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Typically, a company with a new product hires a trademark search company to report on whether its new product name is likely to infringe. But that’s probably overkill for most app developers. Most likely, a search of the app stores and the software categories at online retailers such as Amazon should give you a general idea whether your name is likely to be confused with another product.
You need to consider all software products because that’s the class within which you might register and because a trademark owner acquires rights not just for its goods but also for goods and services that it is reasonably likely to offer. For example, it might be expected that an online game would be ported to the iPhone. Therefore, even if that game isn’t yet available as an iPhone app, you’d run into problems if you named your app the same thing as the game. Similarly, if your app is geared to a specific field or industry, you’d need to check out that field to be sure you’re not in conflict with anyone else’s products. If you’re offering tide tables in app called Tidey Up, say, you wouldn’t want to use that name if there was already a publisher by that name that prints tide tables, since it is not unlikely that the publisher will expand into the app world.
Finally, your search should locate substantially similar variations on the mark. For example, if a mobile app developer is using the named Birdman for a collection of bird calls and birding photos for bird watchers, he would need to search for that name as well as soundalikes (“Byrd”), plurals (“Bird Men”), gender variations (“Bird Women” or “Bird Boy”) and perhaps foreign translations.
If you search around and find that someone else is already using the mark you want—or a substantially similar mark—it’s time to rethink your choice. Frustrating though this is, it’s better than closing your eyes to the competition and hoping for the best. Failure to search—or to act on what you discovered in a search—can have expensive consequences. If you rush to market, blind to the fact that a similar trademark is already being used by a competitor, the competitor may obtain a court order preventing you from using the trademark, and you may have to pay monetary damages and attorney fees.
The cheapest way to search is to start with an online search using Google, and then searching the USPTO’s database, click Trademarks, and then click Search Marks). If this preliminary search turns up similar marks (which lawyers call potential conflicts), you can then drop the names you were considering that might conflict and either choose new names or narrow down your list of potential choices before paying for to a professional search report. If your preliminary search doesn’t turn up any similar marks, you can hire a professional search firm to prepare a complete report. The complete report usually includes registered U.S. and international trademarks and unregistered (known as “common law”) trademarks.
These searches are expensive (often $300–$500), and they’re sometimes difficult to decipher, so you can probably skip the professional search unless you’re entering into a licensing or distribution agreement (in which you have to promise that your trademark doesn’t infringe), you have to answer to shareholders or other investors, or your apps are becoming successful and you need the peace of mind that comes with knowing you aren’t infringing any existing marks.
Tip: Two companies that perform professional trademark searches are Thomson Compumark and Trademark Research Corporation. Thomson Compumark has been around longer and has a more established reputation among attorneys, but the results from both companies are usually similar.
Using Other Companies’ Names in Yours
Is it okay to use the name of an app company like Pre, iPhone, or Android in the name of an app? For example, if I’m creating an app for the Palm Pre, can I call it Pre Video? Or if I’m working on something for the iPhone, can I call it iPhone Video?
Before you incorporate another company’s name into your app, review the company’s trademark rules. (There’s usually a link to these guidelines on the Legal Notices or About Us page of the company’s website.) In the case of Palm for example, they don’t want you to merge “Pre” with your trademark, and prefer instead that you tie your app to the phone’s operating system, not its name (since the company expects other phones to use the OS other than just the Pre). For example, Palm recommends “Video for webOS.”
Similar rules would apply for Apple as well. You can probably get away with “Video for iPhone” or “Video: iPhone Edition,” but not with iPhone Video. Apparently, the same rules apply to the iPad, too, as Apple has rejected apps with titles such as “PartyPad – Marble Mixer” but accepted “Scrabble for iPad.” In addition, when you use another company’s trademark, the guidelines for using it usually require that you include a statement disclaiming rights to the other company’s trademark, like “iPhone and Apple are trademarks of Apple, Inc.” (Even if it’s not required, it’s a good idea to include a phrase like this). You can put the statement on any screen in your app (it’s usually on the screen that contains your copyright notice), and you should include it whenever you advertise your app.
Learn more about this topic from Protecting Your Mobile App IP: The Mini Missing Manual.
Learn four cost-effective ways to protect the applications you develop for mobile devices. The methods described in this Mini Missing Manual won't stop people from misappropriating your secrets or copying your code. But if that does happen, you'll have the legal ammunition you need to recover your losses. Taking these steps will also reinforce your legal rights in the event that another company wants to acquire your apps.
