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As evidenced by the recent hype about the new Instagram smart app icon, companies invest a lot of time and money to develop the look and feel of a smart device application (“app”) in order to promote brand recognition.  OK, so you know that your app is a valuable piece of intellectual property, but what are you doing to protect this asset?  With the market for apps projected to reach $2 trillion by 2020, it is clear that apps will be a primary source or gateway for revenue for most businesses in the 21st Century.  Yet, few companies give due consideration to how they can protect this increasingly valuable IP asset.

To protect the look and feel of your app, trademark law and the somewhat less known law of trade dress may be your answer.  In a recent case that I litigated for a plaintiff in the U.S. District Court for the Northern District of California, the Court upheld my theory that the look of its smart device app icon was a protectable trade dress feature.  The case involved competing “selfie” photo editing apps where my client alleged that the defendants were infringing not only my client’s registered trademark for the app but also the non-functional aesthetic features of the app, including the app icon, which is used to market the app in virtual store fronts like Apple’s App Store and the Google Play Store.

In the complaint, we alleged that (1) our app icon was “so distinctive and essential an element of [our] … trade dress throughout the app that the app icon is additionally, in and of itself, an entirely protectable trade dress standing on its own,” and (2) the defendants were using “a highly similar app icon….”  The defendant moved to dismiss our trade dress claim as being improperly alleged, but the Court denied the motion, finding that our allegations did satisfy the standard of providing “a complete recitation of the concrete elements of [our] alleged trade dress….”  The Court understood that we were basing our trade dress claim, at least in part, on the theory that our app icon stood “on its own” as an independently protectable trade dress feature.  See ArcSoft, Inc. v. CyberLink Corp., No. 15-cv-03707-WHO, 2016 U.S. Dist. LEXIS 28997, at *7 (N.D. Cal. Mar. 7, 2016).*

Although the courts have grappled for years with how to apply trademark law to intangible products and services like software, my research shows that this is the first reported decision by a federal court recognizing that an app icon may, in and of itself, constitute an independently protectable trade dress feature.

Traditionally, trade dress is broadly defined as the total image and appearance – “the look and the feel” – of a product or service which indicates or identifies the source of the product or service and distinguishes it from those of others.  One classic example of trade dress in a tangible form is the original contoured Coca-Cola bottle shape.  Designed in 1916 by a bottle company with the specific intent to distinguish Coca-Cola from imitating competitors, the Coke bottle is now recognized by billions of consumers as a designation of the Coke product brand.

One hundred years later as smart device apps flood the marketplace, the primary if not only aesthetic feature that distinguishes one app from another on the “shelf” of the online store is the app icon.  Businesses invest significant resources to develop the software that enable apps to run, and they also incur great expense on art and graphic design to make apps and icons aesthetically pleasing and distinctive.  Given such extensive capital expenditures, it behooves businesses to protect app trade dress no less than they would protect any other product or service subject to trademark protection.  And as my selfie editing app case proves, trademark law is expanding to accommodate the virtual goods and services of the 21st Century market.  So be smart, and dress your app smartly.

*About the Author:  Isaac Winer is a civil litigator and business lawyer at the Law Office of Isaac H. Winer in Palo Alto, California.  He also serves as Senior Counsel to Intellectual Property Law Group LLP in San Jose, California.