The traditional idea of a trademark is a name or design appearing on a label, stuck to a physical product. Think, a red can with the word “Coke” or a blue oval with the word Ford. The customer can see the trademark and the product all at once and make a mental connection. But software, apps, and online or virtual services can sometimes complicate matters because the product is more abstract, and it often does not lend itself to having a traditional printed label. That can make for some unique trademark problems for digital products.

Understanding The Differences Between Goods and Services

Every trademark application must identify what goods or services are sold under this trademark. Downloadable software or software sold on physical media are goods, but software business models have changed in the past decades, so many software products are a service, offered through an online interface.

Confusing the difference between “goods” and “services” can cost you your trademark registration.  For example, NetJets’ INTELLIJET trademark registration for “computer software for managing aircraft leasing and sales” was cancelled because the INTELLIJET trademark was used on a web-based service instead. NetJets didn’t sell the software to its customers, but the registration identified software goods as the product.  Even though NetJets was using the trademark, it was using it on services and not the goods identified on the registration.

Often, a product incorporates both goods and services. For example, the trademark LYFT is registered both for “computer software for use in coordinating transportation” and for “transportation and delivery services” which are both parts of what LYFT offers. By, considering how customers interact with your products, you can offer greater protection for your company’s trademarks.

Focusing On What Your Customer Sees

Without tangible items that can be labeled, it is important to consider how your customer will interact with your products and how those are recognized by customers. For mobile phone apps, the design of the square icon that appears on the screen might be more important than other versions of a logo, because that is likely what consumers will see most frequently and come to recognize. When choosing trademarks to register and protect, evaluating what customers most frequently see and recognize can help focus your efforts.

Incorporating Domain Names

Domain names are a critical part of a company’s branding and can also be registered as a trademark. Whether or not you intend to use a “.com” word as your trademark, obtaining the domain name and a few variations as well as registering the trademark will be good investments in your brand. Even generic or descriptive words can possibly be registered with the addition of “.com” as discussed by the Supreme Court in the recent Booking.com case. There, Booking.com was able to show through evidence that customers read the domain name as a brand, referring to a particular company, rather than a generic name for online booking services.

Adding Sounds, Product Design, And Non-Traditional Marks to Your Brand

While names and logos might be the most common forms of trademarks, it is possible to protect sounds, colors, patterns, and shapes, so long as these are not functional, and customers can recognize these as identifying your company. Consider the well-known Intel chimes, a melody of only a few seconds that can be played at the end of ads for Intel, or even ads for other products that use Intel chips. Apple has frequently claimed the shapes of its products, such as the iPhone, as its trade dress, though these are often challenged as merely functional features. Still, for new technologies, there may be many creative ways to protect non-functional features that are recognized by your customers.

Tips For Building a Strong Software Brand

• Think about all the different ways a customer can find your products including names, logos, slogans, icons, and domain names. These are all potentially part of your trademark portfolio.
• Once you know all the potential trademarks, ask your attorney to prepare a search of the existing registrations, common law uses, and include app stores where appropriate to make sure that your trademarks can be registered and are not infringing someone else’s rights.
• Apply to register the trademarks with the U.S. Patent and Trademark Office and applicable foreign trademark offices.
• Register domain names and social media accounts that correspond with your trademarks.
• Create a plan to regularly review marketing materials by others that could be infringing or diluting your trademarks.

Contact us with any additional questions about registering trademarks, enforcing rights, and building a comprehensive brand strategy.