attorney can ensure you do not miss any deadlines and deal with any issues that arise before the U.S. Patent & Trademark Office.

4.      Are you prepared to monitor the marketplace for infringement?

A federal registration is important, but it is only the first step. A trademark owner maintains the strength of its trademark by actively ensuring that no one else is using a confusingly similar trademark for related goods and services. By allowing third parties to use similar trademarks, a trademark owner will see the scope of its production dwindle until, in some case, the trademark may no longer have any value.

App developers should actively monitor all major app stores, but should also keep an eye on traditional software developers as well. They should also monitor the USPTO database and consider using a trademark monitoring service to have a professional review potential conflicts and provide advice.

Every app owner should be proactive about the selection and protection of their valuable trademarks to ensure that all of the time and effort put into marketing and developing a brand is not completely wasted. Further, effective trademark protection and marketing can turn a good app into an essential for every mobile user.

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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