What’s in a Name? (According to the App Store)
Picking a product name may be one of the hardest tasks faced by a mobile app startup. The ideal name is one that seizes people’s attention and stays in their memory, conveys some desirable quality of the app, and—despite an increasingly crowded marketplace—steers clear of infringing other companies’ trademarks. That’s a lot of boxes to check. Startup founders may have to rely on their own creativity to come up with a memorable and evocative name, but they can mitigate the risk of committing trademark infringement by following a few concrete guidelines. This article briefly discusses these guidelines for a startup seeking to release an app in Apple’s App Store.
Trademark Basics and Searching Registered Marks
As covered in previous posts, trademark protection can be acquired through registration with the USPTO or through use in commerce. Founders should check both avenues before committing to a name. The first step simply involves searching USPTO’s Trademark Electronic Search System to see what else is already registered under the proposed name.
Testing the Waters
Sometimes people don’t register with USPTO, but they might still enjoy trademark protection. To determine whether protection has been acquired through use in commerce, an app developer seeking to release an app should search the App Store. This is actually less intuitive than it sounds because Apple separates content in the App Store by device. The easiest way to run a comprehensive search is to go to the iTunes Content Dispute page, and provide your contact information to log in (it doesn’t have to be real if you don’t actually intend to submit a complaint). This takes you to a page (as shown below) with a drop down menu from which you can select iPhone apps, iPad apps, and Macbook apps to search the App Store for each device.
You found a similar name. Now what?
Even if a prospective name has been registered or is in use on the App Store, a founder might still be able to go forward with it. Courts apply a standard based on the “likelihood of confusion,” considering factors such as similarity of product/service, strength of the prior user’s mark, etc. So for example, if a founder wanted to use the name “Wizard” for a mobile gaming app, a company which has registered the trademark “Wizard” but is in the construction industry will probably not have a good claim since their product/service is not similar. Similarly, a developer will likely have less risk if it uses a highly descriptive name (for example “storefinder” because anyone else using a similar mark for a similar purpose would likely not have strong trademark rights, if any.
There are several risks associated with using a similar name to an existing app, including:
- Apple may decline to place your app on the App Store citing Section 8.5 of its Guidelines if it believes your app is using another’s trademark;
- the owner of the similar mark may complain to Apple and cause Apple to remove your app from the App Store;
- the owner of the similar mark may seek to enforce its trademark rights directly against you (for example, by sending a cease and desist letter, opposing your trademark registration, or pursuing litigation); and
- consumers mistakenly downloading your app (seeking the other app with the similar name) may cause havoc with your conversion metrics.
Apple delaying or denying an app’s placement on the Apple Store, or removing your app from the App Store in response to a third party complaint is of particular concern. Apple might be incentivized to err on the side of caution. For example, in response to a complaint, it is easiest for Apple to verify that two apps are similarly named and remove the latter app. It would be costly for them to analyze the “likelihood of confusion” factors for each case that gets brought to their attention. So developers run the risk that Apple can remove their app even if they are legally in the clear with regards to a trademark.
So what’s a founder to do? If the founder has identified sources of risk through TESS or the App Store, s/he should assess the size of the risk. How active and successful are the other companies? Are multiple people operating under the same or similar names? How similar are the other products/services? More often than not, it is best for founders to avoid the numerous problems posed by similarly named existing apps. If a founder continues to see significant value in a chosen app name, despite the existence of an app with a similar name already on the App Store, an experienced trademark attorney can help to quantify and suggest steps to mitigate the risk.