"Famous Last Words"

What's in a Name? (February 2004)

Dear Jim,

Last year we started up a new development company (I don't want to give our real name, but I'll call it "Tropane Studios") and we are about to deliver our first game into final testing.

Last week, one of my partners heard about an indie record label called "Tropane."

We're all pretty upset that our name has been taken.

What can we do?

Signed,

It's Our Name!

Dear Name!:

I can understand why you're upset. Your name is your calling card, your reputation, the identification you want game players, media, and publishers to associate with you.

Trademark (and its sister, service mark) rights in the United States are secured through two parallel systems. The first is simple use. From the first time of your first use, you begin to accumulate common law rights to the mark. Common law trademark rights are enforced through tort actions known as "passing off" or "unfair competition." As you can guess, "passing off" is the unfair attempt to "pass off" one's goods or services as those of another.

Since the sole purpose of a trademark is to identify the origin of goods or services, your continuous use of the mark in connection with your business stockpiles rights to that mark on your behalf. The longer you have used it, the more widely your use of the name has circulated, the stronger your claim.

The second system is federal registration under the Lanham Act. Federal trademark registration creates a presumption that others are aware of your use of the mark. While not necessarily an absolute prohibition to others, this presumption can make it easier to protect your rights to your name.

At one time, it was necessary to actually be using a mark in interstate commerce before it was eligible for federal registration. However, under current law, if you would have a bona fide intent to use the mark in the future, it can be "reserved" through what is known as an "Intent to Use" registration.

Trademark rights are seldom absolute. It's almost always somewhat of a balancing act. Here are a few of the balancing issues:

1. There are stronger and weaker trademarks. The classic examples of strong trademarks are Kodak and Exxon. Both are made-up words that have no meaning except in association with their products. I recall when Exxon was formed (or renamed - I believe it was at one time Standard Oil of New Jersey), the trademark people searched for a word that had no meaning in any language of the world. They came up with Exxon. Since it is a made-up word, created by and for the energy company, with no meaning beyond its use as a trademark, it is associated only with the company, and stands strong as a mark that could withstand any infringement by other unauthorized use. Though the word "Tropane" appears to be derived from "propane," and thus suggests heat, intensity, propulsion, fuel - as a derivative, it could still be a strong mark.
   
   At the other end is a generic mark such as "Arista" or "Acme." These words are very weak marks that have been applied to everything from barber shops to record labels. While Exxon may well prevail if a flower shop opens using its name, Arista Barber Shop might not succeed in a challenge of Arista Nail Salon down the street. The Arista or Acme mark is regarded as highly "diluted" as a result of its frequent use.
   
   
2. Trademark rights are generally limited to specific classes of goods or services. While Ford or Honda could not sell a motorcar called the Cadillac (a trademark of General Motors), there is a Cadillac Dog Food. "Cadillac" is not a made-up word. Antoine de la Mothe Cadillac was a Frenchman who established Fort Pontchartrain at Detroit in 1702; the use of the mark on both automobiles and dog food is not likely to produce confusion as to the origin of either. Therefore, there is no infringement. Use of your mark as both a game development studio and indie record label is a closer question.

In the case of your "Tropane" mark, do you know who was using it first? Do you know in what markets, or geographic regions the record label has done business? Before you began to use the mark, did you conduct any research to determine whether there may be a conflict?

Since trademark rights are seldom absolute, an important part of trademark selection is triage and risk analysis. I always recommend extensive research and consideration of potential conflicts to determine the level of risk before a mark is adopted. Even using all available cautions, challenges can come out of the woodwork.

The only way reasonably absolute rights to a mark can be assured is continuous long-term use. But even such use is not a guarantee. Remember that the World Wrestling Federation lost the right to use "WWF" as a mark to the World Wildlife Federation!

Once a selection is made, a federal "Intent to Use" registration in at least one category (for technical services or software) should be undertaken. Further applications in additional categories can be filed as use of the mark expands.

In the case of "Tropane," I suggest you speak with a trademark lawyer who will conduct a commercial search. Together, you can determine the risk associated with continued use of your mark. It may be that now is the best time to consider the possibility of a change of name - before that first game comes to market!

For further details on trademarks and other forms of IP, I strongly recommend you read through the IGDA's IP Rights White Paper.