When developing a new software, whether it is an APP for a smartphone, or, a more classic style of software for use on a computer, it is critically important to consider filing a trademark for the name of the software. When you apply for a federal trademark on the name of a software, you obtain the right to protect the trademark as your own in all 50 states.
That being said, if you do not attempt federal registration of your trademark, you would be left with only common law trademark rights. Common law rights protect a company or individual’s intellectual property – even if the company or individual hasn’t registered a trademark with the USPTO (United States Patent and Trademark Office). To illustrate, let’s say a company is selling hats in New York City under the name ‘Best Island Hats’ – but has not registered the trademark. If a company in Hawaii decides to sell hats under the trademark ‘Best Island Hats’, the company in New York City will still be able to sell its hats—but only in New York City. Here, the New York City company obtained common law rights simply from going to market with that particular name first.
To apply this reasoning to the field of software, if a software developer creates an app which is used across the country, is it true that she wouldn’t need to register the trademark because she would have common law rights across the country? No – and not registering said software trademark is a mistake which could cost a company lots of money.
Let’s say you developed an app, “Slice by the Block,” which 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 problem here is that you now could be prevented from expanding your app to cover pizza locations in Los Angeles as your company grows (because the “Slice on my Block” app would have obtained the first common law trademark rights in Los Angeles).
Moreover, perhaps the bigger concern would be the apps competing for customers in the App Store or Android marketplace. While Apple, owner of the App Store, tries its best to assist in trademark disputes between various app owners, Apple would normally request to see a federal registration certificate before assisting you with removing the infringing app from the App Store. Therefore, if you find an infringing app, and, only then decide to file a trademark, you may have to wait 8-12 months before the US Government will issue a trademark registration. This means that you will have to deal with the infringing app and potentially losing business for your app for that length of time.
I regularly talk to my clients about practical reasons to register their trademarks. Without a doubt there are legal reasons, like your ability to sue a potential infringer once your trademark is registered. But lawsuits are expensive and typically we try to prevent them from ever coming into fruition. Practical reasons, like the example given above, really make the case for the importance of trademarking the names of software products, especially before they are launched. Apple, along with other major Web sites, will work with you to prevent trademark infringement – assuming you can prove ownership of the mark. The easiest way to prove ownership is via a U.S. federal trademark registration.