Tuesday, May 5, 2015

How to register your software name as a U.S. trademark

What can be trademarked?
Trademark is a brand name. You can register your software name, business name, logo, and your product names. Trademark/service mark may include words, names, symbols used, or intended to be used, in commerce to distinguish your goods or services from goods or services of others. The terms “trademark” and “service marks” are often used interchangeably, and both offer the same protections.

Federal trademark registration offers your business the following benefits:
-    Your exclusive rights to use the mark nationwide and to sue others for infringement;
-    Easier to register your mark internationally with U.S. registration as a basis;
-    Ability to record your registered mark with the U.S. Customs and Border Protection Service to prevent importation of infringing foreign goods;
-    Public notice of your claim of ownership of the mark;
-     Listing in the United States Patent and Trademark Office’s databases.

How to register?
It’s not necessary to be a US citizen or resident to register a trademark. You don’t have to be physically present in the US either. The preferred method of filing is to use the online Trademark Electronic Application System (TEAS) located at the www.uspto.gov. You’ll need $225-325 and a unique name that has not yet been taken by someone else. Trademark registration process usually takes about 8 months to complete if you file everything correctly. The trademark registration will stay valid as long as you timely file maintenance documents. You must file a Declaration of Use under Section 8 between the fifth and sixth year after registration.  You must also file a Declaration of Use and Application for Renewal under Sections 8 and 9 between the ninth and tenth year after registration, and every 10 years thereafter. If you fail to timely submit these documents, your registration will be cancelled and cannot be revived.

What to enter into the forms?

Identification of the Class of Goods or Services
Software is normally classified as International Class 009:  Electrical and Scientific Apparatus.

Description of the Goods or Services
Enter something like “computer program,” “computer software” in the search field and you will be given options such as:

          009     Computer programs for using the internet and the world wide web
          009     Computer programs for {specify the function of the programs, e.g., use in database management, use as a spread sheet, word processing, etc. and, if program is content- or field-specific, the content or field of use}
          009     Computer software development tools
          009     Computer software for administration of computer networks

Choose option(s) that best describe your goods.

Basis for Filing
If you have already been selling your software under the name that you want trademarked, click Section 1(a) (“Actually using mark in commerce now”).  Even if you haven’t actually sold anything yet, you can still file under Section 1(a) if the software is listed for sale anywhere.
If you have not yet been selling under the mark but intend to do so, click Section 1(b) (“No use of mark yet, intending to use”).  Note that if you file under Section 1(b), you will have to do the following before the mark can register: (1) begin using the mark in commerce; and (2) file an Allegation of Use that includes a specimen and an additional fee.

Submit a JPG that shows how is this trademark being used in commerce. For your software, it normally is easiest to submit a screenshot of the page where your software is listed for sale. The screenshot shall contain the trademark itself, price, and the URL as shown in the browser. The USPTO has stated that acceptable specimens for computer programs would be a photograph of a display screen projecting the identifying trademark of a computer program, or a photograph of a frame(s) of a movie or video tape bearing the mark.

Identification of the Mark
If you are only registering a word or a phrase (not a logo), then just type the word/phrase into a box. However, it does not cost anything extra to also trademark a logo as well.

A disclaimer is a statement that you include in your application to indicate that you do not claim exclusive rights to an unregistrable portion of your mark (generic words, geographic locations, well known symbols, etc).  The disclaimers can be treacherous because if you agree to disclaim certain terms, this may render your trademark more or less useless. Why? Because disclaimer of terms means you re not claiming any exclusive rights to use those terms. So, if your mark has disclaimed terms and you later see another vendor selling a similar product under your trademark, you may have difficulty stopping them.