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Mobile App Icons: They’re Trademarks and You Should Register Them

March 27, 2017Internet & Tech Trademark Issues

Photo of mobile app icons

When I was hunting and pecking for particular apps on my iPad the other night, I suddenly became consciously aware of the powerful branding association created by app icons. I suppose I already knew this even if I wasn't thinking about it before. Literally, when I think of Netflix, I picture the app icon with the red stylized N and black background (the most current app icon). It's the very first thing I think of. It's what I search for and tap on before joining Pablo in Narcos. Same goes for all the other apps I use on a consistent basis—especially services that I only use through an app like Netflix (in contrast, I tend to use Freshbooks and Twitter more through their websites than apps on my iPhone or iPad). Nevertheless, despite the visibility and recognition of these app icons as trademarks that actually get tapped on by consumer fingers, the majority of app icons have not yet been registered as trademarks (I went through a lot of the app icons on my phone out of curiosity and most had not been registered). It's time for app providers to seriously consider registering app icons as trademarks ASAP.

Register Rush | It Won't Always Be This Easy (Probably)

Many app icons are not particularly creative. A lot of them consist of a single letter, usually the first letter of the app name (e.g., P for Pandora's app icon, T for Typorama's app icon, f for Facebook's app icon, N for Netflix' app icon). Others consist of obvious descriptive designs (a leaf design for Leafsnap's app icon, a tape recorder design for Recorder's app icon, a check mark for Any.do's app icon, a house design for Nextdoor's app icon). App icons, whether consisting of single letters or descriptive designs, are subject to the same examination process and refusals as other marks. However, in reviewing app icon trademark applications and registrations, it appears that the vast majority are being approved for registration. With limited letters and limited descriptive designs, the register will soon start to bulge with more prior registered or pending marks for similar app icons (notably, single letter are already some of the most popular trademarks filed with the USPTO). And over time, trademark applications for app icons will start to see more refusals and less approvals. There are still a ton of app providers who have not filed a trademark application for their app icon. Take advantage and file to register your app icon while the registering's still good.

Trademark Choices When Applying to Protect an App Icon Trademark

Once a company's core trademarks are protected, it should consider filing a trademark application to cover its actual app icon. In fact, in some cases, the app icon might actually be a company's most important core trademark. But an app icon could dissected into several different trademarks: (1) the exact app icon as it appears on a user's smartphone or tablet, (2) just the literal component contained within the app icon, such as letters or words, (3) just the design component contained within the app icon, (4) black and white versions of any of the foregoing, and/or (5) color versions of any of the foregoing. And different app providers are filing for differently.

The Actual App Icon as the Trademark

Specifically, I'm talking about filing a trademark application for a trademark that looks exactly like the app icon on someone's smartphone or tablet.

For example, on my phone, my Instagram icon looks like this:

And that's exactly what Instagram registered:

Same goes with Uber. The Uber app icon on my iPhone currently looks like this:

That's what Uber applied for at the USPTO:

The Letter(s), Word(s), and/or Design Within the App Icon as the Trademark

On the other hand, other trademark owners don't seek to register the actual app icon but only the letter(s), word(s), or design within the app icon. For example, the app icon on my iPhone for Netflix currently looks like this:

But Netflix' trademark application only seeks to register the stylized N rather than the app icon in its entirety with the black background:

More examples? Let's look at Amazon's Kindle app icon. On my iPhone, the Kindle app icon looks like:

But I didn't find any trademark applications for the exact app icon above. Instead, I found a ton of word marks for Kindle, as well as trademark applications for the design contained within the app icon:

If I Have to Choose, What Should I Apply For?

It's hard for me to say what mark you should apply for without knowing your exact circumstances. There are reasons to file applications covering only the letter(s), word(s), or design contained within an app icon rather than the app icon itself. But let's stick with actual app icon trademarks, which is the subject of this blog post. If your users access your services primarily through an app (e.g., Instagram, Uber), your app icon is the trademark your users recognize the most and I think you should register it as it appears on their smartphones and tablets—like the Instagram and Uber examples above.

Specimens for App Icons

Once you've decided to file a trademark application for your app icon, you'll need to file a specimen—either initially if you are filing a use-based application or eventually if you are filing an intent-to-use application. But you can't just take a picture or screenshot of your iPhone or iPad showing your app icon sitting neatly in its place among rows of app icons. Let's look at what you should submit as a specimen for your app icon.

TMEP § 1301.04(h)(iv)(D) | Software Applications ("Apps")

In this section of the TMEP, the USPTO acknowledges the ubiquity of apps in today's world while simultaneously underscoring that the specimens for apps must show the mark in connection with the services. According to the USPTO, "[a]pps are simply the interface that enables the providers of the services to reach the users and render the services, and the users to access those services." Apparently, the specimen requirement for apps is a little more relaxed: "a specimen may not always depict proper service-mark use of the mark in connection with the identified services, but it may be acceptable if the displayed screenshot clearly and legibly shows the mark associated with the identified services as the services are rendered or performed via the app." This vague, ambiguous, and noncommittal "may be acceptable" standard leaves a lot of room for discretion on the part of the examining attorney and argument on the part of the applicant. Nonetheless, this section of the TMEP then points us to an example of an acceptable specimen for an app.

TMEP § 1301.04(i) | Examples of Acceptable Service-Mark Specimens

In § 1301.04(h)(iv)(D), the USPTO points to Example 15 in § 1301.04(i) as an example of an appropriate specimen for an app:

example 15 in § 1301.04(i)

Granted, in the example above, the mark is KurbKarma in standard characters. It's not the app icon, which in this case would be the yellow and black yin yang symbol. But this example applies equally to app icons. Just imagine the arrow traveling from Mark to the app icon instead.

Specimens for Well-Know App Icons Use Screenshots from the App Store and Google Play

Companies are registering app icons as trademarks, and all we have to do is look at the prosecution history of those trademark applications to confirm my conclusion above that Example 15 applies to app icons as well.

When Pandora applied to register its app icon (Reg. No. 4,522,047), it submitted a specimen from Apple's App Store (hey Pandora, just an FYI that the current app icon on my iPhone no longer looks like the app icon in your specimen below):

Pandora's specimen

When Twitter applied to register the Periscope app icon (App. No. 87/166,953), it submitted a specimen from Google Play (Google's App Store):

Twitter's Periscope specimen

Guess what Instagram did? Yep, screenshot from the App Store (App. No. 87/033,954):

Instagram's specimen

So ... it's pretty clear that a screenshot or printout from Apple's App Store or Google's Google Play works as a specimen for app icons. (Side note: please note that the screenshots of the specimens inserted into this blog post above are cut-off. The full specimens show the entire screen/page, including text describing the app.)

App Icon Trademark Litigation: A Blank Canvass

I searched all federal case law and all TTAB cases and couldn't find any involving app icon trademarks. If you're aware of any such cases, please let me know. Otherwise, it appears that we will have to wait to see how courts and the TTAB construe these app icon trademarks in terms of, inter alia, strength, scope of protection, and likelihood of confusion analyses.

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