First off, I just have to note that I am not a lawyer, so this should not be taken as law advice. If you need a lawyer, I recommend that you hire one. A lawyer will be able to explain in much greater detail the pros and cons of trademarks than I ever could. In this blog post I will just be sharing the knowledge I have picked up along the way as an independent app developer. Note that since I live in the United States, the details of this post will be very US-centric and the facts may be different where you live.
Trademark vs. Copyright
This blog post will discuss trademark specifically. So first, let’s quickly cover what trademarks are and how they differ from copyright.
A trademark provides protection for a mark (word, phrase, and/or drawing) when registered with a government entity (usually at the federal level) by not allowing others to use the same mark in the same industry. In the US, as of 2019, the government fees for registering a trademark start at $225-400, depending on which and how many industries you want the trademark to cover.
Copyright protects original creative works. In an app, that would cover the app icon, other graphics within the app, and any significant words, music, video, or sounds within the app, or used in the marketing of your app. In general, these creative works are covered by copyright without having to register anything.
Now why you would want to trademark your app name? As anyone who has a reasonably successful app can tell you, once your app has traction, the copycat apps will start appearing and try to ride your coattails. And some of the more blatant copycats will try to name their app as close to your app’s name as possible in order to show up in the search results along with your app and confuse your potential customers. Even worse, some of these might be scam apps that users may end up thinking are your app!
Having a registered trademark means that these other apps cannot legally use your trademark in their app in the country it is registered, which will provide you some protection.
How does this protection work for apps specifically though? Both the Google Play Store and Apple’s App Store have forms that you can use to file a trademark violation complaint, but how those complaints are handled differs slightly by store.
In my experience in the Google Play Store, if you provide them with the proper trademark information, they will review it and delist the offending app(s) in the registered country within a few days and let you know. The developer of the offending app must then change the name of their app in order to be relisted in the Play Store for that country.
Apple, however, just sends out an email to you and the offending developer and asks you two to work it out and to keep them informed of the progress. In my experience, most developers who receive the email will capitulate and change the name of their app relatively quickly. But I have heard stories that some offending developers will ignore the issue, and it can take some extra prodding to get Apple to step in and delist a violator’s app.
In most cases, filing a take-down notice with the app stores is sufficient for protecting your app. If that doesn’t work, you can hire a lawyer to send the offending party a cease and desist letter which will usually get their attention. Ultimately, if there is a sizeable amount of money at stake, you may end up taking an offender to court, and having a registered trademark is critical if you want to win.
What are the arguments against getting a trademark?
- Cost: You will be spending anywhere from $225 to well over $1,000 if you hire a lawyer to help in order to register a trademark in the US. If your app is a side project or an unproven product, this may be far outside of your price range. You will just have to live with other copycat apps confusing your customers with a similarly named app. However, if you app is successful, the protection can easily pay for itself many times over.
- Time: It can be time consuming to file trademarks and the entire process takes months, sometimes years to complete. If you do it all yourself, expect to spend 3-4 hours filling out the forms and follow up tasks over the course of several months. Hiring a lawyer to do the paperwork for you can reduce the amount of time you spend on it, but will cost you more out of pocket.
- Maintenance: One aspect that sometimes takes people by surprise is that some responsibility comes with that registered trademark. Once you have a trademark, you are expected to actively defend it. If it turns out that others have been violating your trademark for years and you haven’t done anything about it, an offender can use that against you if you try to take them to court.
AppLookout has a Trademark Alert Service that automatically sends you email when other apps are found using your trademark on the Google Play Store or Apple’s App Stores. This can make the aforementioned maintenance of your trademark much easier.
We also have an App Store Search Engine that is very useful when you are trying to come up with the name of your next app. You can search the Google Play Store, Apple App Stores (iOS, Mac, tvOS), Google Search, and the US Trademark Registry all in one location.
Filing a trademark for your app name provides you with protection from copycat apps that will try to confuse your customers by providing a similar app with the same name. With a trademark registered, you can simply file take-down notices with the Google Play Store or Apple App Store and the offenders will be forced to rename their app or risk being delisted. Filing a trademark takes some time and money, but not an exorbitant amount of either. If your app is even mildly successful, it can easily be worth the time and effort to register one.