Do Apps Have Design Trademarks

Smartphones have revolutionized interaction between consumers and brands. App icons now play a pivotal role in distinguishing often and quickly between large numbers of rival apps. They are the new trademarks, and require a similar treatment. The following guidelines allow companies ranging from start-ups to multinationals to optimize app design and protection; a precondition for strong brands.

1. Choose a distinctive sign

Valid trademarks need to be distinctive to perform their function as commercial identifier. Overly simplistic or abstract graphics are therefore unfit as trademarks, and may be refused by trademark offices due to their banal, decorative or functional character.

2. Don't let the icon describe the service; be original

An icon composed of elements that describe the activities of the company, or that is otherwise generic, is unable to distinguish it from competitors in the same category. It is therefore also unfit to function as trademark, or will be weak and difficult to defend at best.

This condition is somewhat counter-intuitive, as many marketeers consider descriptive elements as logical entry points to guide consumers. Apart from the distinctiveness issue, a rationale for the exclusion of such elements as trademarks is that they would give an unjustified monopoly to a single market player. It doesn't mean that descriptive app icons cannot function as trademarks at all, testified by the fact that most people will recognize the above WhatsApp icon. But that is due to intensive use and massive global attention, a luck that only a handful of companies will have. So why create a handicap right from the start? The strongest trademarks are original logos, unrelated to the services provided.

3. Use distinctive colors

Colors are powerful identifiers and can therefore contribute significantly to the power of trademarks. Stand out from competition and choose one or more original colors as part of the mark.

Certain colors have become common identifiers for particular categories, for example green for communication apps and yellow for taxi apps. Staying away from the pack will guarantee enhanced distinctiveness, and thus trademark strength.

4. Don't fall into the "initials-trap"

Limited space forms a specific constraint for icon design: brand names are often too long to include. A common solution is using the housemark's first letter in a specific font or style. While this may be an understandable solution for brands with high pre-existing brand awareness, it is a bad strategy from a protection perspective. The registered housemark does not provide protection for just its initial, and trademark offices in many countries refuse trademarks for single letters. Even if your initial-mark does get accepted, you will not be able to avoid use of the same letter by a different app. Actually, it is likely that among the millions of existing apps, many already use your initial!

Brands with short names or multi-letter abbreviations can count themselves lucky and safely choose these as logo. A distinctive font or style will add to the trademark's strength.

5. Use your existing company logo (if suitable)

In recent times, many companies have developed stand-alone eCommerce branding to underline their move into "digital". Obviously, this approach is not ideal for brand coherence and may already have become obsolete in view of omni-channel strategies. Why not dust off the good-old company logo and adopt is as app icon? It allows to capitalize on accrued notoriety, consolidate existing rights globally, and avoid new trademark filings.

6. Beware of prior rights

Before a new logo can be adopted as trademark, it is crucial to make sure no prior rights exist, as these may form an obstacle for registration and use. An availability search will reveal any third-party trademarks that may pose a legal risk and could force expensive changes later on. But also check for other potential IP issues: official signs are often regulated (i.e. country flags; the Red Cross logo), and common symbols have once been designed by someone, who may still have rights. Complicated? Look at it this way: if you want a monopoly, you have to be the first. That's how IP works.

7. Own the rights to your design

In line with point 6, also make sure you own the rights to your own logo. Often it was designed by a contractor, employee or even friend: all should formally transfer the related copyright and design rights to avoid future conflicts. And as a tip for business angels and other investors: make sure the app-founder also transferred his/her creative rights to the company!

8. Register!

A survey among trademark registers globally reveals that surprisingly few app-owners have registered their icons yet. Whether this is due to ignorance, oversight or the false assumption that the company name will suffice, only the registration of the actual icon will guarantee exclusivity and protection. Sure, registration comes with a cost, and especially start-ups often have limited budgets. But in the digital economy, intellectual property rights (IP) such as trademarks often represent the company's principal assets. Their protection is therefore well worth the investment.

9. Stick to the design

Trademarks remain valid if they are used as registered. Consequently, changing the design of your registered app icon may result in the loss of rights. It is therefore advisable to stick to your app icon in same way brands remain faithful to their housemarks. (Now you understand why their rarely change!). A tip if you wish to maintain the freedom to refresh colors from time to time: file the icon mark in black & white, as in most jurisdictions this covers all colors. (Note: this will make distinctive app colors inoperable, see point 3.). And if you do change your app design, don't forget to file new trademark registrations.

10. Anticipate technological change

It seems logical to file an app mark in the shape so typical for current apps: a square with rounded corners. But don't forget this shape is simply the result of the graphics chart imposed by iOS, Android, and other platforms. What if one day they change this? It could potentially modify the use of your logo, and thereby affect the validity of your mark (see previous point). Similar effects can be imagined in case other types of interfaces become prevalent. To make your icon mark withstand the times, it is wise to file it in a technology-neutral way, for example in a standard (square) form and without claiming use as "smartphone app" in the description. To conclude, a glimpse of the near future: moving app icons may arrive sooner than you expect. It will make the right IP strategy even more relevant.

Zeeger Vink is IP Director at MAUS FRÈRES / LACOSTE. He serves as member of the Board of Directors of the International Trademark Association (INTA), and teaches Intellectual Property at SciencesPo university. The article is the fruit of the Master's course in IP & Communication at the SciencesPo School of Management & Innovation; the author thanks the class of 2018 for their research contributions. All opinions expressed in this article are solely those of the author.