The Ultimate Guide to Video Game Trademark
In this ultimate guide to registering and protecting your Video Game Trademark, I’ll walk you through the entire trademark process.
- The brainstorming phase
- The clearance search
- Filing your trademark registrations (in the US and internationally)
- Policing your trademarks, and
- Enforcing your trademarks where necessary.
While I’m sure you’ll find something important in very section, you can click on the Table of Contents below to jump directly to what you’re looking for.
To start off, I made this handy infographic for you to follow along with:
The video game trademark process – from creation to enforcement
Right click the image above and choose “save as” to download the infographic. Please share it – I only ask that you link back to this page when you do!
What are trademarks and why are they so important?
A trademark is, essentially, a brand. It’s a word, slogan, or image that identifies the source of goods or services.
Here’s an example: you walk into a Gamestop, and see a game on the shelf that has the word “Halo” written on it. Because that word signifies a brand, and identifies to you that the source of that game is Microsoft, the word acts as a trademark.
This is important, because the law wants to protect consumers from buying goods and services that aren’t what they expected. Imagine that you buy something with the Halo logo.
When you boot it up, though, it’s a completely different game with none of the things you love about the Halo series (because someone else made the game but used the Halo trademark).
That’s a problem that trademark law seeks to avoid.
You acquire trademark rights by using a trademark in commerce. Usually, this means using the trademark in connection with selling goods or services to the public.
Even though you have rights just by virtue of selling your product, there isn’t a lot you can do with it. To truly exercise your rights, the best thing to do is register that trademark.
When it comes to something as valuable as your brand, I’ll quote Hunter S. Thompson and say that “anything worth doing, is worth doing right.”
Brainstorming – coming up with options for a great name
Coming up with a unique company or game name is one of the more difficult things to do for both new and experienced developers.
There are literally companies out there that will assemble a team of marketing people, linguists, and trademark lawyers to do this for you.
Before we go that far, let’s look at one type of technique that can help you get a ton of workable ideas to start from.
You’ve most likely done it before, whether in your schooling as part of an assignment, in your career, or just in your daily home life.
Essentially, brainstorming is when you free your mind to come up with as many options as possible.
The #1 thing to keep in mind when brainstorming for possible names is that there are no wrong answers and no bad ideas! Don’t second guess yourself – write it down and keep going.
How do you do effective brainstorming for game and company names?
There are so many ways, and a quick Google search will reveal a ton of them. However, I’ve gathered several here that will get you started on your search for the perfect name:
1. Get a Thesaurus
If you start with a seed word, looking up its synonyms in a thesaurus can be an awesome way to jumpstart your brain’s creativity. “Thesaurus creep,” where you find synonyms to synonyms and keep going down the rabbit hole, can get you to some places you probably weren’t planning on. That’s a good thing!
2. Bounce ideas off a group
Don’t go it alone! Working on brainstorming with a group can bring some much-needed different perspectives to the process. Again, you will probably be finding some names and ideas that you would have never thought of yourself!
3. Word association
A bit like the thesaurus method above, but using only your own mind, “word association” is essentially just writing down whatever word your brain instantly associates with the seed word. This can lead to some interesting ideas, depending on how flexible and out there your brain might be.
4. Dig deep into your product
Another way to find ideas and “seed words” for the other techniques is to dig deep into your company’s philosophy or products. What features make them unique? Start there and work with those main features as potential name.
5. Go wild
Strong trademarks are ones that are “arbitrary” and “fanciful.” This means that made-up words and words that have no relation to the actual product can make the most distinctive trademarks.
Zaxxon is a perfect example from video games – it’s a completely made up word that doesn’t exist anywhere else. This makes it a perfect trademark for a game.
So try coming up with some brand new words or try out words that aren’t related to games at all (think “Apple” for phones and personal computers, or “Gimlet Media” for podcasting/radio shows).
6. Use visuals
Another popular technique is to look at an image related to your company or game, and start brainstorming things based on that. Pull out details and related thoughts from the things your mind is seeing. You’ll be surprised what you can come up with!
