Having a strong, protectable trademark for your app is essential for a successful launch in today’s cutthroat mobile industry. There are millions of apps in the Apple App Store, Google Play store and other online app marketplaces and the competition can be fierce. Owning a federal trademark registration is an important step towards protecting your mark in the long term, and if you are reading this, you are either about to take that step or have already applied through an “intent to use” application. Either way, there is one step of the process that has de-railed many trademark applications – proving “commercial use.”
Typically, mobile apps for phones, tablets, and other devices are in International Class 9. If your program is a “software as a service,” a web-app, or otherwise has no downloadable component, then it is likely in another class and you should consult an attorney about which class your product/service falls into.
It is crucial to get this right. If you file before you have actual use in commerce, then the resulting registration is subject to cancellation by a third-party/competitor. If you file the wrong type of specimen, it can lead to significant delays and in some cases, may require you to re-file the entire application. By following a few best-practices (and the advice of your attorney) you can avoid these issues and move forward with registering your trademark.
The “proof of use” filing made with the USPTO consists of two parts: (1) the specimen and (2) the “use in commerce” requirement.
This is general information and not legal advice. Your attorney should review all mock-ups, product packaging, website designs or anything else that may be necessary to prove use and should review your sales and other information to ensure that you meet the commercial use requirement.
Proving Commercial Use for Apps: Specimens
A specimen is an example of the trademark used in connection with the goods or services provided to the government. For apps, the best specimen is a screen capture of the app store listing clearly showing the mark. However, that isn’t the only kind of specimen. There are several different ways an applicant can show a specimen for an app.
In the specimen, the mark should be clearly distinct from any other wording around it and should not be within a paragraph of text. If the trademark application is for “Tradeair” then the app name should have the “Tradeair” mark distinct and by itself. If the title says “Tradeair Gold”, then the USPTO will likely view the trademark on that specimen as “Tradeair Gold.”
Proving Commercial Use for Apps: Use in Commerce Requirement
To successfully register your app, you will need to not only have your app listed and ready to download, but it must be downloaded and used by real customers. Simply offering the app for download will not be enough to register a trademark.
You will need to have bona fide downloads by customers who are regular, real customers, not just friends and family. Downloads made by friends and family (or from yourself) for the sole purpose of completing this requirement will not be acceptable (this is known as “sham use”) and could lead to the cancellation of your trademark registration.
This does not mean that you need to sell your app. Plenty of apps are free and are not (at first) profit-generating. However, there must be downloads and use as mentioned above to qualify for the “use standard” and at least one of those downloads must be from someone across state lines. This is known as “interstate commerce” and is one of the requirements under the U.S. trademark law.
Tip: If you launch your app and have 50+ downloads and, from your metrics, you can see that 30 were from the U.S. and at least one was from another state, then you should likely meet the requirement. That being said, as a reminder, you can not rely on anything in our blog as legal advice and you should still ask your trademark attorney about your specific situation.
Tip: If your only download is your neighbor, then it does not likely meet the requirements for use in commerce.
What will you have to submit to the USPTO?
You will only need to submit the specimen to the government along with a sworn signed statement that says that, among other things, you believe all of the information provided is correct and that you have interstate sales/downloads of your app.
The USPTO will not do an independent investigation and will not call customers, look at invoices, or anything else like that. However, if you filed before you had use, then the resulting registration is subject to cancellation, as it would be void for failure to follow the requirements for registration. This is the case even if you didn’t know and mistakenly made the filing. There is little room for error and the USPTO will not allow a “do-over.”
Commercial use is one of the trickiest areas of trademark law and many applicants have failed to follow the requirements and have paid the price in delays or, in some cases, loss of valuable federal trademark rights. If you have any questions about the process, please discuss with your trademark attorney to make sure you have a game plan to avoid these mistakes and to successfully move forward with your trademark registration.