Avoiding Trademark Issues in the App Store
The usual advice on this subject goes something like this:
Think of an app name. Make sure its not already registered. Register the trademark.
Well, the steps above are pretty vague, and let’s face it, not all of us can shuffle out $300-400 per app right off the bat unless we know it’s going to be worth it. Given the trademark issues I’ve faced recently, here’s my advice for the average indie iOS developer.
NOTE: Everything in this article applies to Unitied States copyright and trademarks, as I’m not sure how the whole thing works in other countries.
Start off by brainstorming some original names for your app. It doesn’t have to be all that catchy, but it should be simple and descriptive. Take one of the recent app store successes for example. Cut the Rope isn’t going to win any awards for the most creative app name, but it is simple, descriptive, and original.
Once you find a name, do a Google search, as well as a search in the App Store to make sure the name isn’t taken by any other software or games out there. If your pending app name has more than one word, also search for each word individually.
Doodle Dash! clashed with Playfirst, Inc. because a large majority of their games are “Something” Dash, so you might want to avoid a word if it’s used by a lot of other apps, especially the more popular ones. With that said, I now see that both “Doodle” and “Dash” were bad choices when it came to naming my app.
Once your chosen name passes the Google and App Store steps, it’s time to search for some registered trademarks for all the significant words in your pending title. Visit the TESS website and click Basic Search to get started.
If any words you chose do come up in your search, don’t give up on it just yet. Click on each one to see if the registered trademark is in an industry that would conflict with an app store app. You can register the same trademark in a separate industry IF using that trademark will not cause consumer confusion.
Pay special attention to industries such as, “Computer game software; Electronic game software; Game software; Video game software.” because those are the one’s you really want to stay away from if your word has already been registered.
Once you’ve found a combination of words that pass all of the above steps, go into iTunes Connect and create your app right away! You don’t have to be ready to upload your app to create a new profile for your app, just fill out as much information as you can.
What this will do is effectively set an official “creation date” for your app name, and by common law, grant you the right to use that trademark as yours (since nobody else is using it, or has it registered).
The US Patent and Trademark Office FAQ states:
Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration.
If you followed the steps I described when choosing your app name, creating the app in iTunes provides proof that you started using that trademark on a specific date (since that data obviously can’t be manipulated).
That way, if a company or individual were to register the trademarks on the words you chose after that date, your common law rights would prevent them from being able to get your app removed or force you to rename it.
This doesn’t mean you can think of as many potential app names as you can think of and “reserve” them, but if your app is in development then it shouldn’t be too long before you really are using the trademark for commerce. At the very least, registering the app name in iTunes shows your intent to use it.
If it takes you too long to release your app, however, then the “release date” might be the only one that can protect you, but in any case that should be sufficient proof.
What Common Law Won’t Do
While everything I’ve described so far is a good way to protect yourself from someone registering your trademark later and trying to accuse you of infringing on their work, common law rights won’t help you legally when it comes to preventing others from infringing on your work.
So if you’re on the other end of the spectrum and feel like someone is using your trademark, it will be very difficult for you to challenge them in court (or anywhere else) if you don’t have your trademark officially registered.
With that said, you should definitely strive to eventually register your app names as trademarks if you can’t do it right off the bat, especially if any of your apps become widespread.
When you’re ready for that step, here’s a good resource that’ll show you how.
Here’s to no more trademark or legal issues!