7. Change your surroundings
Sometimes the best way to generate new and fresh ideas is to change up where you’re doing the brainstorming. Get out of the office, take a vacation, or even just let your mind wander when you’re in the shower.
Hopefully these techniques help you get a handle on brainstorming. Use them to come up with a list of potential names before moving on to the next step: Clearance!
Trademark Clearance – avoiding trouble before it starts
As part of your trademark game plan, a proper clearance search to avoid conflicts is one of the first steps to take.
What is a clearance search?
A trademark clearance search is a two-part process:
- you analyze your own proposed trademark, and
- you do a search to check if it is already trademarked (or otherwise in use)
This is a vital piece of the trademark puzzle.
If you don’t go through this super important step before using the mark, you run the risk of infringing someone’s existing trademark.
If you infringe, you could be opening yourself up to receiving a cease and desist letter, getting sued for trademark infringement, and you could potentially be on the hook for a big damages award. You also waste a ton of time and money building up your new brand when there’s already a competitor using the name.
This is a costly mistake that too many new businesses make.
How do you analyze a trademark?
Basically, you’re looking to make sure the trademark is distinctive, and not simply describing the goods or services. Distinctive trademarks fall into these three categories:
- Fanciful marks (Exxon)
- Arbitrary marks (Apple)
- Suggestive marks (Android)
Fanciful marks are unique, made-up names. These are the most distinctive, because they only exist to describe your goods and services. These are the strongest trademarks you can get.
Just as strong are arbitrary marks – trademarks that may use common words, but the words are completely arbitrary when compared to the goods and services at issue. Another example, besides Apple (which is a completely arbitrary name when compared to computers and phones), is Delta for faucets. These are very strong marks, and something you should shoot for.
Less strong, but still distinctive enough for protection, are suggestive marks. These don’t directly describe the goods and services, but they’re also not completely arbitrary. They require a “leap of imagination” to go from the trademark to the goods associated with that mark.
Stay away from trademarks that are descriptive and generic – those won’t give you any protection.
The trademark search – how to check if something is trademarked already
Once you’ve got at least one strong and distinctive trademark picked out, many clients ask about the next step – how to check if something is trademarked by someone already.
In the US, you would search the USPTO’s search engine to see if someone has already registered that mark.
There is a bit of an art to this, as you need to make sure that you’re checking variations of your proposed trademark.
This means plural and singular forms, sound-alikes, misspellings, and even synonyms. If you miss any of these, you could end up having your trademark application refused because it is confusingly similar to others. Check out a recent guest post of mine on the Kickstarter Lessons blog that discusses this in more detail.
Other search engines to check include the EU’s trademark database, any industry-specific search engines, and a simple Google search.
Another important detail to keep in mind is that the same trademark can exist for two different products and services, as long as they are not too close. There are a number of factors that courts look at in analyzing whether the marks can coexist or not, but here are a few:
- How similar the trademarks are
- How close the goods are
- The different marketing channels used
- Whether there is evidence of actual confusion
- How strong the trademark is
Whether or not the trademark is too close is a subjective analysis, but it’s possible to make an approximate judgment. However, a trademark attorney is probably in a better position to make this judgment than someone who is doing this for the first time.
What if it is already trademarked?
If you do find a confusingly similar match out there, you have a few choices:
- Pick a new trademark
- Try registering your mark anyway and hope for the best
- Get a co-existence agreement or license in place with the existing trademark owner
The decision of what to do isn’t easy, and requires possibly taking on some business risk. I always recommend that you do so with the advice of an attorney.
What if you don’t do the proper clearance search?
In the rush to get a game developed and published, a lot of important business steps are often overlooked. Developers don’t get agreements signed with their contractors, they don’t copyright their games soon enough, and other issues.
One of the biggest issues? Failing to do a proper trademark clearance search before starting their company or publishing their game.
You might be asking yourself, “What could go wrong?”
Despite the prison image above, you’re probably not going to go to jail. However, there are many things, some of which could potentially seriously hurt your business
Here’s a few:
Cease and desist letters
A cease and desist letter doesn’t technically have any legal weight, but it certainly can put a scare into the developer that receives it. These are usually written by a law firm and contain allegations of trademark infringement. Often, they quote a bunch of law and list various federal trademark registration numbers.
