Because computer software is so ubiquitous and can serve so many different functions, it is essential that trademark applicants specify with particularity the purpose of their software in the identification of their goods and services in order to avoid unnecessary rejections based on likelihood of confusion. If the field in which the software is used is not obvious from the language chosen to describe the purpose of the software, it must be explicitly stated.
Trademark applicants should also consider whether their software has multiple uses or aspects, which permits them to seek registration in multiple classes. For example, software that can be either run from a cloud or downloaded onto a user’s hard drive can be classified in both Class 9 and Class 42, provided that justification for the classification is shown.
Information Technology (IT)
The function of trademark law is particularly important in the technology sector because in the Information Age that we now live, technology has not only fostered the most innovation, but it has also created a great volume of commerce. With a constant demand for new quality products and services related to the Internet, trademarks are often combined with other forms of intellectual property, such as patents, copyrights, and trade secrets to help companies recoup their expenditures on research and development, and to enhance their competitiveness in the industry.
Just as trademarks aid technology companies in protecting their assets, so does the Internet impact the use of trademarks in the cyber marketplace. On one hand, the Internet allows any brand owner, small or renowned, to reach millions of people instantaneously. On the other hand, it presents challenges to brand owners in managing their brands’ identity by making it difficult for them to police their marks. Nevertheless, the use of trademarks in the cyber sphere is here to stay and some of the unique issues that it has presented, such as determining the boundaries of common law trademark use on the Internet, have only reinforced the importance of protecting trademark rights through the federal system.