What can be registered as a trademark for software?

In the highly competitive world of software, a trade mark (TM) has become, in other words, not just a desirable but a necessary tool to distinguish your product and protect it. But what exactly can be registered as a TM for software? This question, however, is not as simple as it may seem at first glance.

This article is not a general overview of the topic of TM. We will dive straight into the specifics: what TM objects can be used to identify your software. From the software name and logo to sound cues and unique graphic elements, we’ll look at all the possible options, as well as, conventionally speaking, discuss the limitations you may face.

Choosing the right entity to register is key and can determine the success of your TM. So let’s get started!

I. Word marks

Let’s start with the most common and, in other words, obvious type of designations that are used as trade marks – word marks. It is words (or combinations of words) that most often become software names and the slogans that accompany them. It is, there, however, the first line of defence of your brand, and choosing the right wordmark is crucial. In this section, we’ll break down in detail how an app name and tagline can become your trusted TM.

Subsection 1.1: Software name as a TM

An application name is undoubtedly the most common object for registering a verbal TM. It’s the name that begins the user’s acquaintance with your product. It appears everywhere: in app stores, on your website, in advertising. Therefore, in other words, registering a name as a trademark is a top priority for protecting your brand.

But not every name can be successfully registered. There are certain categories of names that have different chances of being registered and, no less, different levels of protection. Let’s take a closer look at them:

1. Fancy names:These are made-up words or phrases that are not directly related to the functionality of the app.
   • Examples: “ Kodak” (for photographic equipment), “Google” (for a search engine).
   • Advantages: Easy to register, have a strong distinctive character.
   • Disadvantages: More effort needs to be put into promotion to create an association with the product.
2. Suggestive names:These are names that hint at the functionality of an app or its features, but do not describe them directly.
   • Examples: “ Netflix” (from “net” – network and “flicks” – films), “Airbus” (for aircraft construction).
   • Advantages: Well registered, easier to associate with the product than fancy ones.
   • Disadvantages: Can be more difficult to remember than fancy names.
3. Descriptive names:These are names that directly describe the function, properties, or purpose of the application.
   • Examples: “ Photo Editor” (for a photo editing program), “Fast Browser” (for a browser).
   • Pros: Easy to understand what the app is about.
   • Disadvantages: Difficult to register. In other words, the UAPTO may refuse to register the name because it is considered to be a commonly used name for this type of product. To register a descriptive name, you need to prove that it has acquired a “secondary distinctiveness” – that is, that consumers consistently associate this name with your product (which is a complex and lengthy process).
4. Commonly used words:These are words that are common names for a particular type of product or service.
   • Examples: “ Computer” (for a computer program), “Phone” (for a communication program).
   • Advantages: None.
   • Disadvantages: They are not registered as TMs, as they cannot perform the function of identifying a specific manufacturer.

The best option for registering anapp name as a TM is to use fantasy or suggestive names. They have high distinctiveness and, relatively speaking, provide strong legal protection. Descriptive names can also be registered, but this requires considerable effort and evidence of “secondary distinctiveness”, no less. Commonly used words cannot be registered as TMs at all.

Subsection 1.2: Slogan as a TM

A slogan, or advertising slogan, can also be registered as a trade mark for software. It is a short, apt phrase that, in other words, characterises your product, its benefits or your company philosophy. A slogan can be a powerful promotional tool and thereby increase your brand awareness.

Can every slogan be registered?

No, not every one. As with software names, there are certain requirements for slogans to be able to fulfil the TM function:

1. Originality: The slogan should be original and not similar to slogans of other companies, especially in the software industry.
2. Non-descriptive: The slogan should not be simply a description of the function or features of the software. For example, the slogan “Fast Photo Editing” is unlikely to be registered because it is a common description for this type of software.
3. Distinctiveness: The slogan should be able to identify your product among others. It should be associated with your programme and not with any other programme with similar functionality.

Examples of successful slogans (which could be registered as TM):

• “Think Different” (Apple) – does not describe a specific product, but conveys the company’s philosophy.
• “Just Do It” (Nike) – short, succinct, motivating.
• “The World’s Information at Your Fingertips” (hypothetical slogan for a search engine) – hints at the functionality, but is not a direct description of it.

Examples of unsuccessful slogans (which are unlikely to have registered):

• “The best video editing software” – descriptive, lacks originality.
• “Fast and reliable antivirus” – descriptive, general.
• “A programme for communication” – too general, lacks distinctiveness.

