Apple to Bonobo – Retina is trademarked, change your app name

by @Stuart 452 days ago

Our app called Unretina, which is a simple free tool to downscale retina @2x images to work on older devices, has been ticking away nicely on the Mac App Store since day 1. On Sunday we got this nice email from Apple:

It has come to our attention that your app, Unretina, is currently using Retina in the app name in a manner that is not consistent with Apple’s trademark guidelines, as required by the App Store Review Guidelines :

5.1 Apps must comply with all terms and conditions explained in the Guidelines for using Apple Trademark Names and the Apple Trademark Products List

… snip long boring legal stuff …

Please make the necessary changes to your application’s title by end of day Monday, April 4th , 2011, or we will need to remove your application from sale.

Surely you can’t trademark ‘Retina’? But sure enough they did:
RETINA – Trademark by APPLE INC. CUPERTINO, CA – Serial Number: 85056810

Interesting enough though, it’s only for hand held games:
Electronic hand-held game units other than those adapted for use with an external display screen or monitor; hand-held electronic games and apparatus other than those adapted for use with television receiver only

I have an issue with this for a number of reasons:
1. Our app has nothing to do with mobile game units.
2. It’s an app to help develop apps exclusively for Apple’s mobile OS.
3. It’s totally free, we don’t profit from it at all.
4. Why is it only an issue now, 6 weeks later?

It’s another reminder that if you play in Apple’s home ground you have to play by whatever rules they feel fit.

For now we are going to stand our ground and argue our point, but in the end Apple can just pull the app from the store, so we obey their decision and change the name, or just pull it from the store.

Edit:
Looks like Apple have another trademark that is a bit broader.

So looks like we need to change the name, any suggestions?

33 Comments #Business#Ventures
  • http://www.saurik.com/ Jay Freeman (saurik)

    Look, the fact that your app is free is irrelevant: you should drop that from your argument as it has no place being there. If I wanted to make a free operating system called Mac OS X that wouldn’t and shouldn’t change the fact that I shouldn’t do that.

    However, the key issue you need to realize here is that you are not falling under trademark law: you are falling under Apple’s developer agreement. I believe in this specific situation under different distribution you actually might be allowed to use that name (although you should talk to your lawyer, as I’m not actually certain of that: it feels a little borderline).

    But as you chose to list your product in Apple’s store, and no one has yet gotten around to antri-trust hammering on them for how they run that thing (although even in that universe I am not certain that this trademark thing is unreasonable), they could have a clause “you may not use the letter A in the name of your product” and you’d have to abide by it or get your product pulled.

    And, in fact, the document you signed has a clause 5.1 in it that references a trademark guidelines document that states you may not use any of Apple’s wordmarks in the name of your product, and that guidelines page lists no exceptions to that rule. If you want to take your product and sell it elsewhere, then you get to fall back to looking at their actual trademark and seeing what it covers, but until then it doesn’t matter.

  • http://Website Marc

    FuckYouApple ?

  • http://Website shaun

    App name suggestion: iRiss
    :)

  • http://Website Robin

    Rofl @ Saurik of all people defending Apple.

  • http://Website CJH

    Rename it ‘Glaucoma’

  • http://Website Tom

    Unre10na although I do like glaucoma

  • http://Website Not him.

    How about “Macular degeneration”?

    Alternatively, something along the lines of “downscaler”?

  • http://Website timeuser

    How about ‘Vaseline’

    Although you probably want to stay away from that trademark as well.

  • http://Website Jason

    You can have more than one trademark for a given word, and Apple does for ‘Retina’: http://tess2.uspto.gov/bin/showfield?f=doc&state=4003:o8la6.2.7

    That one covers “Computers; computer hardware; computer displays; computer software; handheld mobile digital electronic devices used as a telephone, handheld computer, personal digital assistant, electronic organizer, and electronic notepad, and used to access the Internet, electronic mail, and other digital data”

  • http://Website winc06

    How about “Unresret” It will fall in the same place in the list and suggests the down res function and what it is for. Don’t name it after a disease.

  • http://Www.faroutshirts.com RBM

    DeRet, UnRet, NoRet, normualizer, half by half (knd of like half and half), goldiloxizer, Fit MiScreen, Un-corrective Lazer Surgery, Sungazer, Someone Else’s Glasses.

    Those are all that come to mind now, I might be back with more if any occur to me.

  • http://Website Vic Moore

    change the app name to BlackEye… since that what you got after the Apple sucker punch :-)

  • http://Website jsk

    I thought trademarking common usage, single, English words wasn’t allowed. For example: it’s “Microsoft Word” not “Word” or “Apple Corporation” not “Apple.”

    Of course, you’ll notice the total lack of “camera” listed in their trademark. That one belongs (or used to anyway) to Kodak and their famous Kodak Retina camera.

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  • http://Website SJS

    Name it after that famous lady, Unre Tina.

  • http://screeningroom.com mark

    retina spelled backwards aniter

  • http://Nanchatte.wordpress.com Craig Lloyd

    How about unretiner? Pronounciation doesn’t change… List position doesn’t change and as a bonus I sounds a bit like a verb!

  • http://Website Sam

    Rescale

  • http://inspirationoverload.org Conor O’Driscoll

    Chameleon – It changes scales.

    And then you can just blend in to hide from Apple’s lawyers.

  • http://Website Tom Berg

    BoNoBlur or Hi2Lo

  • http://Website Loc

    Where can I download a copy of Unretina? Seems like Apple pulled you guys off the map completely, all sources linked back to Apple Apps page with no download link to be found.

  • http://bonobolabs.com Stuart

    @Loc seems to still be there, we’ll be updating soon with a new name http://itunes.apple.com/us/app/unretina/id411277085?mt=12

  • http://elevationlegal.com Jamie Lyford

    I would go for ‘Beer Goggles 1.0′

    Seriously though Stuart happy to have a quick look at the TM issue for you no obligation – there may be a way through. Cheers Jamie

  • Pingback: Unretina gets a major name change, now called Unretiner « Bonobo

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