The nice ones end with “we trust that this matter can be resolved quickly and without resorting to legal action.” Mean ones tend to threaten litigation right away.
It’s understandable why these can frighten developers – they’re SUPPOSED to be frightening. Often, indie devs don’t have immediate access to a legal team to evaluate the claims in the letter, let alone competently respond to them. If you want to read more about cease and desist letters and how to respond to them, check out my post on the Kickstarter Lessons blog.
Taken down from the app stores and other outlets
A cease and desist letter is usually a good first step to take when an attorney deals with potential infringement. They’re not required, though, and sometimes attorneys skip right to takedown procedures in the cases of online app stores.
If you fail to properly clear your game title or company name and publish a game on the Google Play store that is confusingly similar to another, they may use the store’s takedown procedures to get your app taken off in whatever jurisdictions they have rights.
Similarly, your social media accounts can be either deleted or disabled. You may be subject to a UDRP proceeding over an infringing domain name. There are a number of methods available to a trademark holder that can really ruin an indie developer’s day.
Why is this a huge issue?
You may still be wondering why this is such a big deal. Well, there’s a few reasons:
- You probably spent a bunch of time and money generating business goodwill for either your game or your company name before your game’s release (if you’re doing it right)
- You’re relying on the game existing on the App Store or Play Store in order to exploit the game for revenue
- You probably don’t want to have to pay someone like me to respond to the letter, let alone fight against litigation or argue with an app store on your behalf
These are all things that can potentially be very expensive! They are also mostly avoidable (though not completely avoidable) with the proper clearance work up front.
The real cost, though, is if you get sued. A good trademark clearance can get around that entirely.
Registration – how to do it and why it’s so important
Once you’ve cleared the trademark as having no obvious conflicts, the next step is filing the trademark on the USPTO’s TEAS site. TEAS gives you a number of options for various types of filings – we’re looking for the TEAS Plus form for the cheapest trademark registration option.
There are a few requirements for using TEAS Plus (otherwise you need to use the more expensive TEAS Reduced Fee Form):
- Communicate by email
- Make all filings online
- Select descriptors of goods and services from a pre-populated catalog
- Pay the full, non-refundable filing fee up front
The trademark application process is deceptively complicated. You may need to address a number of nuances (such as when you need to provide additional information, etc.), even though the application seems simple.
There is also the question of whether the trademark is currently in use, or if you have a bona fide intent to use the trademark. The intent to use (1B) application allows you to “reserve” your trademark rights while you’re still preparing or developing the goods and services. This can be extremely handy in avoiding someone coming in and stealing your mark during the time that you don’t yet have any rights.
Additionally, it’s important that you describe the goods and services as broadly as possible, while still remaining true to their actual use (or intent to use).
As with the clearance search, this can be more of an art than a science. There are a number of descriptors which can be chosen from.
Pro Tip: One handy tip is to find a competitor’s (or more than one, if possible) trademark application and review their description of goods and services. You may be able to just use the same, and add and subtract where you differ from that competitor.
After filing – “hurry up and wait”
The long wait for trademark registration begins after the application is filed, signed, and the appropriate fee is paid. The timeline from the date of application is basically this:
- The application is assigned to a trademark office examiner in 2-3 months
- A few days for the initial review of the application
- Assuming there are no issues that need addressing, in a few weeks the application will be published for opposition.
- This is a process that allows others to publicly view the application and file an opposition to its registration. Once published, it will be out there for 30 days.
- Once that 30 days is up, and if no one filed an opposition, the application will be approved for registration. It takes a while (weeks to months) for that to happen and the registration certificate to issue.
In all, the process can take around 9-12 months. Luckily, your rights begin on your date of first use in commerce or on the date of the application (in the case of an intent to use application).
If there are any issues with the filing (issues with filling out the forms, the description of goods, the specimen showing proof of use, or a conflict that the examiner finds, for example), this can elongate the timeline. It will also require that you answer and often amend the application to correct the errors.
For substantive refusals, this can require some legal argumentation. In all cases, I recommend having an attorney represent you. This can ensure that you’re putting your best argument forward and not limiting your rights.
