Securing Trademarks for Software Products
Kelly McKinney 2700052V7V Visits (2101)
As we have seen from companies like Apple and Google, creating a brand that is associated with the products or services offered by a company is a key component of a successful marketing campaign. From an IP perspective, the brand may be protected by securing a federal trademark registration.
Earlier this month, the Federal Circuit rendered an opinion in the trademark case, Lens.com, Inc. v. 1-800 Contacts, Inc. The case primarily focuses on the mark “LENS” in connection with “computer software featuring programs used for electronic ordering of contact lenses in the field of ophthalmology, optometry and opticianry.” With respect to the “LENS” mark, this case presents a number of interesting issues that software developers should consider when securing a trademark relating to their product or service.
One issue concerns the name of the software product or service. The software developer should perform a trademark clearance search on the proposed name of the software product or service to determine whether the name is available for use in commerce. That way, when the software developer files a trademark application on the name with the United States Patent and Trademark Office (“PTO”), the risk that the software developer’s application is barred by a prior trademark registration based on the likelihood of consumer confusion is minimized.
After performing a trademark clearance search on the name of the software product or service, the software developer should seek registration of the proposed name with the PTO. In Lens.com, the PTO originally allowed the registration for the mark “LENS” in connection with computer software, which is surprising because “LENS” seems to be a “merely descriptive” mark. Indeed, the PTO may refuse a registration of a mark if the mark is merely descriptive (or deceptively misdescriptive) of the goods or services to which it relates. As such, the software developer should try to register a mark that is inherently distinctive in order to minimize the risk that the registration is refused by the PTO.
Another issue is whether the software product or service is being used in commerce. This is important because failure to use the mark at all, or improperly using the mark, may result in loss of the trademark registration. As shown in Lens.com, at any time, a third party may file a petition to cancel the registration of a mark if the registered mark has been abandoned (i.e., the registered mark is not being used at all). In order to avoid abandonment, the software developer must use the registered mark in commerce.
As defined in the Lanham Act, for goods, “use in commerce” requires (1) a good, as defined in the description of goods in the trademark registration, in trade, (2) that is sold or transported in commerce within the U.S. To qualify as a good in trade, the software developer may place the registered mark on the packaging of the software product or on documents associated with the software product, such as an owner’s manual. As another example, if the software product is a mobile application, the software developer could include the registered mark in the icon for the mobile application or in a splash screen when the mobile application is started. After the software product is marked so as to qualify as a good in trade, the software developer should then actually sell or transport (e.g., distribute for free) the software product in commerce.
As further defined in the Lanham Act, for services, “use in commerce” requires (1) using or displaying the registered mark, as defined in the description of services in the trademark registration, in the sale or advertising of existing services and rendering the services in commerce, or (2) rendering the services in more than one state, or in the U.S. and a foreign country, and the person rendering the services to be engaged in commerce in connection with the services. Services may be “rendered” in commerce in one or more of the following ways: (1) rendering the services across state lines, (2) customers crossing state lines in response to an advertisement for the services, or (3) licensees or franchisees of the company that use the mark being located in more than one state.
In some situations, the same mark may be registered in connection with both a good and a service. For example, in Lens.com, the mark “LENS” was applied for use in connection with (1) “computer software featuring programs used for electronic ordering of contact lenses in the field of ophthalmology, optometry and opticianry,” and (2) “retail store services featuring contact eyewear products rendered via a global computer network.”
While Lens.com was able to successfully establish use of its registered mark in connection with its retail store services, Lens.com was not successful with respect to establishing the use of the mark in connection with its computer software. Lens.com was successful with respect to establishing the use of the registered mark in connection with its services at least because the registered mark was displayed in connection with the sale of Lens.com’s retail store services, and Lens.com’s retail store services featuring contact eyewear products were rendered on a global computer network across state lines.
However, Lens.com was not successful with respect to establishing the use of the registered mark in connection with its goods at least because Lens.com’s computer software did not qualify as a good in trade that was sold or transported in commerce in the U.S. As described in Lens.com, the automatic download of computer software to a consumer’s computer to facilitate the sale of contact lenses with respect to Lens.com’s retail store services is insufficient use in commerce for the registered mark in connection with computer software. This is because the computer software product lacked independent value apart from, and is merely incidental to, the retail store services offered by Lens.com. Moreover, Lens.com’s consumers were not aware that the automatically downloaded software was associated with the registered mark. On the other hand, had Lens.com developed a mobile application that was independently sold or transported in commerce apart from its retail store services, Lens.com would have been able to establish use of the registered mark in commerce for the software product.
With respect to this, a software developer should ensure that his software product has independent value apart from any services offered by the software developer, and that the software product is not merely incidental to the services offered by the software developer. Additionally, the software developer should ensure that the consumers are aware that a registered mark is associated with the software product.
This blog entry was co-authored by Kelly McKinney, Patent Attorney, and Aly Z. Dossa, Partner at Osha Liang LLP. This blog entry does not constitute legal advice and only represents the views of the authors.