should I register the product's name (a commercial software)?


1

EDIT I could formulate my question differently... Seen that this is a startup forum, there may be a possibility that someone else has written and sold a commercial software (I've got nearly 200 beta-testers and a very high "conversion rate" [ie: beta testers using it every day] and I'm serious about this, the thing is "going live" any day soon now). So I've got a question for such an hypotetic person, who'd happen to have sold such a commercial software: did you register your product's name and if you did, why? And if you didn't, why not?

So my question is not so much "how can I protect my software's name" but "should I trademark/register my product's name?".

As far as I can see from my own searches and from the answers here, trademarking the product name in Europe and the U.S. would cost about 2 000 Euros. But I'm totally bootstrapping this business: I've invested countless hours (one full year) and I've now a product that shall hit the market any day soon. I don't want to spend 2K if it's not important to register the product name as a trademark/registered mark.

For example I've got a very hard time believing people writing apps for the appstore all register their product name and I've got a very hard time believing micro-independent software vendor register their software's name.

What are they risking by not doing so? (seen that for example the .com is already domain squatted, it's not like anyone's going to be able to 'steal' it away from me since I don't have it anyway).

What else do I risk by not trademarking/registering?

The original question:

I've got a company (the equivalent of an LLC) and the matching five letters dot com since 7 years.

Now I've got about 200 beta-testers giving very good feedback and I've got a product name but... Nobody knows what the name is yet (the beta testers have been testing versions without the product name).

The .com is domain squatted, but I took "productnameapp.com", "product-name.com", "productname.net" and some other as well just in case.

So from a domain name point of view, I feel happy even if I don't have "the" .com I'd like (productname.com).

Now I'm wondering: can I and should I register the product name? (I'm in Europe btw but beta-testers and target audience is "everywhere there's Internet").

Is there any point in registering a product name?

I'm bootstrapping this and I'm not going to pay a lawyer at this point, so answers "ask a lawyer" are not what I'm after (otherwise I'd be on the phone with a lawyer, not here ;)

What would the benefits of registering/trademarking/whatever the product name?

What would the disavantages of not registering/tradermarking/whatever the product name be?

(btw the product is simply a commercial software)

Software Trademark

asked Mar 13 '10 at 07:25
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Tristan St.
180 points
Top agency to build award-winning mobile apps: Utility NYC

4 Answers


1

For these questions the legalities will vary according to your country. You don't say wehere in Europe you are, so in the USA, here are the answers to your questions: http://www.uspto.gov/faq/trademarks.jsp You should look up a similar list for your country. Maybe there is a single set of law for all the EU, so maybe that is the correct way for you to search for it.

Anyway, the laws in your country should be only slightly different from the USA's. There has been a push for a long time to standardize intellectual property laws internationally, and so laws vary in relatively small details, such as the time length of a patent's validity.

The WIPO (World Intellectual Property Organization) is the place to look for international IP issues: http://www.wipo.int. You should pay attention to the international aspects of your situation, such as what protection you can expect for your trademark if you only register it on your home country.

In other words, it's fine to do this research without a lawyer, you just have to spend some good time on it.

answered Mar 13 '10 at 07:44
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Gabriel Magana
3,103 points
  • @gmagana: +1 but I'm still stupidly hoping that there may be someone here on this stackexchange-powered site about startups that would happen to have been selling a commercial software and that could be telling why or why not he did trademark his software :-/ – Tristan St. 9 years ago

1

In the uk = Intellectual Property Office - http://www.ipo.gov.uk/tm.htm A good explanation on what is deemed an acceptable trademark:

To be accepted, your trade mark must
be a distinctive word, logo, picture
or other sign that will clearly
identify your goods or service from
those of other traders. Made up words,
logos or pictures are normally
distinctive, unless they have become
customary in your line of trade.

If this type of thing is important to you, then get the trademark. Or as my kids would say, "if you love it put a ring on it."

Regarding Europe, there is a way to file a single trademark application directed to coverage in all of Europe. The application, called a "Community Trade Mark" application, is filed with the Office for Harmonization in the Internal Market (OHIM), sometimes colloquially referred to as "the European Trademark Office." The cost to file such an application, again assuming only one trademark class, may be estimated at around $2000, including government fees, fees to a European trademark firm, and fees to one's US trademark counsel.

Good luck.

answered Mar 13 '10 at 08:53
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Jim Galley
9,952 points
  • @jimg: thanks for your comment, doing some searches now I see that basically to register for 10 years for Europe + US would not be far off the $2000 you quote (but a bit more from this side of the pond). Still I'd like to know if it's *important* or not to register a product name as a trademark. I'm fully bootstrapping this, I'll be selling 0's and 1's like crazy, starting with a budget of basically zero $, so I really don't want to shell out 2K now if it's not mandatory :) – Tristan St. 9 years ago

0

First off, I'm not a lawyer and this doesn't constitute legal advice. With that out the way, you don't have to register the name of your product. But if you are going to be selling it commercially, I would go ahead and file applications with the USPTO and the IPO in the UK.

If you don't have trademark protection and another company claims you are infringing on their trademark, you will probably be forced to change the name of your product and at worst be liable for damages.

A recent example would be all the applications and services that were infringing on Twitter's name.

Twitter registered their Trademark April 26th, 2007, but was first used in commerce on Aug. 31, 2006. So they waited a full 8 months to register their trademark.

But last year Twitter warned companies that were using it's now trademarked name as part of their own name or service would have to change their names. All of them did. Some companies were able to still keep their name even though it was similar (eg TwitPic).

You can file an Intent To Use (ITU) application with the USPTO office if you want to secure the trademark now but your product isn't ready for release. But it will cost more money to file an in use application.

It all comes down to your level of risk. Register the trademark now and sleep at night or wait a few months until money starts coming in.

answered Mar 14 '10 at 03:48
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Erik Howard
121 points

0

It may be best to ask a lawyer, but I understand that you don't need to register Trademarks and Copyrights. The fact that the name is public constitutes a trademarked name. If you ever get into litigation it will help to have it properly trademarked, especially to set the date on which you made it public. In your case, having over 200 beta users gives you 200 witnesses that your name is in fact public.

You don't necessarily need an attorney to file it if you cant spend 2K. You only need $325 and you can do-it-yourself.

Search if the name exists: http://tess2.uspto.gov/bin/gate.exe?f=tess&state=4010:grc538.1.1 Apply online: http://www.uspto.gov/teas/eTEASpageA.htm Good luck

answered Mar 14 '10 at 10:32
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Newyuppie
441 points

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