Trademark renewals and other ongoing obligations
Once the trademark is registered, the fun doesn’t stop there. You’ve got a several ongoing obligations, including renewals and policing/enforcing your mark.
Table of required trademark renewal filings
|Name of Filing||Instructions and Fee|
|Section 8 Affidavit of Use||Between 5 and 6 years following the registration date, a statement of continued use must be filed under Section 8. Filing fee: $100 per class, with an additional $100 late fee if filed after, but within 6 months of, the 6th anniversary.|
|Incontestibility Filing||After 5 years of continuous use, the owner of the mark can apply for incontestability status. This is done in combination with the Section 8 affidavit above. Filing fee: None|
|Section 9 Renewal||Between the 9th and 10th anniversary of registration and every 10 years following, an application for renewal must be filed under Section 9. This is done in combination with an affidavit of continued use (the same as the one under Section 8 above). Filing fee: $400 per class.|
The danger of “Genericide”
In some ways, this is a good problem to have. However, it can result in the loss of your trademark rights.
When a mark becomes so well-known and associated with a product type, rather than a brand, it may be considered generic. As we discussed earlier, a generic mark is the least distinctive and not eligible for registration or protection.
Consider the case of the escalator.
It was a trademark owned by the Otis Elevator Company at one point, and its competitors had to use other names, such as Electric Stairway and Motorstair. However, as time went on, the Escalator name became the generic term that people used to refer to these movable stairs.
The USPTO found that even Otis themselves were using the mark in a “generic” way. They were stripped of their trademark rights, and suddenly anyone could refer to their moving staircases as “escalators.”
Other examples of brands that suffered from genericide include Aspirin and Thermos.
But also look at Band-Aid: Johnson & Johnson works hard to ensure that they are called “Band-Aid brand bandages,” or some similar form, in order to keep the Band-Aid mark from becoming generic. You can hear it in their commercials.
Google, Velcro, and Kleenex also make Herculean efforts to fight genericide.
I said before (cheekily, of course) that this is one of those good problems to have. If you have a mark that is so popular as to be synonymous with the product itself, you’re pretty successful.
However, once your mark becomes generic, others can capitalize on that goodwill and do harm to both your mark and your company.
When a trademark owner allows others to use their mark (but still retains ownership), this is known as “licensing” the trademark.
When licensing a mark, the owner has the obligation to police the use of the mark to ensure that the use maintains the same standard of quality. Failure to do this could result in the loss of the exclusive rights granted by registration.
Otherwise, this is known as “naked” licensing and is a big no-no.
A properly-written licensing agreement will give the trademark owner the right to do this quality control. It will also give them a way out of the agreement should the trademark standards not be maintained by the licensee.
So, when licensing out your trademark, avoid “naked” licensing at all costs! I review many agreements that don’t include this, so be sure it’s in there.
When a trademark is used by another party without permission, this is known as “dilution” of the mark. This can occur in two ways:
Blurring is simply the use of a mark by a party that is not the original source of the trademark. This “blurs” the source in the eyes of the consumer and lessens the strength of the mark.
Failure to take legal action in these cases could lead to cancellation of the mark.
Tarnishment, on the other hand, is the use of the mark by a third party in a way that is lewd, degrading or otherwise puts the mark in a bad light. This could include involving the mark with sex, crime or drugs that are not part of the original mark.
For instance, a company creating adult novelty items using the mark would be an example of tarnishment.
As with blurring, failure to take action against a party who is tarnishing a mark could result in the loss of those rights.
Trademark Non-Use or Abandonment
Lastly, one of the easiest ways to lose trademark rights is by simply not using the trademark.
An abandoned mark allows others to begin using the trademark. Generally, this requires an intent not to continue use of the mark and a certain period of non-use.
Three years of non-use is considered abandonment, as far as courts are concerned.
After that, you’d have to prove that you really did intend to start using the trademark again and show that you’ve been taking steps to do so.
Remember, trademark rights are based in the use of that mark as a brand identifier. If a company is not actively using a mark or they are using it in a way that does not identify a brand, this could put those rights in danger of being lost.
