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Resolving an Apple Notice of Complaint – Trademark Issue

Part of releasing an app on the Apple App Store or Google Play Store will be dealing with notices of complaints, trademark issues, and other legal problems. In my experience, they are infrequent (only one on an app and one on ads), but must be dealt with nonetheless. Fortunately, it’s not nearly as bad as it seems.

In this article, I’ll go over my experience successfully resolving an Apple Notice of Complaint and information about how to best handle it. My resolution was successful without spending any money on legal advice and I believe this can often be the case, however, I do not guarantee similar results.

Don’t Panic

A notice of complaint is just that. It doesn’t mean that the person that complained is correct or that Apple agrees with the complaint. It’s just a notification that gives you time to look into the situation and respond.

Don’t Be Intimidated

The other party will likely try to appear confident and distract you with legal mumbo jumbo. Stay calm and look at the facts. Don’t let them bully you. They may known even less than you do. (I was threatened by the CEO of the other company. In the end, he was completely wrong and didn’t understand the trademark he was trying to use.)

Apple the Arbitrator

Apple is the arbitrator here. That means they’ll hear out both sides before making a decision. They’re well-versed in the legality of the situation and are unlikely to show bias in their decisions. Follow their process.

Do the Research

Your notice of complaint should include a trademark number. Enter the number in the search box here and click Status.

Check the Class

My understanding is that the class should be 009 – Computer application software for mobile phones and handheld computers. You’ll see the class in the original email and under the “Goods and Services” section of the trademark website.

Check the Use

It’ll be in the “For” field under “Goods and Services” section. It describes the specific use case for the trademark. A trademark for a specific word or phrase doesn’t guarantee its exclusive use in all cases. It’s often specific to a certain scenario or an industry.

Make sure both line up with your use of the term. If they do not, that’s something to mention when you draft your response.

Check the Status

Look under the status to see if the trademark is live, issued, and active. Either way, there may be a way to dispute it.

Check the Application and Registration Dates

It’s possible for trademarks to be issued even if there are well-known uses of the terms already (prior art). If your use predates the registration, there may be other legal routes available to you.

Check if everything lines up. Even if it does, my understanding is that there is a 30 day window to file a notice of opposition. I’m not knowledgeable about those cases, so it’s likely best to contact a lawyer.

Contact the Other Party

This is perhaps the most questionable piece of advice. I’m not sure if this will help. I’m not sure it helped me. However, trying to resolve the conflict between you on your own seems to be what Apple wants and may earn you some small brownie points.

Be Kind and Decisive

I would not recommend making any offers or in any way agreeing that the other party is right. State your disagreement in a kind, courteous, and decisive manner. You may be wrong, however, being unsure of yourself will likely only make the other party fight harder and/or use your words against you.

Be Prepared

The response may be unkind. The response might also include misinformation. Keep in mind that the other party may be less informed than you are. In my case, the other party tried the good cop/bad cop routine. At first, they said it was unfortunate they had to take action. I repeated my case and they resorted to threatening. Again, they were wrong the whole time. Don’t let them bully you.

Contact Apple

It seems unlikely anyone would start the complaint process and back down. That’s alright. You don’t have to convince them. You just need to convince Apple.

Present your Argument

The process was rather informal in my experience. Come up with a simple, concise list about why you disagree with the complaint. You’ll find mine with the full story at the end of the article. Don’t forget to include the reference number and CC the other party as stated in Apple’s original email.

Be Patient

I submitted my response to Apple on February 15th. I didn’t hear anything until March 1st when the other party attempted to submit a duplicate complaint (at which point Apple warned them that duplicate complaints may further delay the process). On March 5th, they told me that they did not see a conflict between our uses of the term and resolved the matter. Success!

The Whole Story

I received a complaint that my app “Checkmate Chess Puzzles” violated a trademark for the term “Checkmate”. I looked into the matter and found the trademark specifically said it was for “Computer application software for mobile phones and handheld computers, namely, software for testing, treating and sharing sexually transmitted disease status”.

As my app was about chess, I contacted the source of the complaint (a CEO) and informed them of the difference in the apps. However, the other party claimed to own the word “Checkmate” for any app title and that the functionality was not relevant. This was either a lie or the CEO was misinformed as to the use of trademarks.

After that exchange, I asked reddit.com/r/legaladvice for more information. Based on what they said and my own intuition I constructed a response to Apple.

My Response

Hey {Apple Contact},

I’ve spent some time looking into the matter.

I’ve noticed several issues with the proposed complaint.

1.) The trademark shows up as currently under examination.

2.) My app was on the app store prior to the date which an application was submitted for this trademark. There are many other apps which use the term including a medical app (released in 2010) which predate the trademark application as well.

3.) The trademark specifically pertains to software for STD testing. For: “Computer application software for mobile phones and handheld computers, namely, software for testing, treating and sharing sexually transmitted disease status” while my app is an app for playing chess puzzles.

{Link to Trademark Page}

4.) The industries are dissimilar and there could be no cause for confusion between customers looking for a chess app and customers looking for an std testing app.

5.) Checkmate as used within my app title is related to chess puzzles. In chess, checkmate is a common term and a key component of the game. The uses are dissimilar and in my case descriptive.

These reasons seem sufficient to prove my application does not infringe Complainant’s rights.

If this information is not sufficient, please let me know and I shall pursue other methods.

Thank you for your time,

Jacob

Summary

I’ll admit I was worried by the initial notice of complaint. My limited legal knowledge made me hesitant to do anything, but give up. Luckily, I just couldn’t believe that someone could own the word “Checkmate” and found some kind advice online. After sending a simple email, the complaint was easily resolved.

I hope this article helps others avoid the same panicked searching I went through. Good luck!

Disclaimer: The materials available at this web site are for informational purposes only and not for the purpose of providing legal advice. You should contact your attorney to obtain advice with respect to any particular issue or problem.

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