Famous Last Words September 2011

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DISCLAIMER: This column is intended for general educational and 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

September, 2011
Famous Last Words
By Jim Charne, Attorney at Law

Protecting Your Game’s Name – Before It Comes Out

Dear Jim:

We’ve been working on a downloadable game that will be ready for release before GDC.

We’ve got a name for the game that we all love.  We’ve been planning to use it almost since we started development.

Last week, we became aware of another game that is announced using a name that is very similar to our name.

What should we do?

--Distressed

Dear Distressed:

I can provide some general help, and guidelines for protecting a name, but the best thing to do is call your games industry lawyer.

The purpose of a trademark is to identify the origin of goods or services.  The concept originated back in the 15th century (maybe earlier) when a craftsman would affix a hallmark to his work; for example, to armor, a sword, or pewter tankard, for example, to identify it as his work.  The quality generally known to be associated with that work (essentially, his business “goodwill”) went along with the hallmark.

Fast forward to today.  Trademarks and service marks are important assets of any person or company for exactly the same reason.

Marks like “Halo,” or “Grand Theft Auto,” or The Sims differentiate those games from countless others that occupy similar worlds, or have similar themes or play mechanics.  Marks like “Naughty Dog,” “Ready At Dawn,” “Insomniac,” or “Bungie” send a message that the games are of high quality, which buyers trust.

Therefore, identifying and protecting a mark is extremely important. 

Trademarks and service marks are NOT monopolies.  Earlier, I noted that the singular role of a mark is to identify the origin of goods or services.  The sole measure of whether a mark may be infringing on another mark is whether it creates confusion in the mind of the average person as to the origin of the competing goods.

For those reasons, goods and services are divided by law into broad categories.  “Cadillac” is a trademark for motor vehicles.  It is doubtful I could market a motorcycle branded “Cadillac” without getting a call from General Motors’ IP lawyers.  But the “Cadillac” mark is also used for dog food.  No one is likely to believe General Motors sells dog food.  These two uses are not infringing on each other.

In your example, if the closely related mark were to be used to sell potatoes, it may be there would be no infringement.  But on a directly competing video game, the two close marks are most likely a problem.

The two marks need not be exactly the same.  For example, “Cecil’s Gun” could be infringing on “Cecil’s Run.”   Anyone hearing the mark spoken could easily confuse the two.  Infringement may take place aurally, not necessarily only in print.  But even in print, those two may be so close that the later entrant could be infringing.

Regarding your own mark ---- did you conduct a US Trademark Office search before you settled on the name?  Such a search can help turn up potential conflicts and help determine the likelihood the mark could be registered (with the US Trademark Office, there is never any guarantee of registration – for reasons beyond the scope of our discussion, here). 

If your search turned up no apparent conflicts, did you prepare and file an “Intent to Use” trademark application in the US Trademark Office -- as soon as you settled on the name?  Such a filing would, at least, place you first in line for consideration.

Trademark research and filings are complicated.  It is strongly recommended that you rely on your attorney to handle this.  I have sadly had first-hand experience where clients took this upon themselves, and errors or missed filing dates have resulted in applications being lost or treated as abandoned by the US Trademark Office.  One way this happened is that a client moved, but never notified the Trademark Office of the new address.  When no response was received, within the required 6-month period, to a request for further information or an amendment to the application, the application was treated as abandoned.  The client was out of luck.

If you have not filed, but the conflicting mark owner has filed (even if he filed AFTER the date you first identified, selected, and began using the mark internally and on your web site), you are probably going to be considered second in line at the US Trademark Office.

Had you been first, and the owner of the conflicting mark tried to sneak in with its own application, your lawyer could send a warning letter asserting your rights in your mark, noting the potential infringing nature of the conflicting mark, and strongly suggesting the infringer find another name.  The best time to make that connection is before the potential infringer has invested too much time and love in its mark.

If you have not filed to protect your mark, you could well be the one receiving such a letter.

Trademarks are valuable property.  A trademark for a huge hit game may be the most valuable piece of IP your company owns.

It is important to put together a strategy for protecting all your IP.  Your games industry lawyer should be able to guide you with that. 

-----

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 and Practicing Law Institute games industry programs, is active in IGDA from whom he received a coveted “MVP” Award at GDC 2006, and is a member of the Advisory Board of G.A.N.G.  On October 19, 2011, Jim will chair a one day program in San Francisco, offered by the Practicing Law Institute, titled: “Representing the Games Industry Client 2011.  Jim served as President of the Academy of Interactive Arts and Sciences from 1998 to 2001.

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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.

©2011 Jim Charne.  All rights reserved.