Think about your favorite brands. Say their names aloud. Picture their logos and their color schemes. Did you think of Google, NIKE, Amazon, or Apple? Or perhaps Coca-Cola, Starbucks, or IKEA? Whichever brands came to mind, the fact is, any brand worth mentioning has a distinctive identity that it carefully cultivates and vigorously defends.
Now, contemplate a world in which all your favorite brands have no means by which to protect those brands. In that world, anyone can make products bearing the names Google, IKEA, or Starbucks. In that world, you can’t count on your browser working, your Smäaafurgeller bookshelves remaining intact, or your coffee having exactly that fake-pumpkin-spice flavor you love.
Lucky for us, we don’t live in that world. We live in a world where registered trademarks keep other people from co-opting and contorting the brands we know and love. So — as you develop your brilliant new mobile app idea — why wouldn’t you take the important step to register your own app name trademark and thereby establish a foundation for a brand you can cultivate and defend?
Unfortunately, we’ve seen and heard too many sad stories: an enthusiastic would-be app entrepreneur has already proceeded far down the path of mobile app development only to find out — much later than is desirable — that the app name they’d planned to use is a no-go. Either the name is already taken, or there already exists an app with a too-similar name. Either way, it’s not good news for the would-be app entrepreneur’s timeline or finances.
With that in mind, we wanted to put together a blog that explains not only why it’s important to trademark your app name, but how to go about making it happen. So without further ado…
Why Is It Important to Trademark My App Name?
First things first: why is it important to go through the process of registering for an app name trademark?
- You make certain it’s available for YOU to use. Trademarks are granted by the US Patent and Trademark Office (USPTO) and other countries’ trademark authorities on a first-come, first-served basis. If you develop and name your mobile app without first looking into whether the mobile app trademark is available, you risk the belated discovery that someone DID get there first. The name you want may be unavailable. And if you proceed in using a name someone else has trademarked, you could face a court order or a cease-and-desist letter and be required to pay monetary damages and attorney’s fees. In addition, you’d face an embarrassing — and potentially expensive — need to rebrand your app.
- You protect your own product. If you create a successful mobile app, imitations are likely to follow. It’s in imitators’ best interests to create apps that can effectively ride your coattails by using the same or a similar name. Sadly, your users can be easily misled. And if you didn’t register your mobile app trademark, your users can easily be led… to download your competitors’ products instead of yours. On the flipside, if you DID register your trademark, you have legal recourse to take action against imitators and protect yourself from such infringement.
- You establish a truly distinctive brand identity. The best brands have names that aren’t easily confused with any other companies’ names. So while it’s tempting for mobile app developers to want to use basic, easily searchable terms in their app names to make themselves easier to find for prospective users, in doing so they’re not creating a truly differentiated brand identity. In addition, you can’t trademark an app name that isn’t genuinely distinctive. Trademark governing authorities will reject trademark registrations that may cause what they call a “likelihood of confusion” between your mobile app trademark and that of another party. In addition, as everyone knows, strong brands can be a crucial tool for driving strong sales.
So How Do I Create and Register My Trademark?
For the purposes of our blog, we’ll focus on how the process works in the United States.
- Start by learning the basics.Visit the USPTO website and learn the basics of what trademarks are and what the process entails. The site offers detailed guidance, instructional videos, a searchable trademark database, and access to online applications. In particular, note that while registering your app trademark effectively reserves your trademark rights, those rights will not vest until you use them in commerce. Also bear in mind that the USPTO can take a reeeeeally long time to approve a trademark — on average, about six to seven months. Accordingly, if you’re planning a near-term app launch, it’s crucial to initiate the process ASAP.
- Develop strong app name trademark ideas.If your app trademark isn’t distinctive, using descriptive rather than distinctive words, you’re likely to run into issues registering a trademark for it. That’s because trademark protection is based on a “strength” classification system. If you use a largely descriptive name, that’s considered “weak,” as it’s going to be difficult to prevent others from using similar names (e.g., nobody’s allowed to trademark a common word like “calendar”). “Strong” trademarks are truly distinctive, such that you can immediately stop anyone else from using it. Accordingly, as you brainstorm a name for your mobile app, steer yourself toward genuinely distinctive names that are simultaneously short, easy-to-remember, and easy-to-pronounce. Inventing entirely new words can be a great way to go. (Think again of Google, which knew better than to name themselves “Search Engine Company.” Instead, they created a new word from an existing concept, “googol,” or 1010.)In addition, it’s important to understand that “likelihood of confusion” (the most common reason USPTO refuses trademark registrations) can also emerge from similarities in meaning, appearance, or sound. For example, if you want to name your mobile drawing app “Doodler,” you could potentially run into issues if you find out there are already apps on the market called “Oodles” and “Dawdler.”
