Protecting Trademarks for Mobile Apps
The explosion of mobile apps in the digital market and their ever-increasing popularity make it advisable for app developers to distinguish their products with a distinctive brand. However, there are nuances specific to branding an app that developers should take into consideration. In addition to the usual trademark considerations encountered when building any brand, app distribution platforms often have their own sets of rules about the names of apps they host. Consumer preference for short names that identify the nature or function of the product should be balanced against anonymity brought by the sheer number of competing products that offer the same function (and continue to appear from all over the globe). A distinctive rather than descriptive name and distinguishing characteristics such as logos, icons, designs, slogans, interfaces, characters, layouts, color schemes, and company names can serve to differentiate an otherwise run-of-the-mill app. However, the developer should also make sure that the names and other marks it develops are available for use and registration before adopting them.
It is advisable to proactively register marks in the relevant countries to ensure that the marks can be used and to get a head-start in keeping others from free-riding on the success of the app. Monitoring and enforcement (often of an international scope) is a key to maintaining exclusivity and fending off similarly named products, which in turn enable the app to grow in reputation and garner a loyal client base.
Selecting Trademarks and Conducting Searches
Due to the sheer number of apps that have emerged on the market, creating a unique and memorable app name and icon, although challenging, is a worthwhile investment because it distinguishes the developer’s app from others in the marketplace and increases the likelihood that consumers who buy and enjoy the app will continue to recognize its quality and purchase the developer’s other apps. As important as selecting a unique and memorable trademark, however, is selecting a trademark that does not infringe the rights of others. Before filing the trademark application, using the mark, or investing in the brand, developers should obtain a search and opinion, as discussed below, to determine whether their mark is likely to be confused with a trademark of a similar product.
App developers face a particular challenge in naming their apps because consumers tend to spend little time exploring and comparing such low-cost investments. It becomes important to create an app name and logo with enough information to ensure users find the app while searching for its functionality in an online store and to indicate to consumers that the app is what they are looking for at the point of purchase. However, overly descriptive names are difficult and costly to protect as trademarks, if they are capable of protection at all. For example, consumers searching for a calculator app may simply download the first app named “Calculator;” however, this app name is descriptive and not capable of trademark protection. Marketplace realities make walking the fine line of trademark selection an integral step in the success of an app.
The app developer should be considering the long-term goals for the product’s reach. Is the app going to be available nationally and/or internationally? For internationally available apps, it is important to account for the significant differences in the availability of trademark protection outside the United States and to plan to register the mark(s) in those foreign markets where feasible. While there is no foolproof way to determine the strength of a mark, generally marks that are fanciful (invented words, such as SHAZAM (U.S. Reg. No. 3387890)) or arbitrary (where the word bears no relation to the features or content of the app, such as MONSTER.COM for providing online information and counseling in the fields of employment, recruitment, careers, and work life (U.S. Reg. No. 2403411)) receive the highest level of protection and are the least expensive to enforce.
Developers may think that if the customer has not been exposed to the product through word of mouth or advertising and marketing, an arbitrary or fanciful mark by itself may initially conceal the app’s function and cause consumers to seek out an app with a name more indicative of the function or service. Developers may want to consider various strategies, such as pairing descriptive names with distinctive icons; pairing suggestive, fanciful or arbitrary names with descriptive terms or icons; and anticipating keywords that will prompt their apps in search results. Investing in brand promotion is also beneficial. For instance, popular game app ANGRY BIRDS (U.S. Reg. No. 3976576) has expanded its brand beyond videogames and into other product lines, obtaining registrations for goods including bed linens, apparel, and food (see U.S. Reg. Nos. 4148716 and 4200545).
When creating the artwork for the app’s icon and other graphic trademarks, developing a distinctive mark can help the app to stand out to consumers. Due to budget restrictions, developers who gravitate to stock images in their logo or icon design do so at increased risk. Stock content may be licensed for use under either a royalty-free license or a rights-managed license, many of which do not extend to the right to use the image as part of a trademark.
In order to ensure distinctiveness of an icon and other graphic trademarks of the app, many developers commission a graphic artist to design their marks. In this case, it is advisable to enter into a signed agreement with the artist or designer that assigns all rights in the commissioned work to the developer and indemnifies the developer against copyright infringement claims of third parties.
When considering possible trademarks for adoption, a developer should obtain a clearance search and legal opinion to determine whether the mark is likely to be available for use and registration. Different levels of searching are available, but initially, at the very least, a developer should consider a search for federal marks potentially similar to the app name (word mark) and possibly the app icon (device mark). The search should not be limited to mobile apps, and should consider similar marks for all software and telecommunications products and services, as well as products and services related to the function of the app. Additional jurisdictions where the app is likely to be available or used should also be searched, particularly where there is concern about the possibility of piracy or infringement. This is especially true with mobile and software goods and services, which can easily cross national borders via the internet.
