Imagine you’ve developed this whiz-bang new app. You’re beyond pumped to launch next week. You’ve spent years (and your savings) on this one product and it’s D-Day — the marketing launch is ready to go. Next minute, you get an email from your friend saying they were browsing online and they saw an app using your brand name. Shock. Horror. And a lot of swearing later. What do you do?
If you’ve developed an app or any kind of software you need to be thinking about how to protect your brand. Without registering for a trademark you’re at risk of someone taking your brand name and using it in whatever way they please. Or worse - you could be using someone else’s brand name without knowing. If you’ve bootstrapped your app or software or your funding is drying up, you might shrug this off as a non-essential and that would be a mistake. Think about it. Consumers buy brands. You don’t buy a smartphone. You buy an iPhone. You don’t say I use a social networking app. You say I use Facebook or Twitter or Snapchat.
To give you the best information about trademarks we spoke with with Celia Murray, a licensing and trademarks attorney. In this post she talks about what exactly you should be doing if you’re developing or have developed some kind of app or software. She explains the difference between a patent and a trademark, talks us through the benefits of trademarking and shares some surprising examples of when trademarking has impacted some of the biggest tech giants in the world.
Does my app or software need a patent or a trademark?
A trademark is the identity of your business. It is used to distinguish your goods or services from those of another trader. A trademark can be a letter, number, word, phrase, sound, smell, shape, logo, picture, aspect of packaging or a combination of any of these.
There are two types of patents in Australia. A standard patent gives you long-term protection and control over an invention and lasts up to 20 years. Your invention claimed in a standard patent must be new, involve an inventive step and be able to be made or used in an industry. An innovation patent is for an invention with a short market life. This patent is quite unique to Australia and only lasts up to 8 years. An example of a patent is Apple’s lightning connector - it was officially patented by the U.S. Patent and Trademark office, along with 45 other unique Apple patents, earlier this month.
Unless your app meets the criteria for a patent, it’s likely a trademark registration is your best option to protect your business.
What are the benefits of a trademark?
Trademarks give your intellectual property the business edge it needs. This is just one of the many benefits. Celia explains further, the benefits of trademarking your brand and assets are:
- Monopoly: You have the exclusive monopoly to exploit your asset in relation to the goods and/or services you provide.
- Increase your value: A trademark could also increase the value of your innovation as a package. For example Asana, a time-tracking software tool, has copyright for their software. Their brand name Asana is trademarked under two classes. If Asana sold their company, the IP package of the software copyright and their brand name trademarks, could result in a higher value than just the software alone.
- More revenue streams: A trademark allows for another income stream, or can increase the value of your income stream, through licensing. You can license your innovation and your brand name. For example, big companies such as Warner Brothers will license their characters such as Bugs Bunny to game developers, toy companies, clothing companies etc.
- Stop copycats: A trademark can deter and prevent others from using a name/phrase etc in a market that is similar or identical to yours.
- Protect yourself: It can also help you protect yourself from infringement claims. Pitching also becomes easier as you know that you are spreading the word about your innovation and that it’s protected in the market. No one else can use it!
- Control: You can control the use of your brand name when used by others and if you are thinking of selling your company in the future, trademarks are listed in your balance sheet as an intangible asset.
How can you register for a trademark?
Before investing time and money into your app or software, you need to ensure nobody is using the mark or brand already in a similar way to your business. Trademark search and registration can be complex and time-consuming. That’s why so many people enlist the help from a trademark attorney. The application process can take up to 8 months.
There are 5 steps to take:
- Decide if you have a trademark
- Understand goods and services classes
- Search if someone’s using your trademark in your chosen classes
- Application outcome
- Trademarks aren’t just brand names or logos - Levis have registered their well-known pocket stitching on their denim jeans and Burberry has trademarked their signature check pattern.
- You can’t claim to have a monopoly right over an idea, but once tangible as a registered entity (patent, trademark, registered design) then you can protect it.
- A trademark is not a design
- It’s not possible to trademark generic common terms and words. An easy way to think about this is a trademark is meant to be used as an adjective; not a noun or verb. For example, correct usage would be I need to use Glad Wrap plastic wrap to cover my leftover food. The incorrect usage would be: I need to gladwrap this.
Apple has the trademark in the technology class. They could never have the Apple trademark in the food and beverage classes as it’s a generic term.
Examples of technology company’s trademarks that failed
App Store trademark unsuccessful in Australia
In 2012 Apple tried to trademark its Apple Store layout. It was granted in the USA but was unsuccessful in Australia due to a lack of distinctiveness.
The same happened in 2008 when the company tried to register the trademark APP STORE. The trademark registration was unsuccessful again due to lack of distinctiveness. Apple appealed and went to the High Court. They even presented expert linguistic evidence to support their argument that the use of APP STORE was creative and not a common expression when the trademark was filed. The courts found the evidence was argumentative rather than factual that the public could consider APP STORE as an expression to describe a store.
Walkman lose trademark due to generic term associations
In 2002 the Austrian Supreme Court ruled that Sony’s trademark Walkman had become a generic term / name of a product for portable stereos. This meant in Austria, Sony cannot prevent other technology businesses from using walkman to describe similar goods. The court referenced a German dictionary showing the term walkman had been a generic term used to describe personal cassette music players since 1986. The court also said Sony was partially responsible for the demise of its trademark as it had not taken any active steps to prevent the use of the generic term.
Trademarking your app or software is worth both the time and financial investment if you’re serious about protecting your brand. Without it you might find yourself caught in an awkward and costly situation where you’re using someone’s brand or someone starts using yours and you’re not covered.
If you’re in the midst of launching your app or software don’t miss downloading our ebook How to launch a start-up. You get an incredible library of tricks and tips to help your business get off to the right start.
Do you have an interesting trademark story? Tell us in the comments below.