Does the USPTO distinguish between downloadable software regarding trademarks?

Question

Trademarks protect marks within their own categories, which can loosely be defined as fields or industries. However, some categories, like IC009, which covers downloadable software, is very broad. As technology becomes increasingly—and sometimes overwhelmingly—pervasive, "downloadable software" touches so many different industries. What company doesn't have their hand in downloadable software? There is at least one company in every possible industry with some form of downloadable software, like a mobile app. Does the USPTO distinguish between downloadable software?

For instance, I want to trademark a name for a social network (via mobile app) targeted to a specific segment of consumers. However, that name is trademarked by a video game company for their video-game development software. From a software engineer's perspective, there is no reasonable link between internal software used by developers and a social network used by consumers. But does the USPTO feel the same way? Or is downloadable software just downloadable software?

Answer 1

Claiming registration for "downloadable software" in class 009 would be rejected as an unacceptable description of the goods (i.e., indefinite or overly broad). At last check, there were well over 200 different approved sub-categories in the "downloadable software" genre.

You would usually need to specify the field AND the function or purpose of the software, at the very least.See, e.g., TMEP 1402.03(d).

If you also want to register the brand for online "social network services", you would also need to apply under IC042 (or perhaps 045 or 038) with a suitable service description. This will naturally expand the examiner's search in related fields and functions.

Your issue, for your trademark attorney's opinion, would be along the lines of whether it is likely that another registration of an identical brand in IC009 or IC042/045/038 could arguably create a likelihood of confusion, at least for the examiner, and whether there would be any good defenses (different field, unrelated consumers, etc).

It is often less of a headache to select a different brand (more easily distinguishable) and restart your comprehensive search for anything "related".