Once the mark is cleared for use and registration, an application for registration may be filed in the United States and any other anticipated jurisdictions where the app will be commercialized. Many countries permit applications to be filed and grant registrations before the mark is actually used. In fact, most countries do not even recognize trademark rights until they are on the national register, regardless of whether they are used. In the United States, while intent to use serves as a basis to file an application, the registration is not usually granted until acceptable use has commenced.
Identification of the Goods
Among many other possible classes in which various goods and services are categorized in countries that are parties to the Nice Classification, developers usually apply for registration in Classes 9 and 42. Class 9 covers the downloadable software as a product, while Class 42 covers access to the software as a service. A developer may also consider protection in other relevant classes that are specific to the app’s function, its industry specific content, or to possible licensing and merchandising arrangements. Except in the rare circumstance where a mark is considered “famous,” others may generally use the same mark on dissimilar goods and services so long as it would not cause consumer confusion.
Covering the bases by registering for numerous classes, while potentially beneficial, may not be a viable option for many app developers due to budget constraints. The concerns of a company that is creating an app as an extension of their already established service (for example, an airline company) may differ from those of a company whose principal good/service is the app itself. The airline company might want to consider whether their current trademark protection (if any) already offers sufficient protection. If protection is inadequate, the company will need to assess its tolerance for a different company claiming an identical or similar mark for their own app. Where the app is the primary product/service, the developer may want to consider whether the app fits in Class 9, 42 or both, depending on whether the information delivered is confined to the app’s software or is accessed from the Cloud. The app developer should closely consider every aspect of the app because even an app geared toward services in a non-software industry may have a feature that puts its product within the scope of either or both software classes, and sometimes others also.
Using the Mark Properly
As with all trademarks, developers should use their app’s trademarks properly In order to ensure continued protection and limit potential infringement by third parties:
- After a developer commences use, they may place a notice such as ™ or ℠ on the top right corner of the mark. While these notices do not themselves provide any legal rights, they put others on notice that the owner claims rights as a trademark. In the United States and some other jurisdictions, developers can claim rights even without applying to register the mark, though there are added benefits to registration. Upon federal registration developers can use the ® notice in place of the ™ or ℠ symbols. When the app is made available in multiple countries, further guidance about appropriate marking should be obtained.
- Apart from proper marking, the developer should use an attribution statement that aids users and others to recognize the proper owner of the rights.
- In marketing materials and other prose, capitalize, italicize, or otherwise make the trademark stand out from surrounding text.
- Always use the mark as a proper adjective, which modifies a generic or descriptive term (“Dropbox™ file sharing”), not as a noun or verb (“send the file to the Dropbox” or “Dropbox the file”).
- Adhere to proper licensing practices; in particular, ensure that the license agreement provides the trademark owner the ability to control the manner of use of the trademark. When negotiating a license agreement, consider whether the licenses extend the use into new products and/or services. Also consider whether the license extends to new jurisdictions. Availability searches should precede granting the license for such new uses.
- Educate third parties and customers regarding proper and allowed use of the trademark and include this information in an appropriately-worded End User License Agreement.
- Monitor trademark application filings, domain name registrations, and uses of the mark on the internet and in social media in order to act timely against those who are infringing on the developer’s prior rights.
- Develop a strategy for taking prompt and appropriate action against infringing activity.
Domain Names and Corporate Names
In order to guard against personal liability, developers usually use an incorporated legal entity to conduct their business, enter into contracts including licensing agreements, and register trademarks. However, mere incorporation of a business or trade name with a state government does not create trademark rights, and separate protection as a trademark may be advisable.
After obtaining a clearance search and, preferably, seeking trademark registration, app developers should consider reserving the marks as domain and social media usernames. If a third party registers and uses the domain in good faith before the developer does, the developer will usually be unable to obtain the domain other than by purchasing it. On the other hand, if the domain was registered and used by a third party in bad faith, various laws and policies may offer efficient and cost-effective means to retrieve the domain name.
As over a thousand new generic Top Level Domains (gTLDs) have begun to become available for registration, developers may wish to explore the option of reserving their marks on relevant new keyword gTLDs that relate to the mobile market, such as .app, .mobile, or the particular industry, such as .game, .art, .beauty, etc., where permissible. Owners of registered trademarks may take special steps to be entitled to early opportunities to register their marks as domains in appropriate new gTLDs or stop others from doing so.
Other Trademark Considerations for Smartphone Apps
Developers may wish to release their apps to a variety of distribution platforms in multiple countries, such as Google Play® and the iOS® App Store. It is important to observe the platforms’ requirements or limitations regarding app names. For example, Apple advises that use of an app name that is a registered trademark of another party or is already in use in the iOS® App Store can result in its removal. Names of apps must also not exceed thirty-five characters. Additionally, both Google and Apple have strict guidelines with respect to use of their trademarks to indicate compatibility with their platforms.
