A trademark is an extremely valuable asset that gives your customers an easy way to identify your products. Unfortunately, today's crowded market makes it difficult to secure a truly original trademark, and even minor similarities could leave you facing a cease and desist order. 

Understanding Trademarks

A strong trademark is a valuable asset that's worth billions to the right company. A trademark is any word, symbol, or device that's used to distinguish the goods and services of a particular manufacturer or seller. A trademark clarifies the source of a product, so consumers know where it came from or who produced it. You probably interact with dozens of trademarks on a daily basis without even thinking about it.

A powerful trademark causes the consumer to instantly associate a product with a particular company. If they have positive associations with that company, spotting the right trademark will sway their purchasing decision and improve their opinion of the product or service. For many companies, their trademark represents a significant chunk of their total value. Google's trademark has an estimated value of $44.3 billion. Microsoft is close behind at $42.8 billion. 

What Constitutes Trademark Infringement

Trademark infringement occurs when a company uses a name or symbol that is the same or substantially similar to an existing trademark. To constitute trademark infringement, this use must have a significant likelihood of confusing consumers. Trademark infringement typically occurs when similar names or symbols are used by companies in the same market.

If your trademark has a high likelihood of confusing consumers in your market, the senior user can argue that you are benefiting from the goodwill they generated or reducing the value of their trademark by offering inferior services. There are several factors that a court will consider when determining the validity of a trademark infringement case. Ask yourself these questions to determine the strength of the case.

  • How strong is the senior user's trademark?
  • How similar are the two trademarks?
  • Do both companies offer similar products or services, or is there a strong likelihood that the senior user will expand into the junior user's market?
  • Is there evidence of consumers confusing the two trademarks?
  • Are buyers in your market sophisticated enough to easily distinguish between the two trademarks?

Common Forms of App and Mobile Game Infringement

In the app and mobile game market, trademarks protect the title and logo of an application. The trademark does not apply to any aspect of game play. Trademark infringement typically occurs when a developer uses a name that's the same as or similar to that of another game or app. Altering the spelling is rarely sufficient to distinguish your game from another, particularly if it's clear that your product is mimicking the other. For example, misspelling "Yatzy" is a trademark infringement on Yahtzee, as it's extremely likely that consumers will confuse your app with the Hasbro game.

Trademark infringement can also occur in more subtle cases. In 2014, King.com Limited, the creator of Candy Crush Saga, was granted the trademark for the word "candy." Other apps using the word candy in their name received cease and desist notices even when their game play was in no way similar to Candy Crush Saga. It's important for app developers to carefully investigate all existing trademarks as well as apps with similar names before settling on a title and logo for their product.

How to Respond

If you receive a cease and desist notice claiming trademark infringement, it's important to investigate the situation thoroughly before deciding how to respond. Never respond rashly out of anger or fear. Any statement that you make can be used against you. Don't initiate contact with the other party or their lawyer before you've thoroughly prepared your own case. Unintended or not, you may be guilty of trademark infringement, in which case you will need to navigate the situation delicately to minimize the damages you're asked to pay.

The best course of action if you're accused of trademark infringement is to seek assistance from a trademark lawyer. Analyzing the finer points of a trademark case is quite complex, and help from an experienced professional can save you from being forced into a complete rebranding if your trademark is sufficiently different or has seniority over the other party's claim.

You can avoid many claims of trademark infringement in the future by registering your mark proactively before releasing your app and gaining a loyal market of followers. This is another instance where professional assistance can help you navigate the ins and outs of app law to make sure you're always compliant and protected.

The first thing to do if you're facing accusations of trademark infringement is remain calm. It's not uncommon for other parties to issue cease and desist orders with great abandon. Investigate the matter thoroughly, make your case, and take care to avoid such infringement in the future.

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