App icons are the new trademarks: ten conditions for strong designs and protection

By Zeeger Vink*, IP Director at MF Brands Group, Switzerland

*Zeeger Vink is IP Director at the MF Brands Group (Lacoste) and author of THE GREAT CATAPULT: How Integrated IP Management Will Shoot Your Brand to Success. The article was originally published in The Trademark Lawyer and is the fruit of the Master’s course in IP & Communication at the Sciences Po School of Management & Innovation; the author thanks the class of 2018 for their research contributions. All opinions expressed in this article are solely those of the author.

Smartphones have revolutionized interaction between consumers and brands. App icons now play a pivotal role and serve to distinguish often and quickly between large numbers of rival apps. They are the new trademarks, and require a similar treatment. The following guidelines allow companies ranging from startup to multinationals to optimize app design and protection – a precondition for strong brands.

1. Choose a distinctive sign

   Valid trademarks need to be distinctive to perform their function as commercial identifiers. Overly simplistic or abstract graphics are therefore unfit as a trademark, and may be refused by trademark offices due to their banal, decorative or functional character.

   

2. Don’t let the icon describe the service: be original

   An icon that is composed of elements that describe the activities of the company, or that is otherwise visually generic, is unable to distinguish itself from competitors in the same category. It is therefore also unfit to function as a trademark, or will be weak and difficult to defend at best.

   

   This condition is somewhat counter-intuitive, as many marketers consider descriptive elements as logical entry points to guide consumers. Apart from the distinctiveness issue, a rationale for excluding such elements from registration as trademarks is that registration would give an unjustified monopoly to a single market player. It doesn’t mean that descriptive app icons cannot function as trademarks at all, as testified by the fact that most people will recognize the icon for WhatsApp above. But that is due to intensive use and massive global attention, the luck that only a handful of companies will have. So why create a handicap from the start? The strongest trademarks are original logos, unrelated to the services provided.

   

3. Use distinctive colors

   

   Colors are powerful identifiers and can contribute significantly to the power of trademarks. Stand out from the competition and choose one or more original colors as part of the mark.

   Certain colors have become common identifiers for particular categories, for example green for communication apps and yellow for taxi apps. Staying away from the pack will guarantee enhanced distinctiveness, and thus trademark strength.

   

4. Don’t fall into the “initial-trap”

   Limited space is a particular constraint for icon design: brand names are often too long to include. A common solution is to use the brand name’s first letter in a specific font or style. While this may be an understandable solution for brands with high pre-existing brand awareness, it is a bad strategy from a legal protection perspective. The registered brand name does not provide protection for its initials. Trademark offices in many countries refuse trademarks for single letters. Even if your “initial-mark” does get accepted, you will not be able to avoid use of the same letter by a different app. Actually, it is highly likely that among the millions of existing apps, many already pre-date your initials!

   

   Brands with short names or multi-letter abbreviations can safely choose them as a logo and count themselves lucky. A distinctive font or style will add to the trademark’s strength.

   

5. Use your existing company logo (if suitable)

   In recent times, many companies have developed stand-alone eCommerce branding to underline their move into the “digital” sphere. Obviously, this approach is not ideal for brand coherence and may already have become obsolete in view of omni-channel strategies, which seek to merge online and offline in a uniform customer experience. Why not dust off the good-old company logo and adopt it as an app icon? It allows you to capitalize on accrued notoriety, consolidate existing rights globally, and avoid new trademark filings.

   

6. Beware of prior rights

   Before a new logo can be adopted as a trademark, it is crucial to make sure no prior rights exist, as these may form an obstacle for registration and use. An availability search will reveal any third-party trademarks that may pose a legal risk and could force expensive changes later on. But also check for other potential IP issues: official signs are often regulated (i.e. country flags; the Red Cross logo and more), and common symbols were once designed by someone, who may still have rights in them. Complicated? Look at it this way: if you want exclusivity, you have to be the first. That’s how IP works.

   

7. Own the rights to your design

   In line with point 6, you also need to make sure you own the rights to your own logo. In many cases, company logos are designed by a contractor, an employee or even a friend: all should formally transfer the related copyright and design rights to avoid future conflicts. And as a tip for business angels and other investors: make sure the app-founder transferred his or her creative rights to the company!

8. Register!

   Surprisingly few app-owners have registered their icons. Whether this is due to ignorance, oversight or the false assumption that the company name will suffice, only the registration of the actual icon will guarantee exclusivity and protection. Sure, registration comes with a cost, and startups in particular often have limited budgets. But in the digital economy, intellectual property rights (IP) such as trademarks often represent the company’s principal assets. Their protection is well worth the investment.

9. Stick to the design

   Trademarks remain valid if they are used as registered. Consequently, changing the design of your registered app icon may result in the loss of rights. It is therefore advisable to stick to your app icon in the same way companies remain faithful to their brand logos. (Now you understand why they rarely change!). If you wish to maintain the freedom to refresh colors from time to time: file the icon-mark in black and white, as in most jurisdictions this automatically covers all colors. (Note: this will make distinctive app colors inoperable, see point 3.). If you do change your app design, don’t forget to file new trademark registrations to ensure it is protected.

   

10. Anticipate technological change

    It seems logical to file an app mark in the shape that is so typical for current apps: a square with rounded corners. But don’t forget that this shape is simply the result of the graphics chart imposed by iOS, Android, and other platforms. What if one day they change? It could potentially modify the use of your icon, thereby affecting the validity of your mark (see previous point). Similar effects can be imagined in cases where other types of interfaces become prevalent. To ensure your icon-mark withstands the test of time, it is wise to file it in a technology-neutral way, for example, in a standard (square) form and without claiming use as a “smartphone app” in the description.

If you want exclusivity, you have to be the first. That’s how IP works.

To conclude, a glimpse into the near future: moving app icons may arrive sooner than you expect. And that will make the right IP strategy even more relevant.