Registering a slogan as a TM, in other words, may be more difficult than registering a name. UKRNOIVI experts are more picky in assessing slogans for distinctiveness and non-descriptiveness.

If you want to register a slogan as a TM, make sure that it is original, does not directly describe the functionality of your application and, conventionally speaking, has the potential to create a stable association with your brand.

II. Pictorial designations

Let’s move on to the next type of designations that can be registered as trademarks for software – pictorial designations. Visuals, in other words, play a huge role in brand perception, and there, however, registering a logo or a unique icon can be a powerful tool for protecting your visual identity. In this section, we will look at what graphic elements of your software can become TMs and what requirements apply to them.

Subsection 2.1: Logo as TM

A logo is perhaps the most common type of pictorial trade mark. It is a graphic symbol that, in other words, visually identifies your product or company. The logo can be either purely graphic (without text) or combined (graphics + text). Registering logo as a TM is an important step to protect the visual identity of your software.

Logo Requirements:

1. Originality: The logo must be original and not similar to logos of other companies, especially in the software industry . This means that it should not copy or imitate existing logos.
2. Distinctiveness: The logo should be able to identify your product among others. It should be expressive enough and, at the same time, memorable enough for consumers to easily distinguish your programme from others.
3. Non-descriptive: The logo should not just be a representation of what your software does. For example, if you are developing a photo editing programme, a logo in the shape of a camera is unlikely to be registered as it is descriptive of that type of product.

Types of logos:

• Purely graphic: Consist of only a graphic image (e.g. Apple’s “apple”).
• Combined: Combine a graphic image and text (programme or company name).
• Verbal: Consist of only text in an original font (rare for software, but possible).

Logo guidelines:

1. Make sure your logo is not similar to others.
2. The logo should be simple and easy to remember.
3. The logo should look good in both large and small sizes (e.g. on a programme icon).
4. The logo should be associated with your programme and its purpose.

Registering the logo as a TM, in other words, gives you the exclusive right to use this image to identify your software. This means that no one else can use a similar or identical logo for their software, which, conventionally speaking, protects you from unfair competition and counterfeiting.

Subsection 2.2: Unique icons and graphic elements

Can individual icons or graphical elements of asoftware interface be registered as trade marks? This is a complex question, and the answer, in other words, is not always unambiguous.

Most interface elements are protected by copyright, not TM. Copyright protects the original interface design as a work of art. This means that no one has the right to copy your interface without your permission.

When can icons and graphics be registered as TM?

Icons and graphical elements can be registered as TMs only if they fulfil the function of identifying the origin of the software and are not merely functional interface elements. This means that they must be:

1. Very unique: they must have a very high level of originality and be different from the usual icons and graphic elements used in other programmes.
2. Non-functional: they should not be necessary for the application to work or perform any functions.
3. Persistently associated with a specific developer: Consumers should clearly associate these icons or graphics with your application and not with any other application with similar functionality.

Examples (hypothetical):

• A unique app icon, which has a very original design and is stably associated with a particular app (e.g. Instagram icon). But, there nevertheless, even in this case, registration can be difficult.
• An original character of the game, which has become a symbol of this game and is recognisable by players.

Examples (which is unlikely to be registered):

• The standard “save” icon in the form of a floppy disc.
• The usual “back” button in the form of an arrow.
• Typical interface elements such as scroll bars, drop-down menus, etc. Д.

Registration of icons and graphic elements as TMs, in other words, is a very difficult task. UKRNOIVI generally refuses to register such objects because they are considered functional interface elements or lack sufficient distinctiveness.

Registration of icons and graphic elements of the software interface as trade marks is possible only in exceptional cases when these elements are very unique, non-functional and stably associated with a particular developer. In most cases, conventionally speaking, copyright is sufficient to protect the interface design.

III. Other types of designations

Apart from verbal and pictorial designations, there are, in other words, other types of designations that can theoretically be registered as trade marks for software. These cases, however, are less common and often involve certain difficulties. Nevertheless, for the sake of completeness we will consider them as well. In this section we will talk about sound, surround and even colour TMs – is it possible to apply them to the software world?

Subsection 3.1: Audible TMs

Sound TMs are, in other words, short beeps, melodies or jingles, which are associated with a particular product or company. Can such a TM be registered for software? Yes, you can, but with certain conditions.

What can be a sound TM for software?

