You Got a Trademark Complaint Notice from Apple? Don’t Freak Out.

Lessons I’ve learned from dealing with two separate trademark complaints against my app

Bob Loblaw’s Law Blog

It’s one of the scariest emails you can receive as an independent app developer: a trademark complaint against your app. For anyone who’s gotten one of these before, you know the feeling of this digital gut-punch all too well. At first glance, the email seems fairly innocuous. After getting past the nondescript subject line and unnecessarily-confusing legalese, though, you quickly realize how serious (and scary) this message is.

To be clear, this isn’t a legal action yet — someone (either an individual or an organization) has simply complained to Apple that some aspect of your app infringes on her trademark. If this complaint isn’t resolved, though, you could have your app removed from the app store and/or could face more serious legal issues.

Seven months into my first year on the app store, I’ve successfully handled two separate trademark complaints like this against my app for Alcoholics Anonymous (both related to the title of my app). Each case is obviously unique, but I hope that sharing some lessons that I’ve learned from my own experiences can help others facing similar complaints. This seems exceedingly obvious, but for the record (and because it feels super official): This post does not constitute legal advice and does not establish an attorney-client relationship.

1. Consider the necessity of using the trademark in your app.

When you receive one of these complaints, it’s tempting to jump head first into investigation mode. Am I actually infringing on the trademark? Does the “Complainant” even own this trademark? Before you waste any time accessing the validity of the complaint, take a step back and ask yourself, “do I really need to use the (claimed) trademark in my app?”

If the trademark isn’t essential for your app, it’s probably best to just remove any use of the trademark and let the Complainant and Apple know that you’ve done so. Even if the complaint seems ridiculous, this will save you a ton of time and stress.

I received my first trademark complaint the same week my app launched. At the time, my app was named “AA Big Book —The Sobriety Companion,” and the complaint was over the use of the word “companion.” Unbeknownst to me, another Alcoholics Anonymous-related app also used “companion” in its name, and the owner of that app claimed to have the word trademarked in this context. After my initial panic subsided, I convinced myself that trademarking such a common word was absurd. I spent hours trying to find evidence of the Complainant’s trademark and, when I couldn’t find that, went digging deeper to see how one could possibly trademark something like this.

Eventually I escaped that rabbit hole and realized that the word in question would have zero effect on my app’s performance. It wasn’t a keyword I was targeting — I just liked how comforting it sounded. I quickly replied to the email to let the Complainant and Apple know that I would remove “companion” from my title, and the other developer replied within the hour that the matter was resolved. Phew!

2. Don’t back down too easily, but do your research.

About six months after that initial complaint, I received another. While the minimal amount of success I’d achieved to this point made me slightly more confident, this second complaint was much scarier than the first. This time, the Complainant wasn’t another developer, it was Alcoholics Anonymous!

For some quick background, my app is centered around the Big Book of Alcoholics Anonymous, which is essentially the Bible for the classic 12-step program (you can read more about how this came to be here). Even though the Big Book is in the public domain in the U.S., I had long feared that Alcoholics Anonymous would attempt to shut me down some day. My immediate reaction upon receiving this second trademark complaint was irrational panic — the day had finally come, and I would be forced to take down the app.

This hysteria was, of course, unfounded. AA even assured me that they couldn’t force me to take down the app because the content was in the public domain. Their initial complaint was regarding the use of the phrase “AA” in the title of my app. Even though this seemed a little ridiculous (especially considering the dozens of competing apps with “AA” in the titles), I replied to the complaint saying that I would remove the two letters from my app title.

This time around, however, it wasn’t that simple. After several weeks of emails back and forth, AA eventually stated that they actually needed me to remove any and all of their trademarks from the app, which included the phrases “AA” and “Alcoholics Anonymous.” I wanted to resolve this issue as quickly as possible, but that request was a bridge too far. Unlike the “companion” complaint, this would have huge repercussions on my app’s performance in the App Store. If I couldn’t refer to either “AA” or “Alcoholics Anonymous,” the app would nosedive in the search results for key search terms. This would be worth the time and effort it would take to fight the complaint.

Using the last remnants of knowledge left from my Legal Studies major (…mainly some skillful Googling, sorry Mom!), I discovered a defense against trademark infringement called “nominative use.” Nominative use basically says that if you can’t describe your product or service without using the trademark, you can use the trademark (only as much as is necessary to identify your product). This is the same defense that protects books like “Microsoft Office for Dummies” from being sued into oblivion by Microsoft.

Without referring to “AA” or “Alcoholics Anonymous,” it would be impossible for me to accurately identify the content of my app. After doing enough research to feel confident I was covered by this defense, I replied to the complaint:

“It is my understanding that the use of your trademarks in the previously proposed title would be considered nominative fair use and passes the nominative use test.”

Within the hour, AA replied stating that the matter was resolved.

3. Be friendly and prompt in your communication!

In both situations, I was careful to reply to every email as quickly as possible and to be overly courteous. It’s obviously impossible to measure how effective this is in resolving these complaints (if at all), but anecdotally, it helped ingratiate myself to the Complainants and to Apple.

With the first complaint, the Complainant was also an independent developer, and it was clear in his final response that he genuinely appreciated me resolving the issue so painlessly and quickly. I know I would’ve appreciated it if I were in his shoes (though I don’t think I would file a complaint for such an irrelevant word…).

While that complaint took only one day to resolve, the second complaint spanned almost two months. It wasn’t as clear in this case if my cordiality had any positive effect on the outcome, but I’m confident that my prompt responses did. In these trademark disputes, Apple requires both parties to CC them in all correspondence. If a few weeks go by without a response from one party, Apple will follow up on the complaint with both parties. This happened several times over the lifetime of the second complaint, and each time, I was able to (kindly) point out to Apple that I was still awaiting a response from the Complainant. Again, this is purely anecdotal, but that couldn’t have made the Complainant look good to Apple in this dispute.

4. Ignore everything I just said, and get a lawyer

I’ve been extremely lucky to be able to resolve both complaints successfully without having to pay for a lawyer. If either dispute had gotten much more contentious, though, I wouldn’t have felt comfortable dealing with it on my own (particularly the second complaint). If you’re ever in serious doubt, seek real legal help! Lawyers are so notoriously expensive that it’s a cliche to even mention, but there are law offices that specifically cater to startups and small businesses. They’ll be more understanding of tenuous financial situations and be more willing to work with you on payment than traditional lawyers. Ask friends in the industry for recommendations!