In balancing trademark law and platform requirements, a savvy developer will also need to consider the overall perception and appearance of the app name and icon. For example, a thirty-five character app name will generally be cut-off with an ellipsis and the entire name will not appear in the iOS® App Store. Where developers seek a longer name or logo, it may be advisable to consider additional shortened versions of the name or an icon that corresponds with a larger graphic device. For example, Electronic Arts’ (“EA”) PopCap® Games has multiple variations of a game called “Bejeweled.” EA owns federal registrations for the word BEJEWELED (including Reg. No. 2864970), but not for the full name of one of the popular games, “Bejeweled Blitz,” although the combined terms may be registerable. Accordingly, EA marks the game “Bejeweled® Blitz”, showing that they have a registration for the BEJEWELED portion of the design but the whole design is marked with the ™ symbol: 
.
The icon affiliated with the game is another design: 
and the abbreviated app name appears only as “Blitz.”
Considering Apple’s Terms and Conditions, it is advisable to first file a trademark application and approach completion of development before adding the app to iTunes Connect™, the website where developers submit and manage apps for distribution on the iOS® App Store. While Apple allows developers to secure the name before the app is ready for use, after an app is added and in the “Prepare for Upload,” or “Waiting for Upload” state, the developer only has 180 days (6 months) from the date of creation on iTunes Connect™ to deliver the object code to Apple. If the deadline is missed, the app is deleted from iTunes Connect™, the developer is barred from reusing the app name, and the app name may be used by another developer. Therefore, already having a trademark application on file can prevent another developer from taking the mark, preserving any resources spent on the mark’s creation and allowing the developer to use it on a different platform if he or she so chooses. During the 180-day period, other developers are prohibited from listing apps with substantially similar names on the iOS® App Store, giving an added layer of protection for the developer’s app name within Apple’s store. There is a common misconception that common law rights may arise in the United States during this period. Common law rights do not usually arise until the app is actually available for download or its corresponding services are offered to consumers. Also mere creation on iTunes Connect™ will not prevent third party use in other app marketplaces.
Google Play® allows developers to release their apps in the marketplace without going through a selection process. There are general requirements regarding app content, testing, and preparing promotional materials. However, once these requirements have been met, anyone may publish an app on Google Play®. The Developer Distribution agreement states that “Apps must not have names or icons that appear confusingly similar to existing products.” However, prior to this requirement being added in 2012, it appears there was no such prohibition and it is unclear how Google Play® is handling confusingly similar names that were published prior to this policy.
Unlike Google Play®, apps released through the iOS® App Store must be selected. The iOS® Developer Program License Agreement specifies that if an app meets the Developer Program requirements and is selected by Apple for distribution, the developer grants Apple a license to its app and appoints Apple and Apple Subsidiaries as its worldwide agent for delivery to end-users. While the developer is prohibited from selling its app via other platforms throughout the world, it has the option of selecting countries in which the app will be sold. If the app is selected for distribution, Apple is authorized to use screen shots and/or up to 30 second excerpts, which may be the subject of copyright and/or other intellectual property rights, trademarks, and logos associated with the app, and other app information for promotional purposes in marketing materials and gift cards. Additionally, upon delivery of the app through iTunes Connect™, the developer is required to submit any intellectual property rights notices associated with the app.
If the developer’s app allows for user-uploaded content, it is advisable to take steps to draft a clear policy regarding proper use of the developer’s trademarks and takedown procedures to take advantage of legal safe harbors from secondary liability for infringing conduct. If personally identifiable information is collected using the app, a privacy policy and other terms and conditions may be appropriate.
Conclusion
With the number of mobile apps on the rise, app developers should create distinctive brands that set their product apart from competing apps. This suggests a need for proper trademark protection and enforcement regimes. In a market filled with low-cost products that lead consumers to make snap decisions at the point of purchase, concise marks are favored. App developers should consider suggestive, arbitrary, or fanciful word marks and perhaps pair them with a unique icon or logo, while taking steps to ensure that their marks will not infringe those of third parties. Further, app developers should be cognizant of the global nature of the market and determine whether and when their goals for their product’s distribution and expansion merit international trademark protection, taking care to select the proper classes (where applicable) under which to apply.
Once a mark is successfully registered, developers should maintain their ownership by taking steps such as utilizing correct licensing procedures, creating end-user agreements, vigilantly enforcing their ownership, and adequately displaying the trademark right. Incorporation and registration in new app-specific gTLDs should also be considered. In addition to trademark considerations, developers should be cognizant of any additional requirements set out by their chosen platform distributors and plan in advance to navigate these rules in tandem with their trademark registration requirements.