How to Register Your Software App Name as a Trademark

Before you register the name of your application or software program, you should consider two preliminary issues:

• Is it worth it to spend $300 or more on a federal trademark registration? (Learn more about trademark application standards.)
• Has someone else already registered the same name for software or related goods or services? (Learn more about trademark searching.)

Okay, once you've answered these two questions, you're ready to proceed.

Before you begin your federal application, you'll need to figure out what theory it's based on. Most federal trademark applications are based on either "use in commerce" or an applicant's intention to use the trademark (referred to as an "intent-to-use" or ITU application).

Learn more about Intent-to-Use Applications.

The Federal Registration Process: TEAS

The recommended method of filing a federal trademark application is to use the online Trademark Electronic Application System (TEAS) located at the PTO's website (www.uspto.gov). TEAS is an interactive system in which the user is asked a series of questions. If a question is not answered or an essential element is not completed, the applicant is asked to correct the error. Starting with the TEAS PLUS system as it is the least expensive way to file.

Basis for Application

Using the online TEAS PLUS system, you will be asked the basis for your application. If you have already used the mark in connection with the sale or distribution of your software, then you would check "Yes" under "Use in Commerce." As for dates of use, you will need to provide the date (or your best guess as to the dates) you first debuted your application anywhere – for example, when it was first offered at the Apple App Store, etc. You will also need to provide the date when you first sold your work (or services) outside your state. For most software developers, that's almost always the same as the first date of sale anywhere. If you have not yet used the mark but have a bona fide intention to use the mark, check "Yes" under "Intent to Use."

Learn more about Intent-to-Use Applications.

Identification of the Class of Goods or Services

You will need to identify your class of goods. Software traditionally falls under International Class 009: Electrical and Scientific Apparatus.

Description of the Goods or Services

Along with the class for the goods, you will need to provide a description of the software. This description is different from the listing of the International Class.

EXAMPLE: "Computer game software for use on mobile and cellular phones."

EXAMPLE: "Computer programs and computer software for electronically trading securities."

EXAMPLE: "Computer search engine software."

EXAMPLE: "Computer game software downloadable from a global computer network."

EXAMPLE: "Computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures"

EXAMPLE: "Medical software for {indicate function or purpose of software}

Identification of the Mark

If the mark is a word or group of words, identification of the mark is straightforward. The mark may be identified simply as "MOOM" or "SKETCHUP." But if the mark is a stylized presentation of the word, a graphic symbol, a logo, a design or any of the other devices permitted under trademark law, a statement must be provided that clearly identifies the mark. If you're using the TEAS system, type in the word mark or, in the case of a stylized mark, attach a graphic file (either JPG or GIF format) containing a black and white rendition of the mark. Insert a written description in the appropriate box.

For the broadest protection for a word mark, register it free of any lettering style. This will give you the ability to use the trademark in various fonts, rather than being restricted to your original presentation of the mark.

Information About the Applicant

The applicant can be an individual, a partnership, a corporation, an association such as a union, social club or cooperative, or a joint ownership by some combination of any these forms. Most likely, it's you, so your own citizenship is required as well as a mailing address. If you are doing business under a fictitious name, that information should be provided, especially if it is included on any specimen furnished with the application. If the mark is owned jointly by two entities, that should be stated as well. Supplying this information online using TEAS is facilitated by typing the appropriate information into the form. Drop-down menus and online help screens are available to guide you.

Declaration

You are required 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 ITU applications and for trademarks that are in use.

Disclaimers

Many trademarks include words or phrases that, by themselves, cannot be protected under trademark law. To allow one person an exclusive right to use such terms would decimate the English language. Therefore, the trademark office usually requires a disclaimer as to certain portions of trademarks. For example, if an applicant wanted to register the mark, My MAP APP, the applicant would be required to disclaim "APP." This means that apart from the use as a part of the trademark, the applicant claims no exclusive right to use the word "APP."

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 showing the trademark being used in connection with the sale of your app. In the case of ITU applications, the specimen must be filed later, together with a document entitled "Amendment to Allege Use." You'll see that the USPTO provides a means for uploading a digital photograph of the specimen. For your blog trademark, you should furnish a digital image of a screen display that shows use of the mark at the blog, along with the URL as shown in the browser.

The USPTO has stated that acceptable specimens for computer programs would be a photograph of a display screen projecting the identifying trademark of a computer program, or a photograph of a frame(s) of a movie or video tape bearing the mark. It is not necessary that purchasers see the mark prior to purchasing the goods, so long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce.

For downloadable computer software, an applicant may submit a specimen that shows use of the mark on an Internet website. Such a specimen is acceptable only if it provides sufficient information to enable the user to download the software from the website. If the website simply advertises the software without providing a way to download it, the specimen is unacceptable.

EXAMPLE: Acceptable Specimen for Keynote software

Completing the Process

You will 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 will receive a confirmation.

Later, you will receive email acknowledging the submission of your application. Hold on to that email, because it is the only proof you'll have that the USPTO has your application. It is also proof of your filing date and contains the serial number assigned to your application.

Okay, you've filed. Here's an article about what to do after you file.