• Application startup sound: for example, the characteristic sound of Windows startup.
• Message sound: For example, the sound of a new message in a messenger.
• The sound of a specific action in the application: for example, the sound of a successful operation.
• A musical theme that is constantly used in the game

Requirements for sound TM:

1. Non-functional: The sound should not be necessary for the application to work or perform any functions. It should not be just the sound of a clicking keyboard or an error signal.
2. Distinctiveness: The sound should be original and recognisable. It should be associated with your programme and not with any other programme with similar functionality.
3. Graphical representation: To register a sound TM, you must provide a graphical representation of it – a musical notation or a spectrogram.

Examples of registered sound TMs (not necessary for software):

• Windows startup sound.
• McDonald’s jingle (“I’m lovin’ it”).
• The sound of an MGM lion roaring.

Registering a sound TM, in other words, can be more difficult than registering a verbal or pictorial TM. UKRNOIVI is more picky about assessing sonic TMs for distinctiveness and non-functionality.

If your software has a unique and recognisable sound that is not functional, you could try registering it as a sound TM. This will, conventionally speaking, add another layer of protection to your brand.

Subsection 3.2: Volumetric TMs (rare for software)

Volumetric TMs are, in other words, three-dimensional signs representing the shape of a product or its packaging. Is it possible to register volumetric TM for the software? This is very rare, and here’s why.

Why are volumetric TMs rarely used for software?

Software, as a rule, is an intangible product. It does not have a physical form that can be registered as volumetric TM. Volumetric TMs are usually used for goods that have a unique shape (e.g. a Coca-Cola bottle, a LEGO figure).

When can volumetric TM be applied to software?

The only, conventionally speaking, exceptional case when volumetric TM is applicable to software is a unique shape of a virtual object in a game (or other interactive environment) that is strongly associated with a particular developer.

Example (hypothetical): If you have developed a game that features a unique character with a very distinctive three-dimensional shape, and that character has become a symbol of the game and is recognised by players, you might try to register its shape as a volumetric TM.

Requirements for a volumetric TM:

1. Non-functionality: The form should not be conditioned solely by the function of the object.
2. Distinctiveness: The form should be original and, at the same time, recognisable. It should be associated with your product.
3. Graphic image from different angles.

Registering a volumetric TM for software, in other words, is extremely difficult. UKRNOIVI is generally very cautious about registering such TMs, as they may restrict competition.

Registration of a volume TM for software is, conventionally speaking, an exception rather than a rule. It is possible only in very rare cases, when it is a unique form of a virtual object that has become a symbol of a game or other interactive product.

Subsection 3.3: Colour TMs (very complicated)

Can a colour or colour combination be registered as a trademark for software? This is, in other words, one of the most difficult questions in the field of TM.

Why is the registration of colour as a TM so difficult?

The fact is that colour in itself, as a rule, has no distinctive power. People do not associate a particular colour with a particular manufacturer unless that colour has acquired a stable association with that manufacturer as a result of long and intensive use, there no less.

When can a colour be registered as a TM?

Acolour or colour combination can only be registered as a TM in exceptional cases when:

1. The colour has acquired “secondary distinctiveness”: This means that consumers consistently associate that colour specifically with your software brand . Proving this is very difficult. You need to provide evidence of long-term and intensive use of the colour, results of consumer surveys, advertising materials, etc.
2. Colour is not functional: The colour should not be due to the function of the product. For example, a green colour for environmental products is unlikely to be registered.
3. Colour is not a common colour: The colour must not be a common colour for a particular type of goods or services.

IV. Limitations: what cannot be registered

We have looked at the different types of designations that can potentially be registered as trade marks for software. But, in other words, there are certain limitations. Not everything you would like to be your brand can become a TM. In this section, we will clearly outline exactly what is not registrable as a trade mark in the context of software, and why. This is important to understand to avoid wasting time and resources.

Subsection 4.1: Functional elements

One of the most important restrictions when registering trade marks for software is the inability to register functional elements. What does this mean?

Functional elements are those aspects of software, which are necessary for it to work, perform its basic functions, or provide usability. In other words, they are how the software works, not how it is identified.

What exactly cannot be registered as TM (functional elements):

• Programme code: The programme source code itself, algorithms, data processing methods are all protected by copyright (and sometimes patents), but not by trademark.
• General principles of interface operation: The arrangement of controls, standard menus, scroll bars, etc. – are all considered common and cannot be monopolised by one company.
• Functional sounds: Keyboard sounds, clicks, error signals, standard alert sounds – all of these cannot be registered as TMs, as they fulfil a purely informational function.
• Functional colours: If a colour is used to indicate a particular program state (e.g. red for an error, green for a successful operation), it cannot be registered as a TM.
• The shape of a virtual object is solely due to its function.

