Trademarks and Software

When should developer’s safeguard their work with the use of Trademark protection?

By Brad Sniderman, Los Angeles, CA

Most software developers put an incredible amount of time and labor into creating their programs. After all this effort, the developer (namely whoever reads this article) is entitled to protect their work, with this protection being in the form of the Federal intellectual property laws. These protections include patent, copyright, trademark and trade secret laws. While it’s essential to get patent and copyright protection, it is also important to look for trademark protection as well. Even though the developer has taken precautions to protect the technical portions of their work, the last thing they want is to find out that someone else is using the same name or design as the one they have incorporated with their program.

This article is designed to introduce you, the developer, to Federal trademark protection for your software. It will give you some general ideas as to how and when to consider obtaining a trademark for your work. These will just be guidelines for you to think about and should not be considered as legal advice. Although I have researched the subject, I make no claims as to its accuracy at the time of publication since the law is constantly changing. If and when you decide to pursue trademark protection, please seek legal assistance.

What can be Trademarked?

Federal Trademark protection is governed by the Trademark Act of 1946, also called the Lanham Act (15 U.S.C. section 1051 et seq). A trademark is either a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others. Trademark protection can be obtained for virtually any name used in conjunction with goods or services. Exceptions to this range from using deceptive or misleading names, to names that include nations or institutions. Even though there are a handful of exceptions, most likely they will not interfere with getting a trademark for your work. Another element to getting a trademark is that the mark must be used in commerce. Being used in commerce basically means that the goods or services associated with the mark must be used in more than one state. For example, if a developer wishes to sell a program he or she has created, most likely it will be sold or used in another state, and not just the state where the program was originally sold. Nevertheless, if the program should only be used in one state, the developer could still get trademark protection offered by the individual state.

Why should you consider this? If you develop a program and elect to give it a name, you might like to have people associate that name to the program you made. Acquiring a trademark on the name means that no one else will be able to use that name for their goods or services if it might cause confusion with consumers (which means that it is possible for a name to be registered more than once, so long as it will not be misleading). Having a registered trademark also allows you to pursue statutory remedies, which could be beneficial to you in case there is any infringement on your trademark. Remedies include collecting profits from the infringement, damages, costs, and even attorney’s fees. It’s almost like having a mini monopoly on the name you choose for your program. Furthermore, if you should incorporate a design to go along with your program, that too may be trademarked (such as the Macintosh apple).

Trademarks can be registered as a good or a service. So what is the difference? A service mark identifies and distinguishes the source of a service, rather than a good. The Patent and Trademark Office (PTO) uses 42 different classes to help determine whether a particular mark should be a good or a service (34 classes for goods and 8 for services). The class your work falls into depends on the type of business the name is used for. Whether your program is sold on a disk or CD-ROM, or is down loaded from your computer to that of a customer, can make a difference in determining it’s class.

Registering a Trademark

A mark can be protected even before filing an application. As soon as you use your mark anywhere (such as on a diskette), put the “tm”, or in the case of services, the “sm” insignia immediately after your mark. You can find examples of this almost anywhere, such as on the cover of this magazine. By using the “tm” or “sm”, you put the world on notice that you are using this mark in your trade, and that unauthorized use of this mark can lead to infringement liability.

If you have a mark, it is probably time to think about registering it as soon as possible. Registering a trademark is not a very cumbersome task. Usually, just filing a trademark application is all that is required. The application process consists of a few steps. Filling out the application is fairly easy, but it is very important to specify, as accurately as possible, the nature of the goods or services. Since the PTO will use this description in determining the extent of your mark’s protection, as well as what class or classes the mark will be placed in, it is necessary to describe your goods or services definitively, since the description can not be added to after it’s submitted. The failure to accurately describe your goods or services will limit the protection the PTO affords you.

In determining what class your program should belong in, you may choose from the list of classes, or you may let the PTO choose for you (which would probably be easier). Another consideration is the fee. The fee is $245 per class, so you should be careful how many classes you choose to seek protection under. You must include at least $245 with the application, and if the PTO determines that your work should be included in more than one class, they will inform you and give you the option of paying the additional fee for the other classes. Finally, you will need to send samples of the mark to the PTO, which will be used as proof for your mark.

After you have submitted the application, it could take over a year before the PTO approves your trademark. When your application is received, the PTO will first look to see if someone else is using your mark in the same class in which your program will be classified. Since fees are non refundable, it might be a wise investment to have a trademark search done first, before spending the additional time and money trying to register your mark, only to find out that it is already being used. Next, the PTO will publish your application in their gazette, which allows anyone to file a claim against your mark. Whether there is a claim against your mark will determine the length of the registration period.

