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Doug Nebeker ("Doug")
I have an app (Android and iOS, and now a web SAAS version) that altogether is making just a bit less than $500 per month.
Do you think it's worth applying for a trademark for the brand?
My doubt comes from thinking that instead of spending the $500 that the trademark application will cost, I could spend $500 in customer acquisition that in turn would increase my monthly income.
At what point is a trademark worth it?
>If you don't have the financial resources to legally defend trademark violations, what value does the trademark have?
I am in a similar boat in that I'm a mISV developing a new product and will trademark my application name in the near future. I would not have the resources to defend it if it came to a full on lawsuit.
However my rational is that it may deter other small businesses from infringing my trademark as they too would not have significant financial resources.
Also if an open source project cropped up which infringed my trademark it would probably be enough to shoot them an email politely advising them of this for them to rename their project.
Finally in the event of my product getting acquired it would seem prudent to at least try to secure the IP (regardless of whether I can defend it or not) which include trademarks (and patents and so on).
At least this is my current thinking,
"However my rational is that it may deter other small businesses from infringing my trademark as they too would not have significant financial resources."
Perhaps; but I'd contend the size (and financial resources) of the perpetrator is irrelevant. However their perception of your financial resources is. Would trademark really deter an unscrupulous large organisation with sufficient financial resources when they are aware that you cannot defend it?
I have a friend who recently spent £600 (circa USD$940) in legal fees to send a cease and desist letter to a comparatively-sized competitor with a *very* similar name and logo (similar enough to confuse customers).
In response, the perpetrator told her to 'go forth and multiply' (well; words to that effect). Her only recourse now is the court lottery system. Perhaps that £600 would have been better spent on marketing?
If your exit plan is getting bought out, these legal tools be warranted, but typically aren't buy-outs predicated on your business' customers and cash-flow (current and projected).
All the best -
Take this for what it's worth.;
From what I've read on the interwebs the use of "tm" does not require registration. Of course it does not offer you legal protect as a registered trademark would. If your intent is to dissuade someone it may be enough. If you are truly looking for legal recourse in the case of infringement then register it. But as mentioned you need deeper pockets for that.
> If you don't have the financial resources to legally defend trademark violations, what value does the trademark have?
Hang on... whoever registers the TM first in that country, has the sole legal right to use it. So, how can there be any need to defend? It's not like the competitor can claim it's "theirs" because it's so obviously not.
It's like registering a unique domain name. Nobody can just waltz in and claim it's their domain if you own it and registered it first. Note that I said "unique", as in not a common noun or word and so on.
This is not quite the same as registering a unique domain name, perhaps closer to a patent violation.
This occurs when someone uses, maybe not your exact logo/trademark but a facsimile similar enough to be misleading.
Someone can even use your trademarked imagery (like the 'Golden Arches') but with their company name.
Yes, you may have the sole legal right to use the trademark, but it's up to you to leally enforce that right if someone else uses it without your permission.
Thanks for your answers.
I'm also thinking that registering the trademark will make another company not able to register it. Say a competitor pops up, registers my trademark, and then sends a cease-and-desist letter.
Even though I don't have the resources to defend myself, at least the USPTO won't allow another similar trademark.
"My situation, being that the app isn't making a whole lot, or because I live outside the US?"
Both are relevant, but also the overall situation.
If you have a term that you wish to protect as trademark, put TM after it. Now it's trademarked, assuming you use it in commerce. In particular interstate commerce in the US to get a US registered mark. But even without a registered one, you have it if you assert it and use it for commerce. The registration makes it easier for you to prove you own it, and harder for others to claim accidental use. But that sort of doesn't matter anyway. What would you do if they did anyway? Spend a million to defend your trademark in US courts? Since your app isn't worth anything, this is relevant since it's less likely others will steal it.
Let's say though you create an App called FlappyBird and it becomes popular and everyone knows you made it. Then the bastards at Zynga clone it and file a trademark for FlappyBird, a registered trademark of Zynga, then file a lawsuit against you. This is the nightmare scenario, but even in this case you have a good solution - have a media trial. Contact friendly journalists that root for the underdog and have them rip apart Zynga until they give up.
It's super easy to apply for a registered trademark. It's a million times easier than a patent, and easier to uphold than one. And the cost is only about $500. Of course don't forget to include ongoing costs. You can and should do it yourself. It's a waste of money to pay an attorney since it's literally about filling out a form correctly and sending in some artwork samples and money. Patents are totally different and very hard to write correctly. Most people don't realize they have to engage in interstate commerce to have one though. If you don't sell a product you have to get a service mark instead, or a design patent. Both of which are kind of useless, though not entirely.
So the issue is if it's worth $500 to register a trademark. I have at least dozens and perhaps hundreds of terms I have trademarked by placing TM after them and have been using for many years publicly. I only have a couple of registered trademarks though.
Even if you go off and look at some big ass company like McDonalds or CocaCola or Microsoft you'll quickly find that the vast majority of trademarks they own say TM and not R. So even the biggest companies with the most knowledgable attorneys aren't registering all their trademarks.
Erik from http://www.tm4smallbiz.com/ is nice to work with and has reasonable prices. I have used him several times.
I have investigated this myself, but I am in the US. The initial registration is expensive, but it's the ongoing renewals that are painful. You have to renew registration after 5 years, and at 10 and then every 10. This means more forms and more money. Of course you can elect to not renew and lose protection of your mark.
If you are already using the app name in commerce in the places you've described, that's good. The only risk I see is that someone else registers a trademark on the name and complains. Whether the complaint would have merit is anyone's guess. Whether you defend your claim to use a non-trademarked name, or trademark the name and defend a complaint yourself, or hire attorney(s) to defend it is the question. That last option doesn't sound feasible given the amount of money and time it would consume. The middle option gives you protection, but are you willing to do the registration paperwork? If you are, you might investigate legalzoom.com. They have done work for me in the past. They are quick and reasonably priced. If you elect to defend a non-trademarked name, you'll need to show how and when the mark was used in commerce. For example, a print advert like in a magazine would work. A registered copyright might also help, but that's another story...
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