Why functional elements cannot be registered as TM?

The main purpose of thetrade mark is to identify the source of origin of a product/service, not to describe its functional characteristics. Registering functional elements as a TM would lead to an unjustified restriction of competition, as other developers would not be able to use these elements in their programmes, even if they are necessary for their work, there, no less.

Other tools exist to protect functionality:

• Copyright: protects the original code of the software.
• Patents: protect inventions (new technical solutions) that can be implemented in the software.

A trade mark is intended to protect the brand, not the functionality of the software. Therefore, in other words, when choosing an object for TM registration, it is necessary to clearly understand the difference between identifying and functional elements. Functional elements are protected by other intellectual property tools – copyright and patents.

Subsection 4.2: Descriptive and Generic Marks

Another important restriction on the registration of trade marks for software is the inability to register descriptive and generic signs.

Descriptive signs are words, phrases or images that explicitly describe the kind, quality, properties, purpose or other characteristics of software.

• Examples (for software):
  • “Photo Editor” (for photo editing software)
  • “Fast Browser” (for a browser)
  • “Antivirus Software” (for antivirus software)
  • Camera image for the photo editing programme
  • Keyboard image for a keyboard programme.

Why are descriptive designations not registered as TMs?

A trade mark must identify the source of origin of a product/service, not describe the product/service itself. Descriptive signs cannot fulfil this function, as they are generic to describe this type of product. Their registration as a TM, in other words, would lead to an unreasonable restriction of competition – other developers would not be able to use these words to describe their programmes.

Commonly used designations are words or word combinations that are common names for a certain type of goods or services.

• Examples (for software):
  • “Programme”.
  • “Application”
  • “Software”
  • “Computer” (if the application is for registration of a TM for a computer programme)
  • “Internet” (if the application is for registration of, for example, an Internet browser).

Why are common designations not registered as TMs?

Commonly used designations have no distinctiveness. They cannot identify a specific manufacturer of software, because they are used by everyone, there no less. Their registration as a TM would lead to monopolisation of the commonly used lexicon, which is unacceptable.

Exception: secondary distinctiveness

In some cases, a descriptive designation may be registered as a TM if it has acquired “secondary distinctiveness”. This means that, as a result of long and intensive use, this designation has become consistently associated by consumers with your product and not with any other product with similar functionality.

Proving the acquisition of “secondary distinctiveness,” in other words, is very difficult. Evidence must be provided:

• Prolonged and intensive use of the designation.
• Significant sales of software under this designation.
• Advertising campaigns with a focus on this designation.
• Results of consumer surveys confirming that they associate this designation with your product.

Descriptive and generic signs, conventionally speaking, cannot be registered as trade marks for software, because they are not distinctive and cannot identify a specific manufacturer. Registration of such signs is possible only in exceptional cases when it is proved that they have acquired “secondary distinctiveness”.

Conclusions

So, we have considered in detail what can be registered as a trade mark for software. From verbal designations (software name, slogan) to pictorial (logo, unique icons) and even more exotic variants (sounds, volumetric shapes, colours) – the possibilities to protect your brand, in other words, are many.

However, choosing an object for TM registration is not just a matter of your preferences. It is a strategic decision that requires careful analysis and, therewith, an understanding of the limitations imposed by the legislation.

Key points worth emphasising again:

• Application name: Fantasy or suggestive titles are best. Descriptive names require evidence of secondary distinctiveness.
• Logo: An important element of visual identity that must be original and distinctive.
• Slogan: Can be registered if it is original and non-descriptive.
• Icons and graphic elements: Can only be registered in exceptional cases where they are very unique and non-functional.
• Sound TMs: Possible, but require proof of non-functionality and distinctiveness.
• Volumetric TMs: Very rare for software, only for unique shapes of virtual objects.
• Colour TMs: Extremely difficult, requires proof of strong brand association.
• Functional elements: Cannot be registered as TMs (protected by copyright or patents).
• Descriptive and generic designations: Cannot be registered.

Remember that trademark registration is an investment in your brand, in its protection and, conventionally speaking, its future. Carefully consider which elements of your software are the most valuable from the point of view of identity, and choose the best option for TM registration. If you want to get an overview of the trademark registration process, we advise you to read our article: “Software Trademark: Protecting your code and brand”

And, of course, if you have any doubts or questions, it is always better to seek professional help. The lawyers of Polikarpov Law Firm, having many years of experience in the field of intellectual property protection, will help you understand all the nuances of TM registration, choose the optimal object for registration and, in other words, ensure reliable protection of your brand.