Cloud-Based Software Trademarks
Before you can file an application for a trademark that will protect your cloud-based software, you’ll first need to make sure your software will be eligible for trademark protection by the United States Patent and Trademark Office (USPTO). There are two requirements that the USPTO asks of your software to qualify for acceptance: your software needs to be of “use in commerce,” and you must be able to provide “a valid specimen.”
What is “Use in Commerce,” According to the USPTO?
The term “use in commerce” might not mean what you think it means. It’s not just about you selling your good(s) or service(s). In the context of trademark law and the USPTO, use in commerce means the trademark is being used to sell or transport your good(s) or service(s) outside of the United States. Evidence that your trademark is being used in this way is required by the USPTO. They’ll want to know the date of your first use of the trademark and the date you first used the trademark for commercial purposes. Apart from these dates, you’ll also be required to give the USPTO “a valid specimen.”
What if You Aren’t Using Your Trademark in Commerce Yet?
If your trademark doesn’t yet fall under the “use in commerce” definition, you can also apply for a trademark by declaring your “intent to use” your trademark in commerce. To do this, you’ll need to sign a statement saying that: “Applicant [you] has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.” This will get your application in the door of the USPTO. Still, it’s essential to understand that your trademark won’t be registered until you can prove “use in commerce,” which will trigger the application to shift to a “use in commerce” application and qualify it for registration and all the protections that it brings.
What is “A Valid Specimen,” According to the USPTO?
For the USPTO, “a valid specimen” is proof that you use your trademark in commerce. It needs to show the USPTO that the people using your good(s) or service(s) see your trademark and would reasonably connect it with your brand. An example of a valid specimen could be a clothing label or a package. There can also be digital examples, such as a website page with your trademark, where people can access your good(s) or service(s).
Since the USPTO asks you to submit your application virtually, they’ll also want you to show your valid specimen virtually. This can be done by photographing your valid specimen if it is a physical one. If it’s a digital valid specimen like a website, you can take a screenshot and submit that. It’s important to note that the USPTO will require the URL to the website in the screenshot, as well as the screenshot that was taken.
What Class Should You File in?
Even though the term “cloud-based software” includes the word “software,” you can’t just register your trademark with one of the software categories and call it good. Attempting to register your trademark in the wrong class is a quick and easy way to get your application denied, sending you back to square one. You’ll need to put in the time and effort to ensure you’re trying to register in the correct class. You have two main options when it comes to cloud-based software. You can either register your trademark in Class 9: Electrical and Scientific Apparatus or Class 42: Computer and Scientific. What it comes down to is what your cloud-based software is used for. You’ll want to research these two classes until you decide which class your cloud-based software fits best.
Deciding what class you should file in is one of the trickiest parts of applying for a trademark with the USPTO. If you’re worried about choosing the correct class, it doesn’t hurt to consult a trademark attorney just to ensure you’re on the right track. The cost of the attorney will outweigh the cost of money, time, and headaches if your application gets denied and you’re sent back to square one.
Tips for Acceptance
A suggestion for having your trademark accepted for cloud-based software is to make sure your trademark is clear and prominent on the software. On your software’s landing page, it’s best to have the trademark as a central focus. It’s also suggested that the trademark is on any important pages, especially pages that show information regarding the software. The easiest way to ensure this is to integrate your trademark with the banner displayed on the top of your software pages.
The USPTO is rigid in its use requirements and does not allow for blurred lines when determining whether an applicant should be accepted. The best thing you can do is ensure everything is correct and in order before you file an application. Of course, the USPTO often allows applicants to start the process over when they’re denied, but this isn’t a guaranteed right. Even if you are lucky and are allowed to try again, there are often limits and added rules when re-applying. As previously mentioned, it’s wise to work with a trademark attorney before submitting your application, even if it’s just for the attorney to give your application a final look before submission.
For help with this, contact us today!