Are You In Danger of App Store Trademark Infringement?

Nick Potts,

There's an app for that...

You're probably familiar with the popular catchphrase. It can be found in a variety of creative memes across the Internet.

But did you know the combination of words has actually been trademarked since 2009? When the U.S. Patent and Trademark Office granted Apple rightful ownership.

Obviously, the trendsetting company knew a good thing when they saw it.

Are You In Danger of App Store Trademark Infringement?

As of June 2015, more than 100 billion mobile apps had been downloaded from the Apple App Store. Unfortunately, they are increasingly becoming a source of confusion for brands navigating the trademark search and clearance process.

In this article, we'll discuss why that is and how to ensure your brand is protected from app store infringement. But first, a quick review of apps themselves:.

Apps: The Facts

Mobile apps are software applications designed to run on smartphones, tablet computers and other mobile devices. They are sold through virtual app stores. Some of the most popular are Apple's App Store, Google Play, Windows Phone Store and BlackBerry App World.

  • Users spend 90 percent of their time in apps compared to the mobile Web.
  • Mobile app downloads are expected to reach approx. 269 billion in 2017.
  • Mobile app revenues amounted to 69.7 billion U.S. dollars in 2015.
  • Mobile app revenues are projected to generate 188.9 billion U.S. dollars by 2020

Protected Under Common Law

An estimated 60,000 new apps are created every month in categories ranging from sports & entertainment to productivity & organization. Understandably, many of the companies and individuals creating these apps are NOT officially trademarking their names.

Why go through a lengthy application process for what may just be an experiment? So long as transactional history and first use can be proven, app names are protected under common law.

The United States is considered a "first in time, first in right" country. As a result, both enterprising individuals AND Fortune-500 companies are on equal footing when it comes to trademark ownership.

Don't Get Caught Not Knowing

In order to illustrate how this works, let's invent a scenario:

Say there is a college freshman named Justin.

Justin is a gamer and programmer who created an app – he named it Fireplace.

Over the past year, Justin has made a grand total of $50 from app sales. While that may not be much, Justin sees potential. As soon as summer break comes, Justin plans to revamp the app according to customer feedback.

Meanwhile, a group of executives at Hasbro – more than 2,000 miles away – are planning to launch a new board game. Their top naming candidate? Fireplace.

The game manufacturer outsourced a comprehensive trademark search before applying for registration. Unfortunately, their "comprehensive search" wasn't so comprehensive – the company's legal counsel didn't check app store usage.

Being the savvy kid he is, Justin has continued to expand upon his original app creation post-college. He has parlayed what was just a side-project into a viable revenue stream. When he goes to officially trademark his name, he see's the name being used by Hasbro.

What happens next? Well, that depends.

But, this ONE kid could theoretically force a GIGANTIC corporation to change its entire branding strategy, costing them thousands (if not millions) of dollars.

Utilize App Store Databases

The above is just one of many potential scenarios that could occur because a company didn't do its homework.

As legal counsel, you are responsible for:

a). Preventing such situations from ever occurring and

b). Knowing more than the opposition should they ever occur.

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