To Download or Not To Download? That Is the Question When Registering Software Trademarks.

In the early days of the digital revolution, trademark owners could register marks for “computer software” in the United States without elaboration. Indeed, some countries still permit such registrations. As software became more ubiquitous, the U.S. Patent and Trademark Office (USPTO) eventually required greater specificity as to the nature of the software. Applicants for software trademarks must now choose at an early stage how they plan to use their trademarks because the USPTO treats downloadable software and non-downloadable software differently, leaving little room for error.

The over-disclosure problem

Trademark applicants must specify the function or purpose of the software. If the software is for use in a particular field or is content-specific, applicants should (but not must, according to the USPTO) include that information in the description. But some trademark applicants insist on adding even further detail regarding the nature of the software, such as “software that uses artificial intelligence for making airline reservations.” While such information can be useful for marketing, it is not strictly necessary in trademark applications, and in fact can result in unnecessary limitations on the scope of any ensuing registrations.

Downloadable software vs. SAAS

The USPTO distinguishes between (1) downloadable software (including mobile apps), which it treats as “goods” (the same as software recorded on tangible media such as DVDs), and (2) non-downloadable software as a service (SAAS) users interact with only when logged on to a website.

The distinction between downloadable software and SAAS becomes relevant when providing evidence of use, as the two are not interchangeable. For downloadable software, evidence of use could be a webpage with a “click here to download” button or the like. For SAAS, evidence of use may be a website promoting or providing the services. For either downloadable software or SAAS, acceptable evidence may also be:

• A screenshot of the mark on a user’s screen while the software is running that makes the nature of the software clear
• A log-in screen that makes the nature of the software clear
• A log-in screen the applicant confirms is for accessing the software and there is no contradictory information in the record (this is at the examining attorney’s discretion, though it appears to be commonly accepted)

Finally, software that is sold preinstalled or embedded in other goods must:

1. Indicate that the software is preinstalled or embedded
2. Set forth the function and any field of use
3. Indicate the software is sold as a component of another finished product
4. Set forth the common name of the finished product.

Such software is classified in the same class as the finished goods in which it is embedded or preinstalled. For example, "preinstalled software for accepting wagers sold as a component of gaming machines” would be in Class 28 for games rather than Class 9 for software.

Takeaways: Choose downloadable software vs. SAAS carefully

When filing a trademark application for software, applicants should take care to consider whether the software will be downloadable or SAAS — or perhaps both. If an applicant specifies that the software will be downloadable but later decides to use the mark only for SAAS, they could not amend the application, but rather would need to file a new one. Applicants also should exercise restraint when adding detail to the function or field of use of the software to avoid unnecessarily limiting the scope of the registration, though extra detail can sometimes be useful to help minimize the likelihood of confusion with a prior trademark (perhaps only after an initial refusal by the examining attorney). Generally, applicants should avoid including marketing hyperbole, as it usually limits the scope of protection without facilitating registration.