Creating and Registering Trademarks for Quantum Computing Hardware and Software

By Eric Perrott, Esq.

Quantum computing has opened up possibilities for new research and analysis that could resolve previously unsolvable problems. The industry is full of innovators, like you, who want to make a difference while building a company that can compete in the marketplace.

While the focus of any technology company will first be on the tech, it is the successful, sustainable businesses that take their first-class technology and build a brand around it. That brand, or trademark, will be the name or symbol that will be synonymous with the cutting-edge technology, quality hardware, and a company’s ethos and culture.

Quantum computing companies need to protect their trademarks and have a plan for brand management.

Trademark Analysis – Picking a Strong Quantum Computing Trademark

Whether you launched years ago or are still developing your brand, knowing the marketplace is crucial to avoiding pitfalls that could make your chosen name or logo unprotectable. The first thing to do is to consider whether the name you chose is a strong mark. From a legal perspective, a strong mark is distinctive and does not merely describe your quantum products or services.

However, there is a balance between what is “legally strong” and what is strong from a marketing perspective.

For example, something like QUANTUM PROCESSORS is a generic mark that would immediately tell consumers about the product. This can be valuable when trying to introduce new clients to the concepts of quantum computers. However, it will never function as a brand and will never be capable of acting as an exclusive trademark for your company. Anyone in the industry should be free to use generic terms to accurately describe their products or services.

CRYPTO QUANTUM is likely a descriptive mark, as it describes quantum computing hardware and services in the field of cryptocurrency. This is not generic, but it does describe the underlying goods and services, which can be helpful for companies who otherwise have difficulties with customers recognizing what the product is or does. However, this is another legally weak mark and trademark law (and the USPTO) will not grant protection in a “merely descriptive” trademark that does not have the required distinctiveness and should be available for all companies to use to accurately represent their product. However, descriptive trademarks can acquire rights over time through wide scale advertising, market penetration, and general recognition. This typically takes significant time and exposure before courts, or the USPTO, will recognize rights in a descriptive mark.

As we move further down the spectrum of trademark strength, consider a trademark like “ALGORITHMIC DREAMS.” This is likely a “suggestive” mark, which has some connection still to quantum computing (and its use of algorithms) but does not immediately describe any of those goods and services. Instead, consumers would need to take a logical leap to go from the trademark and arrive at the goods and services. These types of marks are immediately protectable as trademarks.

Finally, the strongest trademarks on the strength spectrum are arbitrary or fanciful words or phrases. These have no innate connection to the industry or the services and are typically the hardest to market. However, because of their nature, the owner of this type of strong mark is awarded broad protection within the industry, as no other company should have any reason to use a mark anywhere near the arbitrary or fanciful word or phrase. For example, a mark like “RIGHLA”, or a similar made up word, would be a fanciful, strong trademark.

Search and Clearance – Knowing the Marketplace and the USPTO

Once you’ve determined the strength of your mark, it is important to know whether someone else may already be using or has applied fo) a similar trademark that may prevent you from using or registering the mark.

The USPTO and U.S. courts look at many factors when determining whether two trademarks can co-exist without confusion, but the two main considerations are similarity in sight, sound, or overall commercial impression, as well as the relatedness of the goods and services.

Notice that the analysis does not look at any exact matches – the analysis looks at similarity in the context of the goods and services, and this is often a common misconception by brand owners. Further, even though quantum computing may be a highly-specialized area of computer services, if another party owns a trademark for general “computer hardware” without restrictions, then the USPTO’s analysis will consider those products similar to a company’s quantum computer hardware trademark.

It is important to understand those nuances, and an experienced trademark attorney can perform a comprehensive search and analysis, providing business owners with in-depth research and advice on the best way to protect a trademark (or when to go back to the drawing board because of risks.)

Scope of Protection – What Do You Actually Provide to Clients?

Many quantum data and hardware companies are working with expensive, highly sophisticated products which can often be hard to classify with the USPTO. For example, if you are curating the creation of quantum computers for others, based on specifications the client asked for, then you are likely offering a service as opposed to a product. This is important because the USPTO requires an exact recitation of your services and, if you get it wrong when applying, the USPTO may deny it and therefore forcing you to reapply, losing valuable time and money.

We always recommend protecting core services when possible, but you should also consider any additional services you provide. For example, if you offer quantum data analysis in addition to software or hardware offerings where your company offers advice about the use or application of quantum computing, then that might be a separate service that you can protect to widen the scope of your protection. If you offer a standalone tech support service or installation services, that might also be protected. While the basics of hardware and software are in International Class 9, a typical quantum computing company may offer services in Class 9, Class 35 (business consulting services), Class 36 (financial consulting services), Class 42 (custom software/hardware development services), and more.

Timing and Planning

The entire process of applying for and registering a trademark with the USPTO will take at least 9-12 months, but there are some important dates along the way. The first is the application date: once you apply, that application date is your priority date and your application will be received before anyone with a later priority date.

The next milestone is 3-4 months after the application date, which is the initial review by the USPTO examining attorney, a government attorney assigned to the application to review it and to perform a search of the USPTO’s database for similar applications or registrations.

If the application is approved by the Examining Attorney, 3-4 months later the application will be published for opposition, a 30-day period where any third party may oppose the registration of the application.

If no oppositions are filed during the opposition period, the application will proceed to the final stage of approval in about 3 months.

Trademark Registration

A trademark registration is the gold standard for protection on a nationwide level, but it doesn’t stop there. Businesses should have a program in place to monitor for infringement and prevent damage to their brand through smart enforcement. However, developing a brand and protecting it with the USPTO is a huge asset to any growing quantum computing business and will provide a backbone for a strong, protectable brand moving into the future.

• SHARE THIS ARTICLE ON:

Eric Perrott, Esq.

Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: eric@gerbenlawfirm.com. The contents of this blog are for informational purposes only and may not be relied on as legal advice.