Can we register a free icon as a trademark?

質問

We developed a mobile app which proved successful in initial "field tests", so we made it available online. After a couple of thousand downloads, we would like to register the logo and the name for the app as a trademark. We originally didn't expect any significant success of the app so we didn't register any rights, but the way things are now we decided to commercialize it. For the logo, part of it comes from a library of free vector icons which was distributed under a Creative Commons license. Can we register it as a trademark?

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回答: 2 public & 2 非公開

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弁護士

By virtue of your commercializing the app and the mark that identifies it, you have already "used" the mark in U.S. Commerce (assuming the downloads were accessible by U.S. citizens) and acquired rights in the mark if there are no pre-existing rights belonging to anyone else. Registering the mark in the U.S. would merely publicize your use and claim of rights in the mark whether or not that claim to the mark is allowed.
Whether you are allowed to claim rights in the mark and use it commercially would be dictated by the terms of the Creative Commons license. Does that license allow you to appropriate IP for commercial use? I'm not sure. If it does, and you can permanently acquire those rights for commercial use, then the answer to your question should be yes. If the answer is no, then you may already have violated the CCL.
Now whether a registration would issue from the U.S. Patent and Trademark Office under those circumstances is more a question of logistics and USPTO operations than legal rights. What I mean is that the USPTO might register your mark if there is no conflicting mark on its register because the USPTO won't look beyond its register; but the administrator of the CCL or whomever owns/owned the design prior to the CCL that might still claim rights in it could oppose your registration of the mark and the validity of that registration could always be challenged based upon whether you had the right to register a mark from the CCL.

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