Policing – monitoring for infringement of your trademarks
One of the big responsibilities for a trademark owner is stopping anyone who is infringing on your mark.
If you, as the trademark holder, don’t actively try to stop others from using confusingly-similar marks, those rights may be lost. So this means that a cornerstone of any company’s intellectual property strategy should be a regular search of the Internet, app stores and other software repositories for goods or services that could potentially confuse consumers.
If you catch them at the start and begin taking care of it soon, the cost of dealing with it can be much lower than if you let the problematic usage persist.
There are a number of ways that you can stay alert to any possible infringement of your trademark:
- Regular Google and other web searches
- Regular app store and game platform searches
- Set up a Google alert for your trademark and similar words
- Do monthly checks of the USPTO’s TESS database (trademark search) and the Trademark Official Gazette
- Encourage fans and followers to report infringement
- Pay a trademark watchdog service to alert you to conflicts
Most of those are free, while something like paying the service will cost you. For the free searches, stick an item in your calendar every month to run through a simple checklist of searches.
Once you systematize this process, it shouldn’t be too difficult.
But wait – what happens when you find something?
Enforcement – going after trademark infringement
Trademark owners have a few options to go after infringement of their marks.
I’ll go through the most common here:
Step 1 – communication
For most game developers, paying the cost of a trademark infringement lawsuit is generally out of the question. Lawsuits can end up costing a ton of money and taking years to resolve.
That’s why you usually want to do everything you can to avoid litigation while still achieving your desired result.
Often, this result consists of two things:
- They stop infringing on your trademark, and
- They pay you a licensing fee/settlement for their prior use of the trademark.
If you’re just looking to stop them from using your trademark and believe that their use is innocent, it’s possible to just reach out to them and remind them of your rights.
Then ask them to stop.
This can work well – it’s not overly aggressive and, as they say, “You catch more flies with honey than you do with vinegar.”
Step 2 – If that fails, send a cease and desist letter
If being nice doesn’t work, and they either ignore or rebuff your attempt to police your mark, it’s usually time to get the lawyers involved. When a client comes to me with an issue like this, our first step is to draft a trademark cease and desist letter.
What is a cease and desist letter?
It’s basically a letter that tells the infringer to stop what they are doing, or you will take further legal action. Depending on how prior interactions have gone, the tone can go from conciliatory to aggressive, and even to downright hostile.
A normal trademark cease and desist letter usually consists of the following:
- An explanation of who you are and what your trademark is
- A description of your rights in that trademark
- A description of how they are infringing the trademark
- A demand for them to stop using the trademark, to destroy any products that are using that mark, and to pay you for their use of the mark to date.
- The threat of further legal action, should they ignore your demand.
For many game developers, a letter from an attorney that threatens to sue them can make them change their mind real quick.
This is because most small devs don’t have the money to even pay for lawyers to 1) review the letter and respond, or 2) answer a legal complaint when they get sued.
What if they don’t comply?
If the cease and desist letter doesn’t work, then it is time to break out the big guns. A trademark lawsuit filed in federal court will really get their attention.
Filing and litigating a trademark infringement suit is not cheap. Generally, you have two options here:
- Finance it yourself; or
- Find an attorney who will do it on contingency.
“On contingency” means that they will front the costs and legal fees, in exchange for a sizeable portion of your recovery. Usually, you don’t pay anything unless they win. If they do win, then the fees and costs are taken out of the settlement or judgment funds.
Unfortunately, an attorney will only take a contingency case if there is the potential for an easy settlement or a big recovery. The math just doesn’t work out, otherwise.
So, if the infringer is a small company with no money, few attorneys would take that case on contingency. Similarly, the riskier the case or the more nebulous the claims, the less likely it will be to find an attorney willing to take the case.
If you get to this point, I recommend discussing the case with a few different attorneys to get a sense of your 1) likelihood of winning and 2) likelihood of recovery.
You can make decisions from there.
Conclusion – your valuable video game trademark
You went through the trouble to create an awesome brand and trademark your name. Protecting the value of that trademark is vital in order to keep those trademark rights. For help protecting your game name, contact a video game trademark lawyer to get started.
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