Famous Last Words Dec09

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

Protecting a Name (December 2009)

Dear Jim:

We’re finishing our first PC game and we haven’t decided the title yet.
Our goal is to publish the game in USA and Europe through casual games channels.
What steps should we follow in order to avoid legal conflicts regarding the name of the game?

Thanks!
A.W.

Dear A.W.:

There is no way known to guarantee there will not be a conflict when it comes to a company game title, or brand, or company name.

As the demand for games expands around the world, the risk of stepping on someone’s trademark rights somewhere increases.

There is no economical and fool-proof way to check potential names everywhere.  Not even a Microsoft or Nintendo does that.  So there will always be some risk when it comes to picking a name or brand.  A realistic goal is to understand and minimize the risk.

In the old days when a product was sold in a single country, and there was no Internet offering instantaneous global coverage, it was possible to take a country-by-country approach in researching and addressing potential conflicts before a name was selected.

There are examples of products that were given different names in different countries.  Sometimes this was because of trademark conflicts; sometimes there were other reasons.

My favorite example is the Chevy Nova automobile was marketed in Spanish-language speaking countries under a different name.  “Nova” or “no va” means “doesn’t go” in Spanish.  Not a good name for a car.

A good trademark strategy for a games industry product is to try and clear a name at least in the United States.  Then, if you have the resources, move on to the European Union and Japan.  After that, China, Korea, and Canada would be next on my list.

But each requires its own process.  Help from lawyers or trademark agents is highly recommended.  So you can see that costs would rapidly mount up.

In the United States, a trademark applicant can prosecute his, her, or its own application in the United States Trademark Office (uspto.gov).  However, there are intricacies to preparing and moving an application through the process so an experienced trademark lawyer is highly recommended.  If the job is handled by someone who is knowledgeable in TM office procedure, it should not be costly (by lawyer standards).  

Here are a few fundamental issues to bear in mind when applying for a US trademark:

1.    conflicting marks may be permitted if the nature of the goods or services are markedly different.  The standard applied in evaluating a mark is whether it is “confusingly similar” to another registered mark (or a mark for which registration is pending).  Under that standard, it is unlikely the Trademark Office would register “Actrovision” for your games company; but “Cadillac” co-exists as a registered mark for motor vehicles (General Motors – US reg # 1570808) and dog food (Menu Foods, Inc. - US reg # 0616316).  It is unlikely that users of Cadillac Dog Food would think the product is sold by General Motors.  Similarly, customers for Cadillac motor vehicles are not likely to believe the cars are made by Menu Foods.

2.    US registrations must be placed in specific internationally-recognized categories of goods and services, then the exact goods and services that are the subject of the application must be narrowly described.  Each category in which goods or services are listed is subject to a separate filing fee.  A broad “laundry list” of claims can result in a response from the Trademark Office requiring re-statement of goods or services, and a request for further filing fees!  Depending on the type of application that is filed, those fees can be $275 or $350 per category.  Generally, software games are treated as goods in category 9 filings; game development services are in category 42.   

3.    Marks that are confusingly similar to, and have closely related goods or services with, existing registered marks, or pending applications, may not be accepted.  The standard for what constitutes “confusingly similar” is subjective and determined, initially, by a Trademark Office examining attorney.  The similarity can extend to both the spelling and pronunciation of the mark.  For example, “Go Fish” may be seen as confusingly similar to “Gophyzh” for similar goods even through the spelling is totally different.

4.    Marks that are seen as descriptive will not be registered.  The mark “Brown Shoes” as a trademark for brown shoes is not likely to be accepted by the trademark office.  The more fanciful the mark, the stronger.  When Standard Oil was looking to change its name, it hired a consultant to invent a word that had no meaning in any language in the world.  The name that was invented was “Exxon.”  Similarly, “Kodak,” or “Xerox” are words that were invented and relate singularly to their products.

So how does a small studio find, and then protect its trademarks?  One strategy is to know the market, use that knowledge to select names believed to be non-infringing, then conduct extensive internet searches to confirm or explode the belief.  If cost is less a concern, there are highly qualified companies who can conduct detailed searches.  However, the challenge is not in ordering the search, it is in reading and interpreting the results.  For this purpose, an experienced trademarks attorney is a good resource.

Once a determination is made that a mark looks good, log onto the United States Trademark Office website and search the tm database (uspto.gov/trademarks/index.jsp).  Search many variations on your proposed name; search alternate spellings.  This search may not be conclusive; but it may provide a good indication whether to proceed.  

I do recommend engaging a United States attorney who is familiar with Trademark Office practice to help with the application.  Once your U.S. app is in process, the next step may be to prepare and file an EU app.  That will require hiring a trademark agent in the territory who can assist with that.  The process is similar – starting with a search.

Protecting IP is the responsibility of the owner.  That is an argument game publishers make in their deals with developers when they take control of the IP.  But if a developer is prepared to invest in protecting IP, and the game is a success, the brand, itself, can become a valuable asset of the studio.

Jims Bio

Jim Charne practices law in Santa Monica, CA (www.charnelaw.com) where he represents developers, designers, composers and other clients in the games industry.  Jim has been a frequent speaker at GDC, is active in IGDA from whom he received an “MVP” Award at GDC 2006, in 2010 will chair the Practicing Law Institute video game law segment the week after GDC at its annual Entertainment Law Symposium in New York, and is a member of the Advisory Board of G.A.N.G.  Jim served as President of the Academy of Interactive Arts and Sciences from 1998 to 2001.

Is there language in your contract that has you scratching your head?  Found something confusing or worse?  Send it to “Famous Last Words” for developer-oriented analysis.

Famous Last Words is intended for general educational and entertainment purposes and is not legal advice.  Every situation and circumstance is unique.  Anyone entering into a software-related contract should have an experienced lawyer who can provide counsel throughout the process.

©2009 Jim Charne.  All rights reserved.