How to Register Your Software App Name as a Trademark

As you prepare to apply for trademark registration for the name of your application or software program, make sure you understand the costs and risks involved. The application itself costs $250 at a minimum (as of 2024). The fee depends on how many classes of goods or services you want to register under and which application you use (explained more later).

Before you file, you should determine whether someone else's already using your trademark or a similar mark. If someone has been using your trademark (or a similar one) in connection with a software app or related goods or services, you might run into problems when applying for federal registration. You should run a trademark search to get a good idea of your trademark application's likelihood of success.

Once you've done a trademark search and considered the costs, you're ready to start the filing process.

The Federal Registration Process: TEAS

For federal trademark protection, you must register your trademark with the U.S. Patent and Trademark Office (USPTO). You'll file your trademark application online using the USPTO's Trademark Electronic Application System (TEAS).

TEAS is an interactive system where the user is asked to answer a series of questions to complete the application. If a question isn't answered or an essential element of the application isn't completed, the applicant is asked to correct the error. You can also consult a help page within the application for additional guidance.

When you start the online application process, you'll notice you have two options for applications:

• TEAS Standard application, or
• TEAS Plus application.

Both applications are available to use and result in federal trademark registration. However, most applicants will submit a TEAS Plus application because it's less expensive. As of 2024, the filing fee for a TEAS application is $250 per class of goods or services as opposed to $350 per class for a TEAS Standard application.

In addition to the price difference, the two applications differ slightly in their requirements. The major difference between the applications is how you can describe your goods or services. With a TEAS Plus application, you can only use goods or service descriptions from the USPTO's Trademark ID Manual. The USPTO has already approved these descriptions, and most applicants find this option sufficient. However, if you want to craft your own description of your software app, then you might be better off opting for the TEAS Standard application.

Filing Out a Trademark Application

The TEAS online application will take you through various sections where you'll be asked to provide information about the trademark owner (likely either you or your company), the trademark itself, and the goods or services connected to the trademark. Below, we take you through these sections.

Information About the Applicant

First, you'll be asked to fill out basic information about the applicant (trademark owner). The applicant can be one or a combination of the following:

• an individual
• corporation
• limited liability company (LLC)
• partnership or limited partnership
• joint venture
• sole proprietorship
• trust
• estate, or
• other association like a union, social club, or cooperative.

For individuals and sole proprietors, you must provide the applicant's full name and country of citizenship. For applicants that are companies, you'll need to provide the business name and the state (or country) where the business was legally formed. For partnerships, trusts, estates, and joint ventures, you must list the name and citizenship of all general partners, active members, trustees, or executors.

All applicants must provide:

• doing business (DBA), if applicable
• mailing address
• domicile address (an individual's residence or business's principal place of business), and
• email address.

You can also list your phone number, fax number, and website address.

Identification of the Trademark

Typically, your trademark will either be a:

• standard character mark, or
• a stylized or design mark.

Standard character marks: A standard character mark typically consists of a word or phrase. This kind of mark protects the word or phrase itself regardless of the font, size, or colors used in the mark. As a result, a standard character mark provides the greatest trademark protection. For instance, suppose you register "COUNTING STARS" for your accounting app as a standard character mark. The wording itself would be protected so you can present "COUNTING STARS" in rainbow colors or bubble letters.

Stylized or design marks: Stylized or design marks typically apply to logos or uniquely stylized words. For example, the Coca-Cola Company's cursive stylization of the words "Coca-Cola" is a famous example of a stylized mark. The Nike swoosh logo is a famous design mark. These marks have limited protections because they're protected as they appear. So any deviation from these marks requires a new application to protect that variation of the mark.

If you want to register the name of your software app, you'll likely want to go with a standard character mark. On the application, you simply check off that your trademark is a standard character mark and simply type in the text of your mark.

For a stylized or design mark, you'll attach a JPG or PDF file containing a black-and-white rendition of your trademark. You must also insert a written description of your trademark in the appropriate box and indicate whether you want to claim color as part of the trademark. If you can, it's often recommended that you don't claim a color for your trademark so you can use any color you'd like for your design.

(While standard character marks and stylized or design marks are the most common kinds of trademarks, you can also apply for a sound mark.)

Disclaimers

Many trademarks include words or phrases that, by themselves, can't be protected under trademark law. These words are either too descriptive or generic to warrant exclusive trademark protections. Therefore, the USPTO usually requires that the applicant disclaim unregistrable parts of their trademark.

For instance, using our previous example, suppose you wanted to register the mark "COUNTING STARS ACCOUNTING" for your accounting software application. You'd likely need to disclaim the word "accounting" because it merely describes what your product is (i.e. an app that provides accounting services).

If you don't disclaim unregistrable portions of your trademark in your application, then the trademark examiner reviewing your application will require you to make the disclaimer. The examiner will send you an office action (refusal) requiring the disclaimer, which delays the application process. So it's better to add the disclaimers in your initial application.

A disclaimer means that others can use the disclaimed portions of your trademark as part of their trademark. For example, others can use the word "accounting" in their trademark without infringing on your trademark rights as long as the rest of their trademark is different enough from yours.

