Trademarks for an app or software

Class 9 versus Class 42

The Nice classification, which the USPTO uses, treats a copy of software that a customer downloads as a product they take away, and software they use on your servers as a service you perform for them. So downloadable software, including mobile apps, desktop programs and downloadable plug-ins, is goods in Class 9. Software as a service, platform as a service and any 'online non-downloadable software' is a service in Class 42.

The USPTO also insists on knowing what the software does. An identification that says only 'software' or 'mobile application' is refused; it must state the function, and where the software is about a subject, the field: 'downloadable mobile applications for tracking daily habits', 'software as a service featuring software for invoicing and payment collection'. The free check suggests wording from a plain description, and the USPTO's ID Manual has the accepted phrasing.

A third class sometimes applies: the service the software delivers. Software for a bank is also banking services (Class 36); an app that books fitness classes is also fitness-related services (Class 41); a food-ordering app can be a delivery service (Class 39). Trademark classes explained has the full list.

Downloadable versus online: why most apps need both

Loopwell, our invented habit-tracking product, ships a mobile app that customers download and a web version that runs in the browser. The app is Class 9; the web version is Class 42. Registering in only one leaves the other half of the product outside the identification. Protection would probably still reach a copycat in the other class, because the goods and services are closely related, but the registration and the specimen would cover half the product.

Each class costs the USPTO fee of $350, so two classes cost $700 in government fees. Trademarky's $450 attorney fee covers the application whatever the class count, so the Class 9 and Class 42 pair that most software businesses need costs one attorney fee and two USPTO fees.

The name versus the icon

On a phone the icon is often the whole brand, and in an app store the name and the icon sit side by side. To the USPTO they are two marks. The app name is a word mark in standard characters, protecting the words in any font and any color. The icon is a design mark, protecting that shape as a mark on its own, so that a look-alike icon on a related app infringes even if the name is different. The full logo, name and symbol together, is a third mark.

File the name first. It is what users search for, what the press writes, and what every other filing is measured against. File the icon second if it stands alone anywhere: the home screen, a browser tab, an email logo, a social avatar. File the combined logo last, when the design is settled. Word mark versus logo versus icon mark explains why each is its own application.

Two cautions about icons. An icon that simply depicts the app's function, a camera for a camera app, a calendar for a calendar app, is descriptive of the goods in the same way a descriptive word is, and is refused or weakly protected; the icons worth registering are the ones that identify you rather than the category. And an app store's rule that names within its store be unique is a store policy, not a trademark right: being first to a name in one store gives you nothing outside it. The stores' own dispute processes, when a copy appears, ask for a registration number.

App store listings as specimens

A specimen is proof that the mark is in use with the goods or services in each class, and software has the good fortune that its point of sale is a screen. For Class 9, the USPTO accepts:

• A screenshot of the app's store listing that shows the mark as the app's name together with a download, get or install button. The mark must appear as the name of the software, not only as the developer's account name.
• A screenshot of the app's own launch or title screen, or a screen inside the app, showing the mark.
• A page on your website offering the software for download, showing the mark near a description of it and a download link.

For Class 42, the specimen shows the mark used in offering the online service: a screenshot of the product itself, logged in, with the mark visible; or the sign-up or pricing page that describes what the software does under the mark. The page should make clear that the software is used online rather than downloaded, or the examining attorney may treat it as a Class 9 specimen.

• Any web capture, including a store listing viewed in a browser, must show the URL and the date it was accessed or printed.
• A free app is still in use in commerce. The download is the transport of the goods; no sale is required.
• A private beta that only invited testers can reach is a weak basis for a use claim. Wait for public availability, or file on intent to use and send the specimen at launch.

Before launch, an intent-to-use application fixes the priority date while the product is still being built, which is when most software names are chosen. Your attorney reviews the store listing or the product screenshot before anything is filed.

Naming an app you can own

Software names have their own habits, and two of them run into the merely descriptive refusal. Names that state the function, Habit Tracker Pro or Invoice Sender, describe the goods and are refused on the Principal Register. And suffixes carry no weight: App, AI, Cloud, Pro, a version number or a top-level domain such as .io added to a descriptive word do not make it distinctive.

1. Choose a name that hints rather than describes. How to name a brand you can trademark has the checklist.
2. Screen it against U.S. trademark records with the free check, then search the app stores and the web for anyone using it for related software without a registration.
3. Decide the classes: 9, 42 or both, plus the class of any service the software delivers.
4. File the word mark, on intent to use if launch is ahead, and plan the icon and logo as later applications.
5. Keep dated screenshots of the listing and the product from launch onward. They are the specimens for later filings.

Building something? Describe what the software does and the check suggests the classes, then screens the name in them. Check my trademark for free

Questions about this topic

Is a free app 'use in commerce' for a trademark?

Yes. Use in commerce for goods means the mark is on the goods or their point-of-sale display and the goods are sold or transported in commerce, and a download to users across state lines is transport. No sale or price is needed. The specimen is the store listing with its install button or the app's own screen showing the mark.

Do I need Class 42 if my app is only downloadable?

Not for the app itself. A mobile or desktop app that users download is Class 9, and if there is no browser version and none planned, Class 42 has no specimen to support it. Add Class 42 when the product is also used online without a download, or file it on intent to use if a web version is on the roadmap within the next few years.

Can I trademark my app icon as well as the name?

Yes, as a separate design mark with its own application and USPTO fee. It is worth doing when the icon stands alone on home screens, browser tabs and avatars, and when it identifies you rather than depicting the app's function. File the name first, the icon second, and file the icon in black and white with no color claim unless the color itself is the brand.

Related guides

• Trademark classes explained: The 45 Nice classes the USPTO uses, what each covers, how to pick yours, what extra classes cost, and the pairs small businesses file most.
• Word mark vs logo vs icon mark: Word marks, logos and icon marks explained: what each protects, which to file first, why a brand set is several applications, and when to claim color.
• Trademark specimens: what the USPTO accepts and what it refuses: What a trademark specimen is, the difference between specimens for goods and services, examples the USPTO accepts and refuses, and how to prepare one.

Contact

Trademarky, LLC, 78 SW 7th St, 5th FL, Miami, FL 33130. (305) 562-6800, hello@trademarky.io. Monday to Friday, 9am to 5pm ET. Available by appointment.

This free check is an AI-assisted preliminary screening against known U.S. trademark records. It is not a comprehensive clearance search and not legal advice. Only a licensed attorney can advise you on whether to file.