Software is classified by how people reach it.
The USPTO sorts software by how the user gets it. Class 9 covers downloadable software, including mobile apps and desktop programs. Class 42 covers software that is not downloaded: software as a service, platform as a service, and hosted applications. Many products need both, and a company that files only in the class that matches today's product can find its roadmap uncovered later. Each class carries its own USPTO fee, so the choice is a scope and budget decision made at filing.
| Class 9 | Class 42 | |
|---|---|---|
| Covers | Downloadable software: mobile apps, desktop programs, browser extensions. | Non-downloadable software and hosted services: SaaS, PaaS, web applications. |
| A specimen that works | An app store or download page showing the mark with the software and a way to download it. | A page or screen showing the mark in connection with the hosted service being offered or performed, such as a log-in or sign-up page that describes the service. |
| A specimen that fails | A home page that only describes features and offers no download. | A page that only advertises the service without showing the mark in use with it. |
Specimen standards are set out in TMEP § 904 (goods) and § 1301.04 (services). Examining attorneys apply them to the page as submitted, so the specimen is chosen with care.
Where software filings go wrong.
A name that describes the product
Software names tend to describe what the product does. A mark that merely describes the function or purpose of the software is refused on the Principal Register under 15 U.S.C. § 1052(e)(1), and a descriptive word may have to be disclaimed. The line between descriptive and suggestive turns on how much thought it takes to connect the name to the product. A founder who finds this out after launch has already built a brand on a name that is hard to protect. Distinctiveness is judged before the name is adopted.
A crowded field
Software classes are heavily populated, and the USPTO treats related software and services as related for confusion purposes even when the products serve different customers. A domain name, an app store listing, or a package name is not a trademark right, and none of them shows that the name is free. Clearance covers the register and common-law use, including products that exist only online. See Clearance & Search.
Filing before launch
A product still in development can be protected before it is released by filing on an intent-to-use basis under 15 U.S.C. § 1051(b). The filing date becomes a priority date, contingent on the mark later being used and registered. The applicant must have a genuine, documented intention to use the mark. A Statement of Use and its USPTO fee follow once the product is live. The two bases are compared on the Federal Registration page.
Ownership
Investors and acquirers ask who owns the brand. If founders chose the name personally and the company has never received it by written assignment, or if a contractor or agency created the logo, the chain of title has a gap. The applicant must be the owner of the mark, so these questions are resolved before the application is filed.
How this practice handles software marks.
The name is checked against the register and common-law use, and assessed for descriptiveness, before it is built into the product.
Classes, filing basis, word mark or logo, and applicant are decided together, with the product roadmap in view.
The page or screen that will serve as the specimen is identified early, so the product launches with something the USPTO can accept.
Office actions are answered, the Statement of Use is filed after launch for intent-to-use applications, and later deadlines are docketed.
What to expect.
USPTO fees are paid separately to the agency: the base application fee is $350 per class, and an intent-to-use application adds a Statement of Use fee after launch (see the fee table on the Federal Registration page). Attorney fees are scoped at the strategy call, based on the number of classes, whether a logo is included, and whether clearance is needed first. Examination takes months, and an office action adds more.
Frequently asked questions.
Should I file in Class 9, Class 42, or both?
It depends on how users reach the software now and where the product is going. A browser-based platform is mainly Class 42. A downloadable mobile or desktop app is Class 9. A product that offers both is usually filed in both. The roadmap for the next one to two years belongs in the decision, because a later filing only protects from its own filing date.
Can I trademark the name before the product launches?
Yes, on an intent-to-use basis, if there is a bona fide intention to use the mark in commerce. The filing date becomes the priority date, contingent on registration. The application then waits for use, and a Statement of Use is filed once the product is live.
Do I need to trademark the company name and the product name?
They are separate marks and are protected separately. A company name used only to identify the business is treated differently from a name that identifies a product or service. Which to file first depends on which one customers use to find you.
Does owning the domain name or app name protect my brand?
No. A domain registration, an app store listing, or a package name does not give trademark rights and does not show that the name is clear of earlier marks. They are checked as part of clearance, but they are not a substitute for it.
What if we plan to expand internationally?
Foreign protection is filed separately from the U.S. application, and some countries reward the first to file rather than the first to use. The Madrid Protocol page explains how a U.S. application can be extended to other countries.