Should I Register the Name of My Mobile App as a Federal Trademark?

Detroit Michigan Trademark Attorney: Why Trademark an App? 

This is a question one can ask about any product or service: why should I bother trademarking it? 

Apps are big business. Some disappear beneath the waves of the enormity of the Google Store or iTunes inventory, but others are downloaded and used by millions of people and become global brands that are licensed for films, video games, TV shows, you-name-it (think “Angry Birds”). 

Why trademark an app? So you, the creator, the owner, the developer who poured your heart and soul (and capital) into the creation of the program will be able to enforce your rights against the plethora of similar apps with similar names that inevitably appear on the scene whenever anything has garnered any amount of success. 

Detroit Michigan Trademark Attorney: What Is Required to Trademark an App

Filing an application for a Federal Trademark registration with the US Patent and Trademark Office (USPTO) is an extended process that involves several steps over as long as a year, in typical cases. 

Step 1 is to develop your app’s name or brand with an eye toward the USPTO’s registration requirements. 

This means not coming up with a brand name that:

  • Infringes on anyone else’s trademark
  • Utilizes an individual person’s name Is not completely generic (i.e., “White Thread”)Is not overly self-descriptive (i.e., “Sharp Thumbtacks”)
  • Infringes on anyone else’s trademarkUtilizes an individual person’s name Is not completely generic (i.e., “White Thread”)Is not overly self-descriptive (i.e., “Sharp Thumbtacks”)

The best name is one that is a nonsense word, that is, an arbitrary or fanciful name that doesn’t indicate anything other than your app, or one that is suggestive only of your app. 

Step 2 is to conduct a thorough clearance search.

This is best accomplished with the assistance of a knowledgeable trademark attorney. A Google search or a USPTO database search will be insufficient to determine whether your app’s proposed name was the first used in commerce under that name. 

A trademark attorney will conduct a search not just of common usages on the web or in the USPTO database but also state trademark databases and many other sources.

The trademark attorney will review the results, refine them, and provide you an opinion as to the risk of filing an application with your particular proposed mark. 

Step 3 is to file an application with the USPTO. 

This will involve preparation of an application form, identification of the particular International Class or Classes that your app belongs to, and provision, crucially, of a specimen demonstrating that your app is currently being marketed in interstate commerce. 

Alternatively, you can file an “intent to use” application if you have not yet launched but intend to do so within a finite amount of time. 

In either case, a knowledgeable trademark attorney should be retained to guarantee your best chance of success, particularly if the USPTO files an “office action” questioning or denying portions or all of your application, or if a competitor files an “opposition” to deny your application. 

Step 4 is to prosecute the application to successful conclusion–and then to maintain it for the life of the trademark’s use. 

The application process can take several months, from the initial examination period, resolution of administrative or other office actions, and waiting out the publication period before your mark is added to the USPTO’s “Principal Register.”

Even after the successful registration, you must maintain your mark to continually assert that it is still being used in interstate commerce. 

Detroit Michigan Trademark Attorney: The Bottom Line Regarding Trademarking Your Mobile App

The bottom line is that with regard to trademark protection of your app’s name or brand, it doesn’t pay to go cheap after investing all of your resources and time into the development of the app itself. You may have devised the most brilliant and unique app ever, but, if you can’t market it properly because it is either ripped off or it sinks beneath a wave of copycat competitors, it won’t pay off for you. 

Retain a trademark attorney such as Attorney John Hilla to assist you with your search and your application to ensure the best results. 

Attorney Hilla’s trademark practice is national, and he represents clients for trademark matters anywhere in the United States and beyond. 

Contact Us to schedule an initial consultation appointment to discuss your trademark needs. 

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