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  • Protecting Mobile Apps:

    Trademarks and Other Legal Considerations Understanding What Can Be Trademarked, Using the Mark, Minimizing Infringement Risks

    Today’s faculty features:

    1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

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    MONDAY, APRIL 27, 2015

    Presenting a live 90-minute webinar with interactive Q&A

    Matthew D. Asbell, Partner, Ladas & Parry, New York

    Alan S. Wernick, Partner, FisherBroyles, Chicago

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  • PROTECTING TRADEMARK FOR MOBILE APPS

    Understanding What Can Be Trademarked, Using the Mark, Minimizing Infringement Risks, And Other Considerations for Mobile Apps.

    Matthew D. Asbell

    5 The examples shown are copyrights and trademarks of their respective owners, and are used for educational purposes only.

  • MOBILE APPS – FROM IDEA TO EXECUTION TO EXPLOSION

    Mobile apps provide a great new platform for innovators.

    It takes careful planning from idea to execution to make your app explode into the market.

    Important steps:

    Selection

    Clearance

    Registration

    Use

    6

  • ASPECTS OF MOBILE APPS THAT CAN BE TRADEMARKS

    A trademark is a source identifier that helps consumers distinguish one’s product or service from similar products and services in the marketplace.

    Multiple elements of an app may serve as trademark:

    App Name, Word or Phrase

    App Logo/Icon(s)/Graphic(s) (still or animated)

    App Slogan or Tagline

    App Color(s)

    App Trade Dress

    App Sound(s) Apple Samsung

    Instagram Icons

    7

  • WHY NAMING YOUR APP IS SO IMPORTANT?

    Recognition: consumers prefer shorter names that identify the nature or function of the product

    Distinctive vs. descriptive

    Rules of the marketplace

    8

  • BRAND IDENTITY AND APP TRADEMARKS

    Trademarks lie at the core of brand identity, in that they define elements that

    give identity to the products of a particular company. Brand identity functions for app creators on at least two levels:

     The identity associated with the product and

     The brand associated with the company that makes the product.

    This identity can become a powerful part of what drives sales; highly successful brands like Apple or Google come to stand not only for a stable of products, but for a lifestyle and a set of beliefs.

    While a company might not be yet a household name, building a strong brand, bolstered by well-deployed trademarks, might be the first step to getting it there.

    9

  • BRAND IDENTITY AND APP TRADEMARKS

    10

  • MOBILE APPS TRADEMARK

    “Angry Birds, the computer game of

    choice of the UK prime minister, is the

    most downloaded game of all time, says

    its creator, Finland's Rovio.”

    11

  • SELECTING TRADEMARK NAME FOR MOBILE APPS

    Make sure the trademark is easy to read, write, spell and remember and is suitable to all types of advertising media.

     It is short and is thus easy to type into a phone

     It is easy to say

     It is catchy and memorable

    Check that your mark of choice meets all the legal requirements for registration and does not violate the rules of the marketplace

    Conduct a clearance search to make sure that it is not confusingly similar to existing trademarks

     Check the iTunes and Android Stores too

    Check that the corresponding domain name and social media usernames/pages are available for registration

    Make sure the mark does not have any undesired connotations in other languages if it will be available in markets where those languages are spoken

    12

  • SPECTRUM OF DISTINCTIVENESS

    Less distinctive More distinctive

    Distinctiveness in the U.S. ≠ Distinctiveness in other jurisdictions 13

  • EXAMPLES

    Less distinctive More distinctive

    Serial No. 85746575 (October 16, 2014)

    Mere descriptiveness refusal of THE BEST APP TO DATE for

    "Downloadable software applications for mobile

    telecommunications devices and handheld computing devices

    for organizing personal relationships and dating, for providing

    coupons, rebates, discounts, vouchers or special offerings on

    goods and services from participating merchants and for

    receiving information on events, activities and attractions"

    Examples for App names for TIP CALCULATOR:

    14

  • CLEARANCE OF MOBILE APP TRADEMARK

    What is the purpose and/or industry in which the app will be used?

    15

  • CLEARANCE OF MOBILE APP TRADEMARK

    For proper trademark protection it actually does make a difference whether or not content is downloaded to the end-user or is only accessed in the cloud.

    Some Apps work by downloading software to your mobile device and do not require internet access to function.

    Other Apps are more of a gateway or service allowing you to access content via the App on the Internet

    Often, an App does both.

    Offline Apps Online Apps

    Both

    16

  • GOODS AND SERVICES RELATED TO MOBILE APPS IC 009 - Downloadable software in the nature of a mobile application for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the content or field of use}

    IC 042 - Providing temporary use of on-line non-downloadable cloud computing software for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc. and, if software is content- or field-specific, the field of use} [this does not include providing on-line computer games that are played on-line]

    IC 042 – Computer software design and development

    IC 041 – non-downloadable publications and game software

    IC 038 - Transmission of sound, video and information from web cams, video cameras or mobile phones, all featuring live or recorded materials

    IC 036 - Banking services; financial services, namely, providing financial analysis, consultation, planning and management.

    17

  • CLEARANCE

    Due diligence before investing a lot of time and money in launching a new app

    Lack of knowledge is normally not a defense to trademark infringement

    Having knowledge may increase punishment of trademark infringement

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