I had diligently checked the app store for similar apps to my first before submitting to Apple. Nonetheless, somebody may have beat me to the punch and released a similar app 2 weeks prior to mine However, I did file for a trademark for $325 on my app name shortly after submitting which gives me specific legal rights that trump whoever was first to market.
I contacted the competitor politely asking them to change their app name because it was sufficiently similar to my pending trademark name to cause confusion and they agreed to change their icon, but not their descriptive name. It might be splitting hairs, but the similar descriptive name places their app right next to mine on app store searches and thus my claim that it will cause confusion. Likewise, I have several print ads with my app name and having a similarly named app could also cause confusion. Just for reference, my app name is "Vegas Casino Maps" whereas theirs is "Vegas Maps: Casino Maps for the Las Vegas Strip and Beyond" Needless to say, I will follow up with another request and possibly have an IP attorney draft a letter to both Apple and the competitor claiming trademark infringement.
The response I got back from the competitor suggested that they were first to market and that my pending trademark was a supplemental trademark and thus not sufficiently distinct inferring that I would not have any enforceable rights. Nonetheless, a supplemental trademark provides these specific rights
- Bring infringement suit in federal court
- Can be used against future application of confusing similar mark
- Owner can use ® to symbolize federal registration
- Owner can enforce some uses of trademark on Google, Bing, Yahoo, Twiter, Facebook, etc.
Additionally, Apple can be considered in collusion if they allow another developer to infringe on my IP rights, therefore Apple is pretty good about protecting IP rights of trademark owners.
After a few weeks of polite emails back and forth, we came to an agreement wherein the competitor agreed to completely change their app name.
So why go through all this trouble? In my case, the app is making enough sales to make it worthwhile to protect the name and ultimately the revenue I worked so hard to acquire.
Getting a Trademark
If you would like to get a trademark, here's where to start
http://www.uspto.gov/trademarks/basics/index.jsp
The trademark application can be done online and mine about 2 hours. They suggest you watch a short video before filling out the application which is well worth the time. Be prepared to pay a non-refundable $325 fee with a credit card for the application.
My trademark took about 6 months to process and I now have a frame-able piece of paper that shows the certified trademark from the US Patent and Trademark Office.
Other Benefits of Have a Trademark
Somebody else is
cybersquatting on the website name VegasCasinoMaps.com and the owner wants $3500 for the domain rights. I offered them a reasonable $500, and they counter offered $1750. I'm all for free enterprise and all but a trademark only costs $325 and with the trademarked name, the cybersquatter has virtually no chance of retaining any rights to the domain name once I contest it with ICANN
.
Update: I ended up purchasing the domain for $1750 and took a week to transfer the domain, rather than try to fight them in court, which could have taken months and quite a bit more money. Even with the ICANN arbitration, there's a small window of time, something like 21 days, where the cybersquatter can file a counter suit in federal court effectively bypassing the ICANN arbitration and the loss of $1200 ICANN arbitration fee. And once the federal suit has been filed, the venue will be in whatever state the cybersquatter filed in.
I still find it fascinating that I had to pay, while the cybersquatter effectively broke the law.
About Me
If you would like to know more about my apps, here's my website
http://www.SmartLittleKid.com
