However, when those other game names are trademarks, this could potentially lead to problems if certain defenses can’t be proven.When developing and advertising a new game, particularly one that is a combination of others or a new twist on an established game type, it can be easier to use the title of those other games in the description. However, when those other game names are trademarks, this could potentially lead to problems if certain defenses can’t be proven.
The use of another’s trademark in commerce is generally considered trademark infringement, when there is a “likelihood of confusion” as to the source of the goods. For instance, if you were an unauthorized reseller for Levi’s jeans and you had the logo on your website, this would most likely cause confusion as to whether it was an authorized Levi’s site. The same generally goes for domain names, when they are used for commercial purposes (so-called “gripe sites” are different, but we’ll go into that in another post).
Courts use a number of factors, depending on the jurisdiction, to decide whether or not the use is likely to confuse consumers. These factors can include proof of actual confusion, whether the two products are in the same category of goods, and the strength of the trademark in question.
A second way that a trademark use may be infringing is if it dilutes the strength of the mark, either by “blurring” or by tarnishment. Tarnishment is usually found when the mark is being used in a manner related to crime, sex or drugs. Blurring occurs when the mark is associated with products unrelated to the original mark, usually in other types of goods.
Defenses to infringement:
In these cases, the infringement is justified because the user is making a “non-trademark” use of the mark.One defense to the particular type of infringement discussed in the intro (using the names of other products to describe your own) is known as “nominative fair use.” This is an affirmative defense, meaning that the user admits to infringing, but says that the infringement is justified. In these cases, the infringement is justified because the user is making a “non-trademark” use of the mark.
What does that mean? Well, the whole point of trademarks is to identify the source of goods. When you’re not using a name in that manner, then you’re making a non-trademark use of the mark. Look at this Pepsi commercial, for instance. They are using the Coca-Cola trademarks, but not in a way that makes it seem like they are affiliated with Coke or that they are the source of Coke (in fact, this is an example of comparative advertising, another defense to trademark).
The prevailing test for whether or not this defense can be proven consists of three factors:
- The term is used merely to describe the product;
- The use was a non-trademark use;
- The use was made in good faith.
Explanation of the elements:
As for the first element, you’re looking for uses that describe the infringer’s product or its attributes. Per the Supreme Court, “When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth.”
If you call a game “Minecraft with fish,” then your audience probably doesn’t think that they are getting Minecraft or something made by Mojang.For the second element, it has to be shown that a consumer would indeed see the use as a description, rather than an indication of the source of the goods. If you call a game “Minecraft with fish,” then your audience probably doesn’t think that they are getting Minecraft or something made by Mojang. However, there could be problems depending on HOW the Minecraft mark is used. Consider these situations:
- The Minecraft logo is used, rather than just the text;
- The text that says “Minecraft” is above the title of the game it is describing and in a larger font
Those two situations are examples of going too far with the use of the mark.
Lastly, to avoid the third one, talk to an attorney. When legal counsel looks at the proposed use, they can make a judgment call as to whether there is a fair use of the mark. This, in turn, can be used as proof that the use was made in good faith.
Keep these other points in mind, as well, as non-legal advice:
- Don’t use too much of the mark – use just what you need to describe your product
- A disclaimer that your product is not affiliated with the marks that are used could be helpful
- Using the mark in the course of a narrative can help in making it a “non-trademark” use
Understanding the legal issues involved in advertising and selling a product, particularly when using other companies’ marks, can be difficult without assistance. A free consultation with an attorney may be able to help get a handle on the legal issues involved in game development.