Trademark Considerations for App Developers

When it comes to app development, competition is fierce. Developers look for any advantage to get ahead of the competition. Developing and protecting a catchy, marketable name is one such advantage. Here are a few trademark tips for you and your colleagues to consider about your app name.

Ensure your app name is protectable as a trademark.

Develop a name for your app (or your company) that uses the word or phrase that you can protect:

  • A made-up word that has no connection to the functionality of your app is a strong potential trademark. (Think “Tumblr,” or “Hyper.”)
  • “Suggestive” trademarks are also strong and more protectable. A “suggestive” trademark requires a mental leap to connect the word or phrase with the app’s function. “Detour” is a suggestive trademark. It requires a leap from something that would cause you to detour off your path to an app that offers audio tours of areas.
  • Marks that merely describe what the app does are weak. These types of words and phrases are not even protectable unless the name, usually over considerable time, has acquired distinctiveness (e.g. “Shake ‘n Bake”).
  • Generic words or phrases can never become protectable trademarks – for example, “Wood Glue” brand wood glue. These can never be protected under trademark law because everyone needs to be able to use these words within their industry.

Do not use a name too similar to an already-existing app.

Your app name should not be “confusingly similar” to the name of an app that already exists for a related service. Whether names are “confusingly similar” will depend on a host of factors such as the look, sound, meaning, and general commercial impression of the mark. This is something an attorney can help you evaluate. A comprehensive trademark search performed by a legal professional will scour the USPTO database and the internet for existing conflicts that could stop a prospective trademark.

File to register your trademark with the USPTO.

A federal trademark registration can be the best way to protect your mark. When the United States Patent and Trademark Office (USPTO) issues a registration for a trademark, it gives the owner a presumption of protectability. The registration owner is the owner of the trademark. It also gives “constructive notice” to everyone else in the U.S. This means all third-parties are presumed to know about the federal registration before using a confusingly similar trademark.

Monitor the marketplace for infringement.

A federal registration is important, but it is only the first step. A trademark owner maintains the strength of its trademark by actively ensuring that no one else is using a confusingly similar trademark for related goods and services. If a third party is allowed to use similar trademarks, your trademark may no longer have any value.

Every app owner should be proactive about the selection and protection of the names associated with their product to ensure that all of the time and effort put into marketing and developing a brand is not completely wasted. Further, effective trademark protection and marketing can turn a good app into an essential app.

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