Additional Statements

If you're submitting a TEAS Plus application, you might be required to provide additional statements about your trademark. For instance, you might need to provide the following information in your trademark application:

• a list of active prior registrations (typically if these registrations would be considered similar to your applied-for trademark)
• translation of your trademark
• transliteration of your trademark
• any special meaning (such as a term of art, trade or industry meaning, or geographical significance) of the trademark
• a claim of acquired distinctiveness
• the relevant person's consent if the trademark identifies a living individual
• concurrent use, or
• miscellaneous statement.

You might be required to complete these additional statements based on the application you file and the specific circumstances and facts around your trademark.

Identification of the Class of Goods or Services

When you submit a trademark application, you'll need to:

• select a class of goods or services, and
• describe your goods or services.

Software traditionally falls under International Class 009: Electrical and Scientific Apparatus. However, if your software app isn't downloadable, then you'll need to apply under International Class 42: Computer and Scientific Services.

In addition, you might find that your goods or services extend to other classes. For example, Salesforce, Inc. registered the trademark "SLACK" under Class 9 (for downloadable computer application software) and Class 38 (for instant messaging services).

Description of the Goods or Services

As mentioned above, along with the class for the goods or services, you'll need to provide a description of your software app. If you're filing a TEAS Plus application, you must choose from the pre-approved good and service descriptions. You can search for these descriptions as you add goods and services to your application.

You can describe your software app in multiple ways. Some example descriptions from Class 9 include:

• "downloadable computer game software for use on mobile and cellular phones"
• "downloadable computer programs and computer software for electronically trading securities"
• "downloadable computer search engine software"
• "computer game software downloadable from a global computer network"
• "downloadable computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures," and
• "downloadable medical software for {indicate function or purpose of software}."

Make sure your description is accurate and representative. If you're filing a TEAS Standard application, then you don't need to use one of the pre-designated service descriptions. You can craft your own description. Just be aware that if you create your own description, the trademark examiner can accept or reject it. Oftentimes, for applicants that use their own description, the trademark examiner will issue an office action rejecting the service description and provide a recommendation for how you can change your service description so that it's acceptable.

It might be a good idea to talk with a trademark attorney when considering a description for your software. A trademark attorney can help you pick the best description that provides your trademark with the broadest protections while avoiding any registration issues.

Basis for Trademark Application

You'll need to select the filing basis for your application. The two main types of filing bases for a trademark application are:

• use-in-commerce (Section 1(a) filing), and
• intent-to-use (Section 1(b) filing).

Other bases are available, such as ones that apply to international filings. But you'll most likely need to choose between a Section 1(a) and Section 1(b) filing.

Use-in-commerce applications. If you've already started using your trademark in connection with the sale or distribution of your software app, then you'd file under a Section 1(a) use-in-commerce basis. The USPTO requires use-in-commerce applicants to provide the date they first started using their trademark anywhere (for example, when it was first offered at the Apple App Store) and the first date they started using their mark in commerce. Typically, "in commerce" means when you started using your trademark outside of your state though other uses could qualify as in commerce. For most software developers, the date of first use anywhere and the date of first use in commerce are the same because they typically launch their software app. You'll also need to provide a specimen (real-life example) of how you use your mark in connection with your software app.

Intent-to-use applications. If you haven't started using your mark when you file your application but you have a bona fide (real) intention of doing so, then you'll need to file under a Section 1(b) intent-to-use basis. Because you haven't started using your trademark, you don't need to provide any dates or specimens with your initial application. However, you'll eventually need to show the USPTO how you've started using your mark in commerce before your mark can register (as explained more below).

Regardless of your application's initial filing basis, you'll need to start using your trademark in connection with your software app at some point. Use of your trademark is a prerequisite for federal registration. The filing basis simply determines when you'll need to provide proof to the USPTO of your mark's use.

Trademark Specimen

If your application is based on actual use of your mark in commerce, you'll need to enclose a specimen—that is, a JPG or PDF showing the trademark being used with your software app. For example, you can take a screenshot from an app store showing your software app available to download. If you submit a webpage or screenshot of a website, make sure you also include:

• the webpage's URL, and
• the date you accessed or printed the webpage.

For intent-to-use applications, your specimen must be filed later with your Statement of Use (or Amendment to Allege Use). If the USPTO trademark examiner approves your initial application and your mark passes the publication/opposition period, the USPTO will ask you to submit a Statement of Use form showing how you've started using your trademark. The process for providing your specimen in a Statement of Use will be the same as supplying one in your initial application. However, note that a Statement of Use requires an additional filing fee.

Declaration and Signature

The UPTO requires applicants to provide a declaration, a sworn statement, or other verification that the facts in the trademark application are true. You, or an officer of your corporation or association, should sign the declaration. The TEAS application provides an all-purpose declaration that can be used for both intent-to-use and use-in-commerce applications.

Completing the Trademark Application Process

You'll complete the process by paying the fees, authorizing your electronic signature, and validating the application. After you click "Pay/Submit" and your transaction is successful, you'll receive a confirmation that your application was submitted to the USPTO.

Shortly afterward, you'll receive an email acknowledging the submission of your application. Hold on to that email, because it provides proof that you submitted your application and paid the fees. This email can also provide proof of your filing date. The email will contain the serial number assigned to your application. You can use this serial number to track your application's status through the USPTO's Trademark Status and Document Retrieval (TSDR) system.