If you are a typical person today, you’ve likely used at least three different apps before 9 am. You get up in the morning and click on your weather app of choice to figure out what to wear and whether to take your umbrella. Then you grab an UBER® to get to the office and during the ride, you order your coffee so it is ready for you as you breeze through the building on the way to the elevator. No sense in waiting for the coffee, as this is a needless waste of time. With more and more people relying on apps, app design, branding, marketing, and protection are more important than ever.
The number of mobile apps is exploding. In June 2016, Apple® reported approximately 2,000,000 total apps in its app store. By May 2017, that number had increased by approximately 200,000. Mobile apps may be discussed in three categories – mobile web apps that enhance web browsing, apps that offer users a new service not previously available via a smart phone, and traditional brands whose business is widely known (such as WALGREENS®). With all of the competition in the marketplace, companies must consider how to protect their app brand as a trademark, before it launches the new app into the marketplace.
To be “protectable” as a U.S. trademark, an app must have a few key characteristics. First, consider the name of the app. Does it describe a feature or function of the app? If so, the owner may want to reconsider, as the U.S. Patent & Trademark Office typically does not allow registration of descriptive marks. Instead, the owner of the app will need to come up with a name that is either merely suggestive of the service the app provides or is arbitrary. Arbitrary names of apps are those that do not describe or suggest anything about the app. APPLE® itself is a good example of an arbitrary trademark, as APPLE® is a trademark for computers, pads, phones and other goods and services, all having nothing to do with fruit. Suggestive trademarks may be the happy medium where the function of the app is not outwardly described, but the app name hints at the meaning. For example, ENLIGHT® is a photo editor app and would be considered suggestive because it suggests something about photo editing but does not describe it.
In considering the name of the app, owners will also want to pay attention to the color and icon they will use with the app. Will these elements convey a unique design that may lend itself to trademark protection? While color is sometimes not claimed as part of a design trademark in the trademark application or emphasized in a typical enforcement setting, in the app setting it is important to claim color, as it is one mechanism to set the app apart from others.
Registration of an app name and design provides many benefits. The most important benefit is having the presumption that the owner has the right to use the name, design, and color of the app nationwide over all others, subject to certain exceptions. Another important benefit is that when the app name or design (or both) is a registered trademark, all others are put on notice of the owner’s rights. That is, all others are held to know about the registered app, even if they did not actually know about it. Finally, federally registered trademarks may obtain relief from an infringer without a lawsuit. If the owner simply wants the infringer to stop using the confusingly similar name, design and/or color scheme, the owner need only submit proof to the marketplace on which the app is available, and the marketplace, such as the Apple® App Store, will assist in removing the infringing app.
For further inquiries pertaining to apps and trademark protection and related questions regarding your intellectual property, please contact:
312.368.0100 or firstname.lastname@example.org.
*UBER®, WALGREENS®, APPLE®, and ENLIGHT® are all registered trademarks of their respective owners.
(Please note that we are not endorsing any products or services mentioned in this blog).
While the BREXIT decision has been made, much ambiguity remains on the issue of trademark rights holders and their interests that are currently protected by European Union trademarks, commonly referred to as “EUTMs”.
Neither Theresa May’s BREXIT speech in January 2017, nor the UK government’s white paper entitled “United Kingdom’s exit from and new partnership with the European Union” published in February 2017 advise or guide trademark holders as to whether their rights will continue to be protected in the UK or whether trademark holders’ rights vis a vis the UK will simply cease to exist. However, certain intellectual property organizations such as The Chartered Institute of Trademark Attorneys (CITMA) have offered some ideas as to how this issue may be addressed. Their suggestions include the following three approaches: (1) the UK plus, (2) The Jersey model, (3) The Montenegro model, (4) The Tuvalu model, (5) Veto, (6) The Republic of Ireland model and (7) Conversion. The following is a description of how each approach would address the issue post-BREXIT.
(1) The UK plus
EUTM protection would be extended to include the UK, and possibly other European countries who are not currently members of the EU.
(2) The Jersey model,
The UK would deem EUTM registrations to have the same rights in the UK as they do in the EU and UK courts would recognize EUTM registrations as if they were UK registered marks for purposes of enforcement. However, the UK would not otherwise record these trade marks in the UK Trade Mark Office.
(3) The Montenegro model
All existing EU trade mark registrations would automatically be entered into the UK trade mark register as UK registrations where the marks would have the same description of services, same registration date, and where applicable, the same priority and seniority.
(4) The Tuvalu model
Like The Montenegro model, the existing EU trade mark registrations would be entered onto the UK Intellectual Property Office (“UKIPO”) registry, but only if the EU trade mark holder filed a form requesting the same within a prescribed time frame (to be determined).
The Veto system would resemble the Montenegro model where holders of EU trade mark registrations could request a mirror-image UK registration, but the UKIPO could then elect to refuse certain registrations that would not have been registrable under the UK laws, had the original application been filed in the UK.
(6) The Republic of Ireland model
Registrations in the EU would be enforceable in the UK until such time as the EU registration renewal deadline, at which time the EU registration holder would be required to create a UK registration that corresponds to its EU registration in addition to filing its EU renewal. Likely the UK registration would have to be filed within a certain amount of time after the EU renewal.
All EU registered trade marks would be automatically converted to UK applications, where they would then go through a full examination by the UKIPO as if it was a newly filed UK application.
While it remains to be seen which method will be adopted in 2019 when BREXIT takes effect, likely one of these approaches will become the procedure to follow. Businesses with sales in Europe and the UK should consider filing a separate trademark application in the UK now, as a precautionary measure. To learn more about how to protect brands in Europe and the UK, please contact:
email@example.com or (312) 368-0100.