Speaking frankly, you do not actually need to register the trademark for your app. There’s no point bothering if you don’t mind it becoming shovelware. But, if you consider it something big, you better get up and trademark it.
Let us remind you of the situation with that game Flappy Bird. There was a day when almost a third of all apps published in the AppStore were clones of this game! One of the clones was downloaded 644,000 times in 24 hours, according to research conducted by The Guardian.
Copying apps are getting more and more popular, and registering a trademark is one of the ways to keep your app safe. If you don’t care about your intellectual rights, you are at risk of losing your profit and your credibility.
To Do or Not to Do
If you’re not convinced yet, let us tell you some advantages of trademarking your app.
1. Capitalization rise. You can sell your intellectual property, assign it for temporary use, or use it as a guarantee for loans.
2. Increased investment appeal. Intellectual property may be recorded on a company’s balance sheet.
3. Extra income. Intellectual property may be transferred under a license agreement or as a part of the franchise.
4. Legal protection of exclusive rights. In the case of any violation of your rights — e.g. if your app has been cloned — the law will be on your side.
And some of the risks of not trademarking you app.
1. Profit decrease. If somebody clones your app, you can lose the market share.
2. Patent trolling. If someone else registers your trademark or patents the app, they will have a right to demand compensation or claim damages.
3. Monetization limitations. The app may not be transferred under a license agreement or as part of the franchise.
4. Illegal cloning. If your app has not been trademarked, the chance to put any violator to justice is reduced to zero.
Above all, the trademark lets your customers know that they are using the product made by your particular company and that it isn’t a fake. It is a sort of product quality guarantee. However, the choice really is yours.
Trademark Registration: How to Register Your App
Step 1. Choose the items for trademarking.
There are several kinds of intellectual property which may be related to mobile apps, and the trademark is only one of them. When we are talking about trademarking, we do not mean the code of functionality. Rather, we’re talking about logos, icons, characters, and, primarily, the app’s title or name.
However, not all items can be trademarked. The aspect that you are looking to trademark must be distinctive: it must be sufficiently unique, meaning it is not a common phrase or descriptive term.
For example, if your app is some kind of map for travelers, you will probably not be able to trademark such a name as “Maps for Travelers”. A name like that can be great for search engine promotion, but it’s not so clever if you are hoping to get it registered.
On the other hand, the name should be relevant to the core of your app or business, so users don’t have to guess or work out what it might be.
We called our app Suretly. The name is unique and there were no problems with trademark registration. It also reflects the core of our business: the combination of the words “surely” and “surety” relates to the process of guaranteeing other people’s loans for a small fee.
Step 2. Check that you can register your item.
When it comes to the title, you will need to conduct a search in AppStore and in Google Play and follow this up with a general internet search. You’d be wise to have a look at the databases of trademarks, and you should definitely use the relevant one. If everything is okay, and your title is not already registered, you can move onto the next step.
Step 3. Determine your jurisdiction.
Make a list of all countries in which you want your app to be protected. Lawyers usually advise that you register your app in every country you plan to work in. However, this may cost a bomb.
It would be more rational to choose the most important markets and start the trademark registration process there. For example, we began with the USA, Great Britain, and Russia. You can always obtain trademark registration afterwards if your app starts growing in popularity.
Step 4. Determine the class of the trademark.
The fourth step is choosing the class of trademark for which to apply. There are over forty different classes for trademarks, but, remember, you will have to pay more for each additional class.
Usually, companies apply for two to three classes of trademark. In the case of mobile apps, it is worth considering the ones related to computer programs, including those regarding software for mobile phones and portable devices. You can choose the other classes depending on what it is that your particular app actually does.
Step 5. Prepare your documents and file the application.
The next step depends on the country in which you are pursuing registration. There may be different standards and procedures depending on the place. You may also want to consider applying for international registration, using the Madrid system. In this case, your trademark will be protected in 118 countries.
You’ll need to do some research in order to determine your next move. For example, in the US, it isn’t enough just to file an application and pay for it: you’ll also need to comply with a whole load of conditions (e.g. proving the app’s commercial use). It is not necessary — and not always possible — to complete the process by yourself, but you can find a lawyer who will be glad to help.
So, after getting all your papers in order, you’ll need to submit them. After this, the wait can range from several months to a year and a half, depending on the country. Meanwhile, your application will be carefully examined. And, after all these long months of waiting, you will finally receive the precious papers.
Filing for trademark is a complicated, time-consuming, and expensive process. But if you plan to make something outstanding, it’s well worth doing. Trademarking alone will not make your app great — but it will help you to protect your business from unscrupulous competitors and modern digital pirates. Alongside hard work, talent, and persistence, it may become major part of your app’s success.
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