Trademark clash - company name & product name
I was discussing trademarks with a friend and a question regarding trademarked company names/product names came up.
If someone has a game dev company called something like Rodent Entertainment, which is trademarked, can you create a game called Rodent and trademark that? One is for a company, the other a product, but both in the same industry.
AFAIK
Trademarks when registered are also assigned to or related to a category of product or service. So long as the trademark is not registered for the purpose being used then you *might* be good to go.
Opposing view - Trademark (and patent) rights are directly proportional to the amount of money you are willing to throw at them for litigation.
I wouldn't try the following
The Coca Cola Crash Rally
The MacDonalds MMO
I am not a lawyer
Originally posted by tsloper
Sure. Why not. One trademark is a company name and the other is a game title. I don't see a conflict there, especially since the company named X is the one creating the game named X.
I believe he was implying that company X wasn't the company developing game X. For instance, if LDA Games, the company I work for, wanted to make a game where you create digital paintings, and we wanted to call it, say, "Electronic Arts", we'd probably get in trouble.
On the other hand, if we wanted to make a puzzle game called "Cryptic" or a psychological game called "Id", we'd probably be fine, for a few reasons:
* Cryptic Studios and Id Software aren't as rich or litigious as EA.
* We're not using the full name of the company (no 'Studios' or 'Software').
* Cryptic and id are common words you can find in the dictionary.
Then I misread. Another company would have a hard time justifying in court why he named his game the same as another company in the same industry.
Originally posted by tsloper
Then I misread. Another company would have a hard time justifying in court why he named his game the same as another company in the same industry.
Not necessarily an easy time, but the question of whether there is trademark confusion is not necessarily cut and dry.
The strength of mark, (more precisely, its distinctiveness) is an important question here. A descriptive or genericized mark will not receive protection like an arbitrary or fanciful one will.
I guess either this was about the Mobigame's Edge vs Edge Games or there's some synchronicity going on.
Anyway I think you have your answer: yes, this is disputable.
The earlier case of Namco vs Edge Games gives some clues as to how this might be decided in the UK:
10. I go on to consider the ground of objection based upon Section 5(2)(b) of the Act which states:
- “(2) A trade mark shall not be registered if because -
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.â€
- (a) ...
- (b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,
16. Taking all of the above into account it seems to me that though the respective goods are the same or similar the respective trade marks are not similar and the registration of the trade mark in suit is not likely to lead to the likelihood of confusion on the part of the public, which might include the likelihood of association with the opponents’ trade mark. Thus the grounds of opposition based upon Section 5(2)(b) is dismissed.
17. I go on to consider the ground of objection based upon Section 5(4)(a). The states:
- “5.-(4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented -
- (a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, orâ€
20. As I have already found that the respective trade marks are not similar it follows that the respective signs for consideration under this head are not likely to lead to misrepresentation. Further, it seems to me that the opponents have not fully established their reputation or goodwill in the United Kingdom. For the reasons outlined above, I do not consider that the figures provided by the opponents in terms of sales of their products in the jurisdiction can be put into context sufficiently to provide for a finding that they have a reputation or goodwill on which to found an action for passing off. In those circumstances the ground of opposition based upon Section 5(4)(a) is also dismissed.
I recall seeing trademark reports from both European and US lawyers whose frame of reference was same or similar marks but also URLs and product names. Their concerns were as much with potential claims on grounds of passing off / good will as actual trademark infringement. I've seen advice against using a name similar to another product or company where there was NO registered trademark or aplication - let alone when there was a trademark.
It's worth being especially careful with any mark owned by a company who you can't aford to fight (e.g. in the US courts) - if they decide to go for you then it won't matter who's right or wrong, because they'll just crush you financially, so best not to give them an excuse.
On the other hand, being similar to a small local company isn't likely to be a big problem - they probably won't have the grounds, inclination or budget to sue you. (If the value of a name is the goodwill associated with it, then why sue when your goodwill is minimal? Nondescript Games, in Arseington, North Yorkshire, probably won't care if your name sounds/looks like theirs. id or EA would care very much!)
US and UK trademark registries are both searchable on-line (the UK registry includes "E" - i.e. pan-European - marks, but does not deal with other Euro-area nations' individual country registers).
I's suggest that discretion should be the better part of valour.
Of course, if you have a publisher on board they can spend the thousands (or tens of thousands) of dollars on formal trademark searches for a product.
Originally posted by Paul Sinnett
I guess either this was about the Mobigame's Edge vs Edge Games or there's some synchronicity going on.
Just syncronicity. Had a developer wanted to use a name but it turned out it was already trademarked. The holder sent a letter so we were looking for an alternative name and thought about a word which wasn't a game.... but was a company name. We went back and thought again.
Originally posted by NotAthensNorGreece
Of course, if you have a publisher on board they can spend the thousands (or tens of thousands) of dollars on formal trademark searches for a product.
Yea we were talking to one big publisher and they said that if we signed the game with them they would use the original name we thought of regardless of the fact that it was in use (by another big company). They have a legal team they have to pay anyway and I guess they figure it will just get sorted.
