You’re a software developer. You’ve worked hard on your product. All those hours, all that coding, all the design and testing. You put a lot into creating your software. Do you know how to protect what you’ve made?
What is a trademark?
In general, a trademark is legal protection for a name, design, logo, or other distinctive characteristic of a brand. Trademarks are designed to protect brands and consumers alike from imitators. Brands don’t want their reputations hijacked (and potentially threatened) by imitators using their names and designs. Consumers need to be able to trust that the brands they’re buying are genuine.
A trademark isn’t the same thing as a patent or a copyright. They’re all protections for intellectual property and all three prevent imitators from using your ideas, but they each cover different things. A patent protects an invention. That may include a type of technology, a machine, a chemical process, or some other unique idea. A copyright protects “original works of authorship.” That includes literature, artwork, music, and other types of intellectual works. A trademark specifically covers logos, designs, names, and other characteristics of a particular brand or product.
Trademarks are handled by the US Patent and Trademark Office (USPTO). It’s a federal program, meaning one trademark protects you in all 50 states. The USPTO, however, does not enforce your trademark rights. You’ll need to monitor the market yourself or hire a service to do it for you. If someone violates your trademark rights, you can pursue the matter through the courts. In most cases, you can get a legal injunction against the violator requiring them to stop the violation. You may also be entitled to money damages if the violation was willful or particularly egregious. Those damages may include your lost profits due to the violation or the violator may be required to turn over all profits resulting from the trademark infringement to you. In some cases, the court may even triple the amount of the damages.
Common Law Trademark Rights
If you choose not to register a trademark, your only recourse in case of imitation is common law. Common law rights protect a company or individual’s intellectual property even if no trademark is registered, but the protections are local and not as extensive as those offered by trademark law.
For example, let’s say a company is selling hats in New York City under the name ‘Best Island Hats’ without a registered trademark. If a company in Hawaii starts to sell hats under the name ‘Best Island Hats,’ the New York company can’t do anything about it. Worse, if the Hawaii company trademarks the ‘Best Island Hats’ name, the New York company will only be able to use the ‘Best Island Hats’ brand in its local area. Expanding would be a violation of the Hawaii company’s trademark rights.
Trademarks And Software Names
So how does this apply to software? If a software developer creates an app that is used across the country, does she have common law rights across the country? No – and the lack of a trademark could cost her a lot of money.
Say you develop an app called “Slice by the Block.” It helps users uncover the best place to get pizza in any given city. However, because you were so busy launching the app in New York, you never filed your trademark application. Then one day while searching for your app online, you notice that someone has launched an app with a very similar name – “Slice on my Block” in Los Angeles. The LA-based app may not be able to come to New York because of your common law intellectual property rights, but you also can’t expand to LA. The LA app has the common law trademark rights in LA.
The local nature of common law protection is even more relevant for software than it is for physical products because of the highly connected nature of that market. Just think about the App Store. Apps and programs with similar names and purposes will compete for customers in the App Store or Android marketplace. Apple, owner of the App Store, tries its best to assist in trademark disputes between various app owners. Of course, that means the app owners need to be able to prove ownership of their brand, name, design, and other characteristics. If you can show a federal trademark registration, Apple will remove the infringing app from the App Store. They can’t act without that proof. That means you’ll have to go through the whole trademark application process before you can do anything about the other app. That process can take up to a year and much software doesn’t have a very long lifespan. Apps, in particular, are short lived. News apps tend to die off after about 7 months. Games last just 2 months before sliding off the radar. By the time you get your trademark registration to prove your ownership, it may be too late.
In other words, failure to trademark your software name can make the difference between life and death for your software. You should begin the trademark process as soon as possible to ensure that your software is protected from imitators and knockoffs.
The Bottom Line
I regularly talk to my clients about practical reasons to register their trademarks. The legal reasons are important – you want to be able to turn to the courts when your intellectual property is violated. Of course, lawsuits are expensive and we try to avoid them where possible. But the legal rights aren’t the only reason to trademark your software name. Just look at the App Store example. With a trademark, Apple and Google will step in to protect your intellectual property without the prompting of the courts. In the fast-paced software market, that can make all the difference.
The trademark process can be complicated, but an experienced trademark attorney can work with you to ensure that your ideas are protected and that you’re the one who receives the benefit from them. Remember, a trademark applies only to your software’s name, logo, and other identifying characteristics. You should also speak to your attorney about whether patenting or copyrighting your software is right for you.
To learn more about trademarks, check out our blog for information on the trademark registration process and more.