- Thoroughly research your app name trademark ideas.Speaking of good old Google, while doing a basic Google search is a fine way to begin your research, it’s only the first step. You need to get creative in your searches, performing separate searches for each word in your app’s name, doing your best to think of similar-sounding or similar-looking words and phrases to check, and looking for variations on your desired name. You need to use your wide array of search terms to conduct painstaking searches of the App Store and Google Play. And, most importantly, you need to look for your list of search terms in the publicly available USPTO trademark database. Again, you want to avoid anything that could create confusion with consumers, because the USPTO may not approve it.To be absolutely certain no conflicting trademark exists, it may be worthwhile to consider enlisting a legal professional to conduct a proper, thorough trademark search that leaves no stone unturned and helps you more clearly understand the ramifications of your search results. Which brings me to my next point…
- Consider hiring a lawyer who specializes in trademarks.While it is absolutely possible to register your app name trademark on your own, an experienced trademark lawyer can help you navigate the process with less uncertainty. (At Distillery, we often use Attorney Marc Hankin for these purposes.) The USPTO allows you to appoint a licensed attorney to act as your representative, or you may continue to act as your own representative, keeping counsel with your lawyer.A good trademark lawyer can also be particularly helpful in helping you navigate the trademark registration process in other countries. Because indeed, if you see a substantive market for your mobile app in countries beyond the United States, it’s a good idea to consider registering your app name trademark in those countries as well.
- Get your trademark information in order.Decide on the specific app trademark you’ll register. Use the USPTO guidance — or your handy trademark lawyer — to get your terminology and files in order, including:
- The format of your app trademark (“standard character format,” “stylized/design format,” or “sound mark”)
- The “class(es)” of your goods and services from among 40+ different classes (e.g., “Class 9” includes downloaded computer software, but perhaps you plan to sell hats and t-shirts as well, which are covered under “Class 25”)
- Your “basis for filing” (common categories for app purposes include “use in commerce” and “intent to use,” with “use in commerce” indicating that you’ve already used your desired trademark in the marketplace)
- If you’re already using the app trademark, date of first use and samples of usage
- Any image files you plan to submit, which must be included as unzipped, 5MB-or-smaller JPGs with filenames less than 256 characters long (in addition, if colors are a “feature” of your trademark, note that your file must use an RGB color scheme, and that the CMYK schemes used by Photoshop and Illustrator are not permitted)
Your USPTO application will require you to have all of this information compiled correctly so that your trademark registration covers all appropriate intended uses. The information also helps you compute your fees correctly, since filing fees are paid upfront (at the time of application) on a per-class basis.
- Determine which form you need to fill out, and file your application.Fortunately, among the USPTO’s instructional videos are a helpful set of videos designed to help you figure out not only which form you should fill out, but also how to fill it out. Before you begin, make sure to enable pop-ups on your browsers, as the USPTO forms use pop-up windows to provide critical information. In addition, bear in mind that, as of press time, when you’re filling out your form online, the USPTO system will time out and end your session if it does not detect any activity over a 60-minute period. (The system will, however, give you a pop-up warning six minutes prior to logging you out.)
- Be patient.Once you hit “submit,” your app trademark application is submitted for review by an examining attorney with the USPTO. You and/or your trademark lawyer can use the USPTO website to check your status. It’s possible that you may be asked to provide additional documentation before your registration is approved.According to the USPTO website, you should receive a response within six to seven months of the date you filed, but “the total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application.”
What Else Do I Need to Know?
Below are a few more things it’s helpful to know in advance of beginning the app trademark process:
- Refunds: No refunds are issued by USPTO, even if your registration is rejected. The upfront fees you pay are considered “processing fees.”
- Maintenance: US trademarks do require upkeep. An “Affidavit of Use” must be filed between the fifth and sixth year following registration, and within the year before the end of every ten-year period following the date of registration.
- The USPTO website also has information about international registrations.
- International trademark registrations with the International Bureau last ten years.
- If you are considering registering trademarks in several different countries, prioritize your markets and weigh the pros and cons of applying in each. The process can be expensive, and it may not be worthwhile to register in all markets.
- Classes: On average, each trademark application is submitted for two or three different classes.
- Limitations: Your app trademark rights are limited to your goods and services. In other words, if you trademark the name “CurlyWhirly” for a mobile gaming app, someone else CAN use that specific name for goods and services in an entirely different industry (e.g., for a chain of hair salons). The rationale is that nobody confuse your app with their hair salon, and their goods and services do not compete with yours.
It’s our ardent hope that, going forward, we won’t hear any more sad stories of legally mandated renaming and rebranding, or of non-trademarked mobile app names being co-opted after the fact. Because the fact is — in addition to saving you from huge potential headaches further down the road — a little foresight and due diligence with respect to trademarking your app name can pay massive dividends for you, enabling you to create a truly distinctive brand that you can not only protect but build your future on.
Want to learn more about how we help our clients see the “big picture” in the mobile app development process? Let us know!
About the Author
Ekaterina Kudievskaia is excited to be part of Distillery’s marketing team. With a background in education, operations, and sales, she’s known as a proven problem-solver, team-builder, and collaborator. Ekaterina loves to travel and is enjoying learning to snowboard. She’s also a huge fan of sushi and dreams of taking a trip to Japan.