Bomgar, whose productivity software is “used by 41 of the 50 U.S. State Governments” according to their site, filed for an App Icon Trademark SN 85251485 on February 25, 2011. The Marks’ description covering their services may be for an App Icon. although  The mark depicts an orange square with a white “B”, as seen below:

While this image is the company’s favicon, the only App they have available on iTunes looks like this:

In an App world where “B” can mean just about anything, it is naïve to believe that the Trademark as filed will infallibly protect the actual iTunes App Icon. The fact that the color schemes are inconsistent between the Mark and the Icon are superb fodder for an infringer, who may bring out an Icon with a similar-looking “B”, but with a different color scheme.

Could this be a result of a failure to communicate between the legal and IT departments? This lesson shows the importance of consistency: make a plan and stick to it.

Zynga was in the news today. They are going public with a $925 million IPO. At this point in time, they have two App Icon Trademark applications, Numbers 85216473 and 85292802 identified as “W5” and “7”.

They were filed on January 12 and April 12, 2011, and the description of the Goods and Services reads like an App Icon. “W5” has already been Published for Opposition, with the Office Action dealing mainly with the description of the Services. “7” had a similar Office Action, but no response yet.

Note that they were filed in black and white. I surmise that the finished version will be in color. This way, they can potentially go after an infringer with any color combination. Granted, the dog in “7” is typical Zynga trade dress, but query what Hasbro would have to say about the W5: could it look too much like a Scrabble piece? I would argue the generic nature of this Mark, and that it should be invalidated.

On September 6, 2011, LinkedIn got US Trademark No. 4023513 for an image that is used on their App Icon at the iTunes App Store. The list of services reads like a typical App:

Computer software for the collection, editing, organizing, modifying, bookmarking, transmission, storage and sharing of data and information in the fields of business and social networking, employment, careers and recruiting; downloadable electronic publications in the nature of newsletters, research reports, articles and white papers on topics of professional interest, all in the fields of business and social networking, recruiting and employment, and personal and career development; computer software development tools for business and social networking; computer software that provides web-based access to applications and services through a web-operating system or portal interface.

The literal element “IN” is mentioned on the Registration, and serves as the Mark’s identifier. Curiously, this IN mark was  filed as an “intent-to-use” mark on July 16, 2009, and was then switched to the “in use” status, showing the date of first use as April 0, 2007. Do they mean March 31?

This TM application (No. 85316306) was filed by Apple on May 9, 2011, as an “in use” Trademark. This App will allow people to play games online with each other, save scores and enable more social networking. Fun stuff.

On July 27, an Office Action was sent to Apple stating that the specimen showing use of the Mark in commerce is insufficient. More specifically, Examiner states that “specimens consist of a screen shot of the software icon and advertising for the software app and are not acceptable as evidence of actual service mark use because they fail to reference any of the applicant’s services.  Thus, they fail to show proper use of the applied-for mark in the sale or advertising of the services.”

A proper specimen has to show an example of the App as integrated with the services, not just advertising for the App.

This Trademark application was filed June 21, 2011 as an “intent-to-use”, meaning that this App is coming soon to the iPhone and iPad. It is not surprising that the goods and services covered by this TM application are for advertising services.

On April 19, 2011, Samsung filed for an Opposition to Apple’s TM application No. 85041463.

Samsung is opposed to the idea that Apple be granted a US Trademark for the above image, for use as an Icon. In their NOTICE OF OPPOSITION, Samsung claims that the mark “is a pictorial representation of music notes in general and […] has not acquired distinctiveness.

Samsung also claims that this is a functional configuration incapable of being a Trademark, and that the mark is descriptive.

Samsung mentions that they have plans to use a similar design for their products, and is worried that if Apple is granted a TM for something this generic, it would mean TM litigation.

What’s the lesson? If you’re going to make an App Icon, don’t be too descriptive. As in all Trademarks, there are thresholds for how descriptive you can get.

Source: http://ttabvue.uspto.gov/ttabvue/v?pno=91199897&pty=OPP&eno=13