Mona posted a new article on her blog about trademarks recently:
http://www.underdevelopmentlaw.com/2009/07/trademark-fair-use.html
If I read this right:
In the case of creative and artistic works (including video games, for reference see E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. Cal. 2008)), it is generally accepted that the public interest in avoiding consumer confusion must outweigh the public interest in free expression for a trademark infringement/Lanham Act claim to survive. This is an incredibly steep test, actually; according to the 9th and 2nd Circuits, an artistic work's use of a trademark that would otherwise violate the Lanham Act isn't actionable "unless the [use of the mark] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [it] explicitly misleads as to the source or the content of the work." Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002).
it would suggest that in the case of Mobigame's Edge the use of the word would be entirely acceptable. And the same could be said for Edge of Twilight, Mirror's Edge, Soul Edge, and so on. These uses are all descriptive of their content and were in no way intended to mislead the public. Or so it seems to me.
The free speech argument is a bit of a catch-all. Generally the cases cited involve a entertainment product's use of an existing trademark (e.g., Coca-cola) in a video game, song, or the like, and the argument generally raises a two-part test: 1) whether the use is relevant to the underlying work; and 2) the likelihood of confusion as to origin (in other words, does use of the trademark confuse consumers by implying that the trademark owner created the work).
Creative works are treated differently from commercial speech. So at court at least, under the first amendment argument, the question would be: 1) whether use of the word "edge" in the title of the game is relevant to the underlying work (based on the letters published by Langdell recently, Mobigames presents a strong argument that it is based on the gameplay itself) and 2) whether there would be confusion as to the origin of the product. There are several factors (varying by jurisdiction) to determine likelihood of confusion, but at least in the case of "Barbie Girl" the court determined that use of the toy name in the product didn't create a presumption in consumers that the song was created or endorsed by the manufacturer of the song. I think there is certainly a reasonable argument that a game title with the word "edge" in it, when such title is relevant to the underlying game, would be protected under the first amendment.
Assuming that every game using the word "edge" descriptively in its title is made by the arbitrarily named Edge Games could arguably fly in the face of reason.
First amendment is one argument. Lack of consumer confusion generally may be a good one.
To determine whether the abandonment argument could fly would depend entirely on what comes out during discovery, and whether the court is willing to recognize a naked licensing doctrine defense. As a trademark is intended to designate the origin of a product for the sake of consumer protection, it's generally presumed that the owner of the mark has control over the products bearing its mark in commerce. I'm not even going to take an educated guess on that right now.
And I am a bit confused by this:
http://tarr.uspto.gov/tarr?regser=serial&entry=78807479&action=Request+Status
The serial number was the one provided by Tom B in his blog post on the subject. I did a search previously and came up with a bunch of hits on marks registered by Edge Games-- many in classes that don't seem to be related to games.
There are some common law claims, but it would be a good idea to be sure that the "registered trademark" is in fact registered. In the case of that particular application, it isn't.
edit: I did a little digging and came up with registered marks for "Gamer's Edge" and "Edge". The existing "Edge" marks are for Class 016 (paper goods and printed matter), namely comic books and various publications in the fields of business, video games, board games, etc. "Gamer's Edge" is the only Class 09 registered mark relating to computer game products that I could find.
Originally posted by Obscure
If someone has a game dev company called something like Rodent Entertainment, which is trademarked, can you create a game called Rodent and trademark that? One is for a company, the other a product, but both in the same industry.
(long time no post, I know!)
zartoop is correct in that all trade marks are registered in one or more classes of goods and services (Google up e.g. the NICE Classification), in whichever jurisdiction.
There is no 'company' class, so a company wanting to register its name as a trade mark (as opposed to the brand of a product line, wherein the brand is different from the company name) will usually designate classes of goods and services wherein it is commercially active, or will eventually be (but note that this 'intent' element varies to a great extent between jurisdictions). So, essentially, the same class(es) it would register its brand(s) in.
The element of identicality or similarity of the proposed name with a registered trademark really becomes an issue given the context of the use: whether the use falls in the class of registration (more specifically, the 'specification of goods and services', which is a 'subset' of the entire class), or not.
Assuming the company to which you refer is a software developer, it's not too wild a guess that their registration is in the same class as that which would be used for an application for the game title, nor is it too wild a guess that there may be some commonalities between the respective specification of goods. So, potential for problems, and at the very least strong potential for an expensive procedure (at the UK IPO, or at OHIM if a CTM is sought) as the company is likely to oppose the UK or CTM application (oppositions are expensive animals to handle, relative to standard costs to registration).
There are ways and means to get rid of a registration (e.g. because of non-use over a continuous period of X years) when it's in the way, but more often than not (at least in my experience) it's substantially cheaper for the client to commission some creative types to come up with a new mark...that's assuming of course the client hasn't already invested £thousands in marketing activities, websites, ads, prints, promotional widgets and the like before coming to see us and asking us whether it's a good idea 
Patronus Mona makes excellent points about the descriptive character of the title (public interest-type argument), and I believe there are parallels within the UK and EU context. So it all boils down to where on the scale of "outright descriptive" to "downright fanciful" your game title fits, relative to its content 
Considerations of registrability aside, if your query relates to the UK jurisdiction, of course don't forget the tort of passing off, which has seen quite a bit of strengthening (for the benefit of the claimant) in recent years. And there would be nothing the big publisher's legal team can do to preempt that one, other than defend it.
Sure. Why not. One trademark is a company name and the other is a game title. I don't see a conflict there, especially since the company named X is the one creating the game named X.
Tom Sloper
Sloperama Productions
Making games fun and getting them done. www.sloperama.com
Instructor in games, University of Southern California http://itp.usc.edu/
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