Famous Last Words August 04

DISCLAIMER: This column is intended for general educationaland entertainment purposes and is not legal advice. Every situation is unique. Anyone entering into a contract should have a lawyer who can provide counsel.

Jim Charne,

Attorney at Law

Trademark Similarity - Cause for Concern? (August 2004)

Dear Jim,

I recently registered a new game development company in Israel. The company in named "Lucent Mind Studios Ltd.". Unfortunately for me, it has been brought to my attention that there is a huge company by the name of "Lucent Technologies". Am I at a risk of a lawsuit for trademark/copyright issues?

Thanks, Adi.

 

Dear Adi:

Trademark law is based on principles that date back at least to the middle ages - a time when most people could neither read nor write.

A "hallmark" seal or graphic stamped onto a sword, tankard, suit of armor or other item would signify the artisan or shop that made the item. Today, a trademark serves the same purpose. It identifies the origin of goods or services.

Companies must protect their trademarks to fight "dilution" - meaning use by others that may lead to confusion in the minds of the public as to whom or what the mark represents.

In modern trademark practice, a mark can be used by several owners if the nature of their respective goods and services makes it unlikely people would confuse them. So, for example, the Cadillac mark is used by General Motors for automobiles; but also by Cadillac Dog Food.

Some marks may be immune from this permitted concurrent use. When a mark is a word specially created for the user and has no other meaning, it is regarded as "strong" and can be enforced against users even in fields far removed from the goods and services of the owner. Examples of these "manufactured" marks are Kodak, Exxon, and Xerox. My Oxford dictionary (1955 printing) says "Kodak" is a trademark name invented by George Eastman.

The word "Lucent" is not such a manufactured word. My Oxford Dictionary defines "Lucent" simply as "shiny, bright, luminous, translucent, clear" and traces its use back to 1820. But the question is whether you can use the mark in the field of computer software game development without being confused with Lucent Technologies, Inc.

A quick search of the United States Patent and Trademark Office records shows 89 applications using the word "Lucent" as a trademark, service mark, or element of a mark. Several are registrations made by Lucent Technologies, Inc. in technical fields (primarily telecommunications) involving hardware and software uses. Many of the other records are considered "dead;" some show evidence they have been opposed or challenged. Whether this was by Lucent Technologies, Inc. would require research that is beyond the scope of what we cover here.

Your use would not appear to directly conflict with a current Lucent use. However, you are working in a technical field and the issue is whether Lucent would regard you as a conflicting or potentially conflicting use. If they do, they have the resources, means, and experience to take action.

In the end, the issue is not necessarily whether you are right or wrong, but whether you are ready to live with the distraction of defending your trademark rights against Lucent Technologies, Inc. in United States Patent and Trademark Office proceedings.

If you were my client, I'd recommend you find another trade name before you had too much invested in your use of the word "Lucent."

Once a potential name is identified, a search and analysis by an experienced United States trademark lawyer is a good investment.

Is there language in your contract that has you scratching your head? Found something confusing or worse? Submit a question to Jim for developer-oriented analysis in this Famous Last Words column (IGDA members only).

Jim's Bio

Jim Charne practices law in Santa Monica, CA (www.charnelaw.com) where he represents developers, designers, and other clients in the games industry. Jim was the proud recipient of an IGDA M.V.P. Award at GDC 2006, is chair of the annual GDC legal and business tutorial, and a member of the Advisory Board of G.A.N.G. From 1998 to 2001, Jim served as President of the Academy of Interactive Arts and Sciences.

© 2009 Jim Charne. All rights reserved.