Creating trademark friendly app icon designs allows app owners to stand out in a tough marketplace and protect their design from potential knock-off and copycat competitors.
App developers trying to stand out in Apple’s App Store or Google Play is like a cereal brand trying to stand out in the cereal aisle at the supermarket. In other words, all the competition is in a very tight place and it is hard for brands to stand apart. The best way to standout is to create a distinctive app icon that is attractive to consumers and protectable by trademark law.
It is important for businesses to think of their smartphone app icons as trademarks and to protect them with common law and trademark registration rights. However, app icons can only receive trademark protection if they meet the requirements of traditional trademarks, i.e. the icons are distinctive, non-functional, and not likely to cause confusion with prior icons.
There are several things designers of app icons and businesses choosing an app icon should keep in mind when making a final selection from a trademark perspective so the icons can receive the most protection and perform their most important function, standing out to consumers in the marketplace.
1. Create a Distinctive Design
Under trademark law, the more distinctive a trademark is, the more protection it will receive. For example, a made up word such as “KODAK” will receive more trademark protection than a descriptive term such as “SPEEDY” used in connection with one hour photo services. Similar to traditional trademarks, the more distinctive an app icon is, the more protection they will receive under common law trademark rights and the more likely they can be registered with the United States Patent and Trademark Office (USPTO).
Do Not Use Descriptive Icons
When creating a traditional trademark, such as a company name, it is important for companies to avoid descriptive names because they receive limited, if any, trademark protection. Likewise, it is important for companies choosing an app icon to avoid adopting an icon that is descriptive of their services. For example, an alternative phone service using a phone icon or a music app using musical notes on the icon are descriptive for their services and will likely obtain limited trademark protection compared to more distinctive designs.
Designs that have little or nothing to do with the service provided by the app will enjoy greater trademark rights. Compare the two icons below, one for the “Music” app that comes standard with iPhones and the Spotify app, a digital streaming music service. The standard music app is not that distinctive because people seeing that would assume it is an app for music. However, the icon used by Spotify is much more distinctive because people encountering that app for the first time would not know what it was for. Therefore, the Spotify app will enjoy more trademark protection than it would if they chose a similar design using musical notes.
The Apple Music app is much less distinctive than the Spotify app design
Avoid Single Letter Icons
It is very tempting for businesses to adopt an app icon that features the first letter of their company name, especially if their name consists of one word. However, when everyone is adopting this strategy, it becomes very unoriginal and the letter apps all blend together. Look at how similar the Pandora and PayPal app icons are below. How many times do people get confused about which is which? How do they distinguish themselves from each other or other apps icons that feature a single “P”? Even if people do not confuse PayPal and Pandora, they are not particularly distinctive app designs.
Can you tell which icon is PayPal and which is Pandora? Avoid one letter app icons if possible.
Without a lot of room to design distinctive app icons, one way designers can set their icons apart from others is by using distinctive colors, shading and other techniques to make apps pop in the marketplace. Distinctive apps often use multiple exotic colors blended together in original ways that are pleasing to the eye. One of the best examples of this is the famous Instagram app, which went from a dull brown camera icon to an exotic blend of purple, pink and yellow camera icon that POPS.
Use a Famous Distinctive Logo, if Possible
In some cases, older companies and brands already have distinctive logos that they used for years. Some examples would be company abbreviations such as CNN or logos such as the famous Nike swoosh. When these famous logos can fit onto an app icon, it will make obtaining trademark protection easier because companies can leverage years of use and trademark rights from one platform to another.
2. Know Prior App Icon Designs
Equally important to creating distinctive designs is for businesses developing an app icon to be aware of what their competitors’ apps look like and to not create similar looking app icons. Adopting a similar app icon to a competitor can lead to an expensive trademark lawsuit and the business may be forced to change their app icon anyways. Even if the app icon a business wants to adopt is similar to an icon that is not owned by competitor, it may not be worthwhile to proceed with the desired app icon because a) the business still may be at risk for a trademark lawsuit, and b) the app is not distinctive in the grand scheme of things.
In addition, even if a company adopts a similar design to another company but they are not too similar for risking a trademark lawsuit (think of the Pandora and PayPal apps shown above), trademark protection will be limited because of the “Crowded Field Doctrine.” The crowded field doctrine basically means that a trademark in a field with many similar trademarks will receive limited, if any protection. For companies looking to stand out and secure strong trademark rights, creating an app icon in an already crowded field will sabotage their goals.
The best way to determine whether a proposed app icon is likely to cause confusion with a previous design is for a trademark attorney to conduct a trademark search. Although a trademark search costs money upfront, it can save a lot of money in the long run.
3. Secure Trademark Ownership and Register the App Icon
Two final things owners of app and app icons need to think about are 1) securing their ownership to the app icon design; and 2) applying for a USPTO trademark registration for their app icon design.
Secure App Icon Ownership
Many companies will outsource the creation of their app design to graphic design companies or independent designers. It is important that companies hiring graphic designers, either in their initial contracts or in a subsequent assignment of rights, confirm they own any designs created, including the copyright to the design. Although rare, sometimes companies begin using a logo or app icon they hired a third party to make but the third party retains the copyright rights to the design. This can cause headaches in the future if the third party comes back years down the road asking for more money or they will sue under copyright law.
File a USPTO Trademark Application
After a company adopts an app icon they intend to use, or begin to use, they should file a federal trademark application with the USPTO. USPTO trademark registrations provide trademark owners with additional benefits not given if trademark owners relying solely on common law trademark rights. For example, a trademark registration confirms trademark ownership, puts competitors on notice of trademark ownership, provides nationwide trademark protection and more.
Facebook trademark registration for their app icon
Do you have any questions about designing trademark friendly app icons or want to apply to register your app icon with the USPTO? Contact us today for a Free Trademark Consultation and one of our attorneys will get back to you within twenty-four hours.