What do you do if your not ready to sell your program even though you have a name for it? The trademark laws will still allow you to file an application based on an intent to use your mark later. The application and fees are basically the same, however there is no need to submit the examples until your ready to actually put your program on the market. The process at the PTO is also the same, but instead of getting a certificate of registration, you will receive a notice which allows you six months to use the mark in commerce, or file for an extension of time. When you do finally use the mark in commerce, there will another fee of $100 for each class.

Once you have been given your trademark registration, you may then replace the “tm” or “sm” with the “®”. Finally, trademarks are renewable indefinitely in ten year increments if the owner certifies that the mark is still being used in commerce, or at least it has not been abandoned. During the first ten year period, the owner will have to file an affidavit showing his or her continued use of the mark. Of course, there is a fee for this as well.

Other Considerations

Regardless of whether you choose to register your name or design, there are still some other considerations that you should be aware of when using your program name. Even after you have chosen a name for your work, it’s still possible that this name could infringe someone else’s trademark.

What could happen if you infringe someone’s name or design? Most likely, not much. First of all, unless the other user discovers your use of the mark, you probably will not have a problem using the name. This is not to say that it’s all right to use a name knowing that it is already being used by someone else, but if you reasonably believe that you have a legitimate right to use the name, then you should. Even if you discover that your name is being used by someone else, they may not be using it in the same class as yours. If you feel that your name might not infringe another (or just don’t know), then go ahead and use it. If another user of this mark decides that your use is infringing upon their use, most likely they will send you a letter asking you to stop using that particular name and/or design. When this happens, don’t panic, but rather, go check out their claim of infringement (either on your own or with help of another). If it turns out that you are infringing, then you will have to change your program name, and this includes changing labels on your program, or any place else you have used it. To sum up, unless you know that the name or design you want to use for your program is being used by someone else for their program, then go ahead and use your mark.

If you have considered creating an Internet web page (maybe to promote your new program), it is possible to get the name of this page (i.e., the domain name) trademarked as well. This is a new area for the PTO however, so whether they grant your trademark is still unclear, although they are starting to allow web page names to be registered. Another benefit of registering your program name with the PTO is that the courts, as well as the legislature, will most likely (with rare exceptions) protect the registered owner of a trademark. Therefore, if your domain name is your registered program name, and someone else should subsequently use that name as their domain name, yours will be protected, since your name was registered first. The infringer will have to change their domain name, with all the expenses that go with it!

Another consideration is whether your mark should be registered in other countries. Getting a name registered by the PTO only grants protection in the United States. If your program might find itself in foreign countries, such as those in the Orient or in Europe, registering there would be a wise idea. This should be done as soon as possible though. The United States is one of the countries that looks to see who used the mark first in commerce, regardless as to who files an application first, in determining priority of whose mark should get trademark protection. However, many foreign countries have a policy of first to file in order to determine who should get the trademark. This could lead to many problems, such as someone else using your program name in another country, filing there, and then wanting you to “buy” them out in order to allow you to use the name of your program in that country.

To help counteract this problem, some countries are signatories to the Paris Convention of 1883. This agreement helps inventors and other people get patent and trademark protection in another country, once the person has applied for protection in their home country. The Convention gives applicants priority in getting their mark registered in another member country for a period of six months. This priority will date back to the original filing date in the applicants home country. Furthermore, the Paris Convention guarantees that no matter what country the applicant subsequently files in, they will get the same treatment in that country as they will from their home country where they originally applied. For example, if you file a trademark application in the United States, you will be treated in Canada the same way for trademark purposes as you would in the U.S.

Therefore, if you believe that your program could see foreign exposure, it would be wise to seek advice as to whether your name should be registered in other countries.

Final Thoughts

As the computer industry continues to grow at a phenomenal rate, it is important that the developer stay current with the technology. The software competition is fierce and your work has to count. One way to make sure your work matters is to protect your work from those who might want to exploit or steal it. Keeping your work secret is important, but so is seeking protection from laws that were designed to promote invention. When looking at these laws, keep in mind that although copyright and patent protection might seem like obvious safeguards, trademark protection for the name and design of your work can be just as vital to the success of your program.

Bibliography

Sources for this article are from the Department of Commerce, Patent and Trademark Office, the Trademark Act of 1946, and John W. Brooks. For more information on these sources, as well as